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Alphabet V Uber—Uber Will Pay $245 Million To Settle Trade-Secret Infringement Claim --IP Matters with Senator Ihenyen, Lead Partner, Infusion Lawyers, Intellectual Property Law Firm in Nigeria
Image source- CNN Money

Alphabet v Uber—Uber will pay $245 million to settle trade-secret infringement claim.

This week’s IP Matters is all about trade secrets over self-driving car technology in a very competitive and lucrative industry. It’s between Alphabet subsidiary Waymo and Uber.

 

Alphabet subsidiary Waymo wanted $2.6 billion in damages from Uber for allegedly stealing a single trade secret on self-driving cars.

The $2.6 billion damages is only for one of the nine trade secrets Waymo claimed a former executive of the stole. According to Alphabet, after a former executive, Anthony Levandowski, had launched his own self-driving startup Otto, he downloaded 14,000 files from Waymo and took them to Uber.

Uber denied the allegation. It maintained that none of the downloaded files got to Uber. It described Alphabet’s $2.6 billion damages as not only “inflated” but also “based entirely on speculative future profits and cost savings in a nascent market.”

  

Before the fifth day of the trade-secret infringement trial, Waymo accepted $245 million in Uber shares for settlement of the dispute.

For months, while Waymo struggled to prove its case, details about both companies flew from the trial room to the media and the public. Details of both companies’ settlement negotiations were also flying out of the boardroom. Waymo had offered to accept $1 billion settlement from Uber. Uber didn’t bite. Waymo slashed the settlement offer by half. Uber still didn’t bite. The parties proceeded to trial. 

But before the case was going to proceed to trial, Waymo accepted to settle: $245 million in Uber shares.  This is a little less than 10% of the damages Waymo had sued for.

 

Uber’s need to save the brand from too many ugly lawsuits may have informed this settlement.

While the trial lasted, Uber had put up a strong defense against Waymo’s allegation, showing that none of the Waymo’s trade-secret files found their way to Uber. So Uber’s eventual decision tosettle came as a surprise to many.

But for a company that has been having the worse of times with lawsuits, Uber’s out-of-court settlement may have been understandably informed by the need for the ride-hailing company to ensure that its self-driving software, Lidar, doesn’t remain held back by long trials.

 

Below are some pertinent points from the Waymo-Uber trade-secrets infringement suit: 

  1. Avoid lawsuits especially when you need to get to the market before your competitors:  Alphabet’s Waymo sued Uber early last  year. In less than a year, this lawsuit has cost Uber 3 major things. First, it has wasted Uber’s time by delaying Uber’s kick of the ball in a competitiveand lucrative self-driving car market. Second, Uber had to fire Levandowski, its self-driving team leader. (When you play big in a market like the US, you can’t afford not to fire the man who brought termite-infested wood into your home, to borrow one of Chinua Achebe’s proverb.) Third, apart from having to let go of some of its shares,  Uber’s long-term profits must have been affected. 
  1. When heavyweights leave your company, ensure they didn’t take your trade secrets along with them: Waymo didn’t sue Uber until it discovered that its former engineer Anthony Levandowski had been hired by Uber to lead Uber’s self-driving car project. With thousands of documents in his possession, Waymo reasonably sniffed a rat. Learn when to sniff a rat in your business. It will save your business a lot of trouble.
  1. A company—especially technology companies—must have an intelligent system for keeping trade secrets ‘secret’: Waymo suspected Levandowski because it discovered Levandowski had accessed its trademark secrets. It also discovered that Levandowski had downloaded over 14,000 confidential files just before leaving Waymo. If Waymo couldn’t trace the downloads on its server, I doubt it would have been able to push its case against Uber this far.
  1. Unlike copyright which—apart from originality—requires that the infringing element must have been expressed in a fixed medium, trade secrets don’t always require this. This is one of the reasons why trade secrets are so delicate. However confident Uber is about its claim that it never used any of Waymo’s trade secrets, Uber may have decided to still settle the matter because of the circumstances surrounding its inclusion of Levandowski in its self-driving car team. Levandowski’s team-leader position in Uber’s self-driving run is a vital fact. Even if Levandowski never used any of the over 14,000 secret files he downloaded from Waymo servers, he must have acquired sizeable knowledge about Waymo’s self-driving car technology. So whether oral or written, knowledge shared with his new team at Uber may be held adequate to hold Uber by the tail, if not by the neck. So Waymo’s self-driving trade secrets in Levandowski’s mind alone is adequate to find possible infringements.
  1. Nigeria does not have any trade-secrets protection law: Unlike the regime in the United States where the scenario above took place, there is no legislation on trade secrets in Nigeria. This has legal implications. First, for your trade secrets to be protected in Nigeria, it must be either under contract or a tort.Trade-secret protection becomes contractual when you include relevant clauses in your business contracts, employment contracts, and other contractual documents aimed at protecting your trade secrets or restricting confidential information. When Nigeria decides to have a trade-secrets law, it may create both civil and criminal liabilities, just as the Nigerian Copyright Act has done.

 

I will now briefly point out what your technology company or business can take away from this week’s IP Matters: 

  1. Trade secrets give your businesses competitive edge: Trade secrets—though not strictly a type of intellectual property—have become one of the most vital assets of businesses today. How your business protects them will increasingly matter as today’s business environmental gets increasingly competitive and disruptive.
  1. Keep third parties out by observing due diligence before acquiring any company or technology: Technology businesses—whether big or small—need to be vigilant when buying up any business, or technology, otherwise they may end up buying themselves reputation-destroying lawsuits. Uber purchased Levandowski’s Otto company six months after he had left Waymo as head of its research team for years. Uber bought Otto for $680 million. This was one of Uber’s big mistakes—it failed to conduct due diligence before buying Levandowski’s Otto. 
  1. Before hiring a major employee or executive from any of your competitors, be extra cautious: Not all employees or executives are free of legal risks. This is especially so with industries where the entire infrastructure of a business is built on IP or the business is entirely IP business. From an IP-protection angle, that new partner or employee you are bringing into your team may be a risk to your business. So always do your checks. When Uber paid $250 million of Uber stock to Levandowski to join and lead Uber’s self-driving car team, little did Uber know it was going to pay another $245 million in Uber stock to Waymo to clean up Levandowski’s mess. Uber hired a lawsuit!
  1. Many businesses are not protecting their trade secrets, consequently creating avoidable risks for their businesses. Even many more are unaware that certain components of their business operations or business methods are indeed their trademark secrets, thus creating needless competitors for themselves. 

In IP matters, it’s never too early because IP matters to business and development, any day. 

 

 

IP Matters, Week Five, 2018
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IP ABC (Week 4): Can I copyright my book title? Infusion Lawyers--Intellectual Property Law Firm in Nigeria
Image source- Royal Heads

IP ABC (Week 4): Can I copyright my book title?

To view the subscribed-email version of IP ABC, click here.

Question of the Week (4) 

I’m a Nigerian author. Presently, I am writing my second book. The book is titled, Buhari: 100 Days in London and Other Stories. But there is a problem. I discovered 3 other writers who have written articles that are similar to the title of my book. In fact, when I contacted one of the writers about this, he emphatically told me that he was about to finish a book with a similar title. And just as I tried to think it through, a Nigerian movie also with almost identical title popped up in a TV advert. I badly want to use this title. For protection, can I copyright the title of my book?

 

Answer

The answer is NO.

Copyright law does not protect titles of books or titles of other literary works. Also, titles of both artistic and musical works are not copyrightable. (This may partly explain why so many books out there have the same titles and no one is getting into any legal troubles.)

The reason is that copyright protects only eligible works.

Eligible works are not only required to be artistic works (paintings), broadcasts (radio programs), cinematographic works (films), literary works (books), musical works (songs), or sound recordings (soundtracks, excluding films) but also required to meet 2 vital conditions.

These 2 conditions are as follows:

  1. Sufficient effort has been expended on making the work to give it an original character; and
  2. The work has been fixed in any definite medium of expression now known or later to be developed, from which it can be perceived, reproduced or otherwise communicated either directly or with the aid of any machine or device.

The two conditions above are prescribed in section 1(2) of the Nigerian Copyright Act.

Therefore, titles do not meet the first statutory condition above: sufficient effort expended on making the work to give it an original character.

In some other parts of the word, this is similarly described as a significant amount of original expression. Expressions as short as book titles do not qualify as sufficient effort. This is why you can neither stop the writers using identical or similar titles with yours nor protect your title under copyright. Copyright law says you need to do better than that!

But this doesn’t give you or any person the right to title artistic, literary, or musical works just about any existing title.

For instance, your book cannot be titled Buhari: 100 Days in London and Other Stories if that title is another person’s trademark. In other words, if the producers of the film 100 Days in London have trademarked the film title, you are prohibited from using any identical or similar titles for your book. (Yes, some titles qualify for trademark protection, either because those titles are to be used in connection with business or have become so well known they are distinctively connected to a particular author or publisher. This is more so with series and popular titles. Think the series Harry Potter or the popular book Chicken Soup for the Soul. Chinua Achebe’s Things Fall Apartthough with a title which is not original to the authormay qualify for trademark protection considering how well known the book has become globally. (Even Google honoured the author with a doodle recently.) 

So the point is this:
Once a book becomes a bestseller or becomes so successful it is recognized as a distinctive brand, the author or publisher may trademark the title. And once trademarked, the title is out of bounds to any person.

Consider this.
If you can come up with a title that is not already in use—particularly in the genre your book falls into—you may consider that title instead. As an author, you need to keep your publications away from avoidable controversies. You also don’t want to confuse your audience.

You wish to consider your options closely? For competent guidance, you may consult an IP lawyer or law firm for professional advice and assistance.

Best wishes

 

IP ABC

Follow-up questions, if any, are welcomed.

 

IP ABC™

IP ABC™ is an initiative of Infusion Lawyers, a virtual intellectual property (IP) and information technology (IT) law firm for the knowledge economy and the digital age. 

 

Disclaimer

Characters, events, names, or places referred to in IP ABC may be fiction. Such fictional contents are meant to aid comprehension. Answers provided on IP ABC are prepared by Infusion Lawyers and are for general purposes only. Answers should not be construed as legal advice or legal opinion under any circumstances. If you have questions or legal problems that you need legal assistance with, please contact your IP lawyer or law firm, or contact Infusion Lawyers if you have none. And whenever any links shared through IP ABC lead to other sites, neither IP ABC site nor Infusion Lawyers’ website incorporate any materials published in such linked sites. We also do not necessarily approve, endorse, or otherwise sponsor such links. ALL external links may have been used for reference purposes only.

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Apple vs Qualcomm: Who will win this legal war over intellectual property? IP Matters by Senator Ihenyen, Lead Partner, Infusion Lawyers--Intellectual Property Law Firm in Nigeria
Image source- The Next Rex

Apple vs Qualcomm: Who will win this legal war over intellectual property?

Apple and Qualcomm—two tech giants—are in a legal war. At the heart of this war is intellectual property. And at the rate it is going, it looks like this is going to be another long and vicious war—just as it was with Apple and Samsung.

  

Apple is Qualcomm’s biggest customer and Qualcomm is Apple’s wireless-chip supplier.

 
Apple is Qualcomm’s biggest customer. It’s rated the world’s most valuable brand. By revenue, Apple is the world’s biggest information-technology company. It is also the world’s third largest mobile-phone manufacturer, coming after Samsung and Huawei. 
 

Qualcomm is Apple’s wireless-chip supplier. It’s an American multinational semiconductor- and telecommunications-equipment company that develops wireless technology. It also designs chips for mobile phones. Qualcomm has key patents in CDMA and OFDMA technologies—the backbone of all 3G and 4G networks. It licenses these patents to smartphone manufacturers, including Apple, LG, and Samsung.

 

Things fell apart when Qualcomm—who was until now the apple of Apple’s eyes—lost its place when Apple appeared to have eaten the forbidden apple: monopolistic contracts, extortionist pricing practices, patents infringements, and other poisons alleged against Qualcomm.
 

It’s a legal war over intellectual property—who owns what; what is payable as royalty for what; and who Apple can work with or not work with under Qualcomm’s exclusive patent-licensing contract. This picture makes Apple look like an unhappy wife who badly wants a breath of fresh air from a jealous husband. But is this the true picture? 

 

Apple has sued Qualcomm in 3 countries—China ($145 million), United States ($1 billion), and United Kingdom for 3 major reasons.

 

First, Apple alleges that Qualcomm charges big royalties for Apple’s use of its wireless technology. Second, Qualcomm requires Apple to pay to it a percentage of revenue from Apple’s iPhone. This is in return for Apple’s use of Qualcomm patents. Apple believes Qualcomm is biting too much off Apple, hence the legal action against Qualcomm. Third, Apple alleges that Qualcomm’s Snapdragon mobile-phone chips infringes on Apple patents.

 

Qualcomm has not only counterclaimed but also countersued, claiming patent infringements on 3 major grounds.

The first and second grounds relate to Qualcomm’s allegation that Apple uses Qualcomm’s patent which make iPhone battery lives longer. The third ground is that Apple iPhones containing Intel-made chips violate its patent, thus should be banned in the US. Qualcomm also wants both manufacturing and sale of iPhones to be banned in China. Qualcomm has also sued Apple for 5 other issues. One of these issues is that Apple is deliberately not using Qualcomm’s chips in iPhone 7 products so they don’t outperform Intel-made modems used in iPhone 7. Qualcomm is also unhappy about Apple’s role in Qualcomm’s misfortunes with regulators who have been fining Qualcomm based on alleged facts misrepresentations and false statements by Apple.

 

The dust and earthquake both parties have caused in the ongoing legal war have attracted regulators’ attention.

This should be expected. Both Apple and Qualcomm are big tech kingdoms. Anti-trust regulators would be concerned about how Apple and Qualcomm’s nature of business relationship may hurt competition in the wider domain. In Europe, regulators discovered that from 2011 to 2016, Qualcomm had been paying Apple to use its chips and keep its fingers off competitors’ chips. Qualcomm was fined $1.2 billion a few days ago. 
 

 

Though the Apple-Qualcomm legal war may have just begun, I briefly draw below 4 points you need to note.

 
  1. In the knowledge economy, the intellectual-property rights owner wields enormous powers and controls competition. In the ongoing legal war, notice that though Apple is the world’s third largest mobile-phone manufacturer, it does not own all makeup of its phones. With IP, Qualcomm is able to license its patents in chips and other wireless technologies to Apple. It also does so with Samsung and Huawei. In 2016 alone, Qualcomm’s licensing unit made $7.7 billion revenue and generated $6.5 billion profit before tax. This is 85% profit margin. 
  2. When you are Apple big in global market, you don’t want to pull the plug on your customers. Though Apple and Qualcomm are in a legal war, Apple is still using Qualcomm’s modems in its iPhones. Apple is the world’s most valuable brand. To drop Qualcomm for Intel as it appears to be doing now, it has to be gradual. In fact, Apple already has Intel on its marital bed with Qualcomm by using Intel modem in its iPhone 7. Qualcomm is mad about this, especially because according to Qualcomm Apple has deliberately kept iPhone 7 variants with superior Qualcomm modems working at equal capacity with iPhone 7 variants with Intel’s relatively inferior modems.
  3. IP business will increasingly become the world’s biggest companies’ business model, especially in the technology space. IP business models attract little or no margins. This is why 85% of Qualcomm’s revenue in 2016 alone represents profit. Amazon, Ali Baba, Facebook, Google, Microsoft, and other info-tech companies may become completely IP businesses in a few years, turning themselves into ecosystems.
  4. If the clients you supply or license hardware or software to believe your contract with them is no longer in their best interest, they will either get another supplier or create their own technology, sooner or later. Your competitors will also be watching closely. In 2016 and 2017, Apple approximately splitted the chips it used for its iPhones and iPads between Intel and Qualcomm, 50-50. This year, Apple is designing its iPhone and iPad  devices to work without any Qualcomm chips. Of course, Intel—Qualcomm’s competitor—is positioning itself in the wireless-technology market, looking to keep filling the gap caused by the legal war between Apple and Qualcomm. 
 

Any lessons for computer-hardware and mobile-phone manufacturers, and technology companies? 

 

Yes, from the 4 points just discussed above, I got 4 lessons below:

 
  1. Optimize your business model to enable your technology company maximize your IP such as patents and copyright in software. Without building your IP portfolio, the bigger your business gets, the bigger the cash you would be paying companies who own the IP you neither built nor protected. This is why in a burgeoning technology space like Nigeria, pioneers like SystemSpecs and CWG need to take their IP seriously. New players are no exception. Learn from Apple’s experience. Apple is now investing in its own technology in 2018, while also fighting against Qualcomm’s monopoly. 
  2. Closely related to the lesson above is the need for technology companies to transform their businesses to IP businesses. When your business becomes IP business, you keep your marginal costs significantly low while putting your business on a growth track. Learn from Qualcomm who is making over 500% more profit from licensing patents than selling chips. But ensure you never stop being the apple of your client’s eyes. 
  3. If you are in a consumer marketparticularly—invest greatly in your brand. When you do, you will win trust and confidence in the market, even when you are in the ring with a Floyd Mayweather in your industry. Qualcomm is Floyd Mayweather. But Apple can take blows from Qualcomm and still avoid a knockout. Why? Apple has deepened brand loyalty so much that completely replacing Qualcomm with Intel or its own technology may not hurt Apple as badly as Qualcomm would be hurt from Apple’s point-strong punches in the right places. How? Qualcomm’s shares were down 13% since Apple filed its lawsuit exactly a year ago. It went down by another 8% when Apple announced in October 2017 that it was going to swap chips.
  4. Businesses in Africa—with their eyes on the ball in today’s knowledge and digital economy—must learn to invest in building their IP assets such as their brand and technology, not just big buildings, cars, and equipment. They must learn to own what they must own and acquire rights in what they need, while they invest in research & development (R & D) for sustainable growth and development. Samsung, Huawei, Apple—in that order—do not own all they sell, yet they are the 3 biggest mobile-phone manufacturers in the world. While they benefit from Qualcomm’s patents, they also invest in R & D. Big businesses that fail to invest in R & D today cannot be bigger than the buildings they do business in.
In IP matters, it’s never too early because IP matters to business and development, any day. 
 

 

IP Matters, Week Four, 2018
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Can I sue FlexiBank for using my image? IP ABC Week 3 by Infusion Lawyers--Intellectual Property Law Firm in Nigeria
Image source- OlayemiOgunojo.com

IP ABC™ (Week 3): Can I sue FlexiBank for using my image?

To view the subscribed-email version of IP ABC, click here.

Question of the Week (3) 

I’m Alade Thomas, a Nollywood comedian. Last weekend, I discovered a bank in Nigeria used my photo in one of its Instagram posts. The photo is a shot from a recent movie. To brand itself as a fun bank to do business with, the bank inserted the following words in the photo: “Unlike other banks, every day is Friday in every FlexiBank banking hall, making you smile and laugh all the way to success.” The bank’s action is surprising. This is because neither the bank nor any of its agents contacted me before using my photo. Now my face is all over social media. “How much did the bank pay you, Honey?”, asked my wife. “Congrats, you owe me a drink!”, a couple of friends have been saying over the phone. Plus thousands of reposts, retweets, shares, and direct messages. I am unhappy about this. I badly needed a quiet time with my family this new year. Can I sue FlexiBank for using my image without permission?

 

Answer

Since FlexiBank did not seek permission before using a photo of you to push its brand on Instagram, you want to know if you have right to sue the bank.

The answer is YES.

In the scenario above, there are various rights that apply to various persons, including you.

 

FlexiBank has violated your right to privacy and family life.

First, you have a right to privacy. Your right to privacy and family life is guaranteed under section 37 of the Constitution of the Federal Republic of Nigeria. By FlexiBank’s act of using a photo of you without first seeking and obtaining your permission, FlexiBank has violated your fundamental right. You are therefore entitled to sue FlexiBank for violating your right to privacy and family life.

 

Apart from your right to privacy, how about your right to publicity—specifically your image rights?
Now, apart from your constitutional right to privacy, you may be wondering if you have any image rights against FlexiBank. Right of publicity is your right as an individual to control how your image, name, or other aspects of your identity is commercially exploited by any person. Image rights is therefore part of your right of publicity. Image right is your right to control the commercial use of your image as a personality in the public. In some other countries, image right is treated as a property capable of being protected by law through registration.

But Nigeria does not have any law that protects right of publicity or image rights. So whether you can claim damages against FlexiBank for commercially exploiting your image is largely a question only a court of law can determine. Commercial rights in images is effectively limited in Nigeria. You may consider speaking with your lawyers.

 

And because the photo of you is protected by copyright, FlexiBank may still be liable for copyright infringements.
Notice we keep saying, a photo of you, not your photo. This is because we want to be sure you understand that for copyright purposes there is a distinction between the two. The image of you FlexiBank has used on Instagram is a photo of you, not necessarily your photo. This is because the face in the photo belongs to you, but the photo itself may belong to the photographer or camera person who took the shot. Since FlexiBank used a screenshot of you from a movie, it is most likely that the photographer or camera person who worked with the film producer has copyright in the photo. This person is entitled to sue FlexiBank for copyright infringement in a separate legal action. 

By the way, since FlexiBank originally posted the infringing photo on Instagram, you may contact Instagram to remove it. Clauses 4 and 8 of Instagram’s Terms of Use allow users to demand that infringing posts be removed.  

For competent guidance, consider consulting an IP lawyer or law firm for professional advice and assistance.

Best wishes

 

IP ABC

Follow-up questions, if any, are welcomed.

 

IP ABC™

IP ABC™ is an initiative of Infusion Lawyers, a virtual intellectual property (IP) and information technology (IT) law firm for the knowledge economy and the digital age.

 

Disclaimer

Characters, events, names, or places referred to in IP ABC may be fiction. Such fictional contents are meant to aid comprehension. Answers provided on IP ABC are prepared by Infusion Lawyers and are for general purposes only. Answers should not be construed as legal advice or legal opinion under any circumstances. If you have questions or legal problems that you need legal assistance with, please contact your IP lawyer or law firm, or contact Infusion Lawyers if you have none. And whenever any links shared through IP ABC lead to other sites, neither IP ABC site nor Infusion Lawyers’ website incorporate any materials published in such linked sites. We also do not necessarily approve, endorse, or otherwise sponsor such links. ALL external links may have been used for reference purposes only.

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Blue Ivy vs Blue Ivy Carter—Will Jay Z and Beyoncé win trademark dispute over their daughter's name? IP Matters by Senator Ihenyen, Infusion Lawyers
Image source- The List

Blue Ivy vs Blue Ivy Carter—Will Jay Z and Beyoncé win trademark dispute over their daughter’s name?

IP Matters: Week 3

Veronica Morales wants ‘Blue Ivy’ for her company; Jay-Z and Beyoncé wants it for their daughter.

 

Blue Ivy Events is the name of a Boston-based wedding planning company. The company has been in business since 2009 and it is owned by Veronica Morales (formerly Veronica Alexandra).

Blue Ivy Carter is the name of Jay-Z and Beyoncé’s daughter. Blue Ivy Carter was born in 7 January 2012. Few days after Blue Ivy Carter’s birth, Jay-Z and Beyoncé applied to trademark their daughter’s name, BLUE IVY. If successful, BLUE IVY was going to be the trademark of a baby-related product line.

Veronica Morales must have been seeing the news when she quickly applied to register BLUE IVY as her company’s trademark in February 2012. The United States Patent and Trademark Office (USPTO) accepted Veronica Morales’s application for BLUE IVY. The trademark class covered event-planning services. (Jay-Z and Beyoncé’s trademark agent is reported to have failed to complete all the paperwork at the time, hence the delay of theirs.)

 

Jay-Z and Beyoncé dumps BLUE IVY; Gets BGK to trademark BLUE IVY CARTER

In January 2016, BGK Holdings, Beyoncé’s licensing business, applied to trademark BLUE IVY CARTER at the USPTO. The application covered a number of trademark classes in connection with a wide range of goods and services, including baby products, CDs, cosmetics, DVDs, mugs, and even entertainment services and retail store.

Veronica Morales’s Blue Ivy Events in May 2017 opposed BKG’s trademark application for BLUE IVY CARTER. Mrs Morales argues that (1) BGK does not intend to use the services listed in the BLUE IVY CARTER trademark application, and (2) there is a likelihood of confusion with her company’s event-planning brand, BLUE IVY. She also argues that BKG’s act of stating that it intends to use the BLUE IVY CARTER trademark for goods and services when in fact there is evidence that it won’t amounts to fraud.

This is why Mrs Morales wants to get Jonathan Schwartz, BGK Holdings’ former Vice President who filed the BLUE IVY CARTER trademark request on Beyonce’s behalf, to testify. But BGK says Mr Schwartz was no longer BGK’s director, managing agent, or officer and has no affiliation with BGK. A judge has just recently granted Mrs Morales’s request.

 

Four Points You Must Know about How Trademarks Really Work

While the Blue Ivy trademark dispute is still a developing story 6 years after, I point out below 4 things you must know about how trademarks really work:

  1. Mrs Morales’s Blue Ivy Events has a strong point about BGK’s lack of intention to use the services listed in the BLUE IVY CARTER trademark application. Jay, and (2) there is a likelihood of confusion with her company’s event-planning brand, BLUE IVY. If Jay-Z’s comment in the media in October 2013 below is anything to go by, BKG has a difficult case. In that comment, Jay-Z said, “People wanted to make products based on our child’s name and you don’t want anybody trying to benefit off [sic] your baby’s name. It wasn’t for us to do anything; as you see, we haven’t done anything”. Mrs Morales has of course relied on these words in the opposition trial—the basis for accusing BKG of fraud.
  2. BLUE IVY CARTER is too similar to BLUE IVY,  Blue Ivy Event’s now-registered trademark. It would be difficult not to agree with Blue Ivy Events that granting BKG’s trademark application for BLUE IVY CARTER won’t confuse consumers. But because trademark is registered by class, the USPTO may decide that while BLUE IVY’ is a registered trademark under the class covering event services, BLUE IVY CARTER can be legally registered as a separate trademark for another brand in classes other than event services. But the Trademark Tribunal’s and Appeal Board (TTAB) may be having a tough time arriving at this decision because trademark is increasingly evolving from a system used to distinctively connect marks with particular goods and services to a tool for advertising, branding, investments, and even promoting quality. These secondary concerns are now so critical in today’s businesses that the primary function of trademark now seems increasingly foggy. 
  3. To successfully trademark a name, symbol, or logo, it must not only be distinctive but also be connected with goods or services. This is why trademark laws require that to be eligible for trademark registration, a name, symbol, or logo must be connected with business. Though by filing the application through BGK, Jay-Z and Beyoncé may be demonstrating their intent to really use ‘BLUE IVY CARTER’ and not just sit on the trademark, it is not sufficient to prove use.
  4. Because BLUE IVY is actually the of Jay-Z and Beyoncé’s daughter—a name widely identified with her—trademark law in the US requires that any person who wishes to trademark such personal names must obtain consent. If Jay-Z and Beyoncé really didn’t intend to do business with BLUE IVY or BLUE IVY CARTER, could they have just sat back and wait for applicants who needed contents? Not quite. A number of business-minded individuals were already applying for trademarks without seeking consent from Blue Ivy’s parents. There seems to be a growing level of uncertainty about the trademark system that even gold diggers—or at least opportunists—now consider celebrity-name trademarks a gold rush.

 

Here’s are 3 lessons you can take away from the Blue Ivy dispute.
  1. With trademark, there is everything in a name. If you understand how critical trademark is to your brand, you will appreciate the worth your name has. Though Beyoncé and Jay-Z—superstars and entertainment entrepreneurs—may have moved too fast, they at least had an idea that ‘Blue IVY’ had some considerable worth.
  2. But because there is everything in a name does not mean you can trademark a name in order to merely stop others from profiting from it. Trademarks don’t work that way. If Jay-Z’s comment in the media in October 2013 is anything to go by, Jay-Z completely misunderstood how trademarks work. You shouldn’t. In Jay-Z’s words, “People wanted to make products based on our child’s name and you don’t want anybody trying to benefit off [sic] your baby’s name. It wasn’t for us to do anything; as you see, we haven’t done anything.” Mrs Morales is strongly relying on these words in the opposition trial. Jay-Z’s fears are understandable anyway. In fact, Jay-Z and Beyoncé’s first attempt to trademark BLUE IVY came a few days after two persons attempted to trademark BLUE IVY in combination with one or more characters immediately after the superstars named their new-born baby, BLUE IVY.  
  3. Get trademark protection for your business—both products and services—as early as possible so you avoid disputes and other related issues. Victoria Morales didn’t think of trademarking her Blue Ivy for her company until she discovered Jay-Z and Beyoncé  had applied to do so for their daughter. Even if you are just celebrity, you may need to consider protecting your name in today’s hyperactive business world.

In IP matters, it’s never too early because IP matters to business and development, any day. 

 

IP Matters, Week Three, 2018
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