The Trademark Office Pulls the Plug on Monster Cable’s Application Related to Auto Parts.

Last Saturday night, I did something that I had never done before: I went to the Monster Truck Jam at Angel Stadium in Anaheim.  My 3-year-old son had recently grown attached to a toy version of the monster truck known as the Grave Digger.  So there we were with 40,000 other fans in awe over these supersized diabolical machines with their 66” tires, deafening exhaust systems, and circus-like themes.  As the show wrapped up, my son convinced me to buy him the toy version of his new favorite monster truck: “Monster Mutt” — canine-themed truck complete with a tail and floppy ears (see photo).

This experience made the recent refusal of Monster Cable’s trademark application seem more relevant.  Way back in January of 2004, Monster Cable filed an intent-to-use application with the United States Patent and Trademark Office (the “USPTO”) to register the trademark “Monster” in connection with:

Automotive and marine accessories, namely, automotive bed mats, automotive bug shields, bumpers, automotive organizers, automotive cargo management systems, automotive fender flares, automotive grab handles, automotive grille, grille guards, automotive light bars, rear view mirrors, roll bars, running boards, automotive seats, seat covers, side bars, side skirts, skid plates, spoilers, visors, truck steps, shock absorbers, tail gate protectors, tail gates, side guards, truck cargo nets, tonneau covers, truck boxes, window covers, window deflectors, automotive battery accessories, automobile bug shields, automobile covers, automotive carpets, dash board covers, floor mats, front end masks, headliners, license plate frames, splash guard, steering wheel covers, steering wheels, sun covers, automobile window shades, window covers, window deflectors, shift knobs, hoods, automotive batteries, spark plugs, suspension struts, air intake manifolds, truck bed liners.

The USPTO Examining Attorney summarily refused the application based on the mark being merely descriptive.  The Examining Attorney contended that the term “monster truck” refers to a large pickup truck and to use the mark “Monster” in connection with truck accessories would identify products intended for monster trucks.  The term is deemed to be “merely descriptive…if it conveys an immediate characteristic, feature, or function.” It is enough that the term “Monster”, describes one significant attribute of the goods or services.

Monster Cable appealed the Examining Attorney’s final refusal to approve the application and the matter was considered by the Trademark Trial and Appeal Board (the “TTAB”).  Three weeks ago, after pending for over seven years, the TTAB affirmed the refusal thereby killing off Monster Cable’s application once and for all.

Notorious for being aggressively litigious, Monster Cable has opposed applications for registrations for various marks that include the term “Monster” at the USPTO.  Some past examples include: the Monster.com employment website, Fenway Park’s The Green Monster, Monster Energy drinks, and even Pixar’s “Monsters, Inc.”

So here’s to the USPTO for standing up to big bad Monster Cable!

Eric Goodman

eric@goodmanmooney.com

Rihanna Slapped with Lawsuit Over “S&M” Video

Artist David LaChappelle has filed suit against musician Rihanna, her record label, the producer, and the director of Rihanna’s music video for her newest single, “S&M.”

The lawsuit, filed February 14, 2011, is merely the latest layer of controversy for the video that has been age-restricted on YouTube and banned in 11 countries in just two weeks since its release.  The heavily sexualized video includes sadomasochistic imagery that some viewers have deemed indecent.  LaChappelle’s objection, however, is not based upon decency.  Rather, he alleges that the video “copies original photographs conceived and created by [LaChappelle].”

LaChappelle, a renowned artist, contends that Rihanna never sought permission to use his photographs despite Rihanna and her people having asked the director of the video (and another director who turned down the job) to “make a ‘LaChapelle-esque music video.’”  LaChappelle further alleges that his actual photographs were used in the storyboards for the video.

LaChappelle claims that the “S&M” video incorporates images so similar to his photographs that it violates Federal copyright and trade dress law.  But the video did not use LaChappelle’s exact photographs, so does it constitute copyright or trade dress infringement?

The owner of a copyright has the exclusive right to do and to authorize (among others) any of the following: (1) reproduce the copyrighted work;  (2) prepare derivative works based upon the copyrighted work;  (3) to distribute copies of the copyrighted work to the public; and (4) to display the copyrighted work publicly.

The copyright infringement claim is likely to turn on whether Rihanna’s video is similar enough to constitute a “derivative work.”  Under Federal law, a “derivative work” is a work based upon one or more pre-existing works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.  If the video is deemed to be a “derivative work” then LaChapelle has the rights to it and Rihanna is likely to be found to have committed copyright infringement.

The trade dress claim contends that LaChappelle’s work is so well known that it has acquired secondary meaning, i.e., that people attribute the work to LaChappelle and that the video’s images cause confusion as to the source of the work (LaChappelle rather than Rihanna).

LaChappelle hopes to use legal restraints to stop Rihanna and her video.  The merits of the case may get an early test if LaChappelle seeks a preliminary injunction, the legal equivalent of a ball gag.