智慧財產相關案例分享
▲蘇狀師談娛樂法(商標爭議篇)

Central Manufacturing, Inc. v. Brett et al. 492 F. 3d 876 (7th Cir. 2007)  Central Manufacturing, Inc. (“Central”), the registrar of the “Stealth” trademark for baseballs, brought a Lanham Act and state law infringement action against Brett Brothers Sports (“Brett Bros.”), a baseball bat manufacturer that produced a bat of the same name. Brett Bros. is owned in part by Baseball Hall of Famer George Brett. The United States District Court for the Northern District of Illinois granted summary judgment which Central subsequently appealed. The issues on appeal are whether the evidence presented by Central was sufficient for a finding of infringement, whether the district court abused its discretion by ordering cancellation of the registration, and whether the granting of attorney’s fees to Brett Bros. was warranted. The district court’s judgment was affirmed. Central製造公司是有關棒球相關製品“Stealth”商標之所有人,其對Brett Brothers Sports公司,該公司係由棒球名人堂成員George Brett部分持股,提起聯邦商標和州法商標侵權訴訟。美國伊利諾州北區地方法院准予即決判決,Central製造公司隨後提起上訴,上訴的爭點在於,Central所提呈的證據是否足以認定對造侵權,法院是否濫用裁量為撤銷商標註冊令,是否判決應給付Brett Brothers律師費係有正當理由,二審維持一審之判決。 An action for trademark  infringement can only succeed if the plaintiff owns the mark. Registration provides prima facie evidence of ownership that can be rebutted by competent evidence. More importantly, the mark must be used in commerce to ensure that entrepreneurs do not reserve brand names, making their competitors’ products more costly. If a court decision raises doubts about the validity of a trademark registration, a court may cancel the mark, so long as there is no abuse of discretion. Attorney’s fees and other costs may be awarded to the prevailing party “in exceptional circumstances.” 一個商標侵權訴訟,只能在原告擁有該商標時勝訴。商標註冊只是證明商標所有權之初步表面證證,其是可被有利的證據所推翻。更重要的是,商標需確保企業無保留於商業上使用該品牌名稱,使其競爭對手之產品更昂貴。假如法院對商標註冊之有效性生疑。只要無濫用其裁量權,法院可撤銷該商標註冊。在特別的情狀下,律師費及其他費用可判賠給勝訴之一造。 In 1984, Central’s owner and sole shareholder, Leo Stoller registered the Stealth mark for a variety of sporting goods and registered the mark for baseball bats in 2001. Brett Bros. sold its first Stealth bat in 1999 and has sold 25,000 since.Stoller has licensed the mark and sent various cease-and-desist letters to business such as Kmart, Panasonic and even the stealth bomber.Similarly, Stoller sent a letter to Brett Bros. demanding $100,000. Brett Bros. argued that the mark was never used in commerce and requested that Stoller produce evidence to the contrary. The district court found that no valid evidence was produced that the mark was ever used in commerce and the court of appeals agreed. The court of appeals also found that there was no abuse of discretion in cancelling the mark as the registrant’s asserted rights to the mark were invalid.Finally, the court of appeals determined that under the Lanham Act there was no clear error in awarding attorney’s fees as Central’s actions in bringing the case were oppressive. The court of appeals affirmed the district court’s finding that Central produced no evidence of trademark infringement in that no documents were filed, that Stoller mislead the court with his testimony, and that his documents made a mockery of the proceeding. Therefore, the cancellation of the mark and the grant of attorney’s fees were justified. 1984年Central公司的所有人兼唯一股東Leo Stoller將Stealth標記申請註冊於運動用品,同時於2001年將該標記申請商標註冊於棒球棒。 Brette Bros於1999年售出印有Stealth第一枝棒球棒,從那時起共賣出25,000枝。Stoller有將該商標予以授權,同時發出警告信予諸如像Kmart, Panasonic ,甚至像stealth bomber等廠商。同樣地,Stoller對Brette Bros.發出警告函,要求100,000的賠償金。Brette Bros爭執該標記從未用於商業使用,要求Stoller提出證據。地方法院判決無任何有效證據可證該標記曾用於商業,上訴審亦同此見解。終審法院亦認定撤銷商標註冊無濫用裁量,商標權人主張就該標記有商標權,是無效的。最終,終審法院認定Central's提起本件訴訟判予律師費係苛刻的,在藍能法下並無明顯錯誤。 終審法院確認地院判決Central公司提不出商標侵害之證據,而Stoller用其證詞誤導法院,同時其文件對訴訟程序無助。是故,撤銷該商標及判賠律師費予以判決確定。

▲蘇狀師談娛樂法(名氣權;藝人之知名度於其死後之保護)

She Belongs to the Public: Court Rules that Marilyn Monroe Estate has no Rights of Publicity Background:  For the past 50 years—since Monroe’s death in August 1962—Monroe’s Estate (and its successor, Monroe, LLC) has been asserting that it inherited Monroe’s right of publicity, claiming to own Monroe’s images, voice, likeness and biographical information—rights that were worth $27 million in 2011. 背景:自從瑪麗蓮夢露1962死亡至今已50年,其繼承人夢露有限責任公司持續主張其擁有瑪麗蓮夢露的名氣權,包括圖像、聲音、樣貌和傳記資料,這些在2011年總價值2千7百萬美元。 New York or California? 該繼承人主張其擁有瑪麗蓮夢露知名氣權,準據法究竟係依紐約州法抑或是加州法? Rights of publicity vary from state to state: though most states recognize the right during a person’s lifetime, only a few states extend those protections after death.  美國各州對知名度之保護,採取不同的保護強度,雖然大多數的州承認人於其生存其間可主張知名度,僅有少不分的州承認死後名人權。Though in California individuals have a posthumous publicity right, which can be bequeathed, in New York, the right of publicity is extinguished at death.  在加州承認死後名人權,有可被繼承人所繼承,但在紐約知名度在人死後即消滅。Monroe died at a house she owned in Brentwood, California, though she also maintained her prior residence in New York City.  瑪麗蓮夢露於其加州Brentwood自宅內死亡,雖然其住所設在紐約Thus, the issue before the court was clear: if Monroe was a California resident at her death, the Monroe Estate would have inherited control of her name and likeness; if she was a New York resident, those rights would have expired when Monroe died.所以,於訴訟時爭點非常明確,假如瑪麗蓮夢露死時,是加州居民,其繼承人人可繼承並得支配其姓名與樣貌,假使她是紐約居民,上開權利於其死亡時即消滅。(待續)

▲蘇狀師談娛樂法(名模吉吉哈蒂案深度解析三)

In what the plaintiff called a “nearly identical” case filed at the beginning of 2019, Hadid similarly copied and posted a paparazzi photo of herself, owned by Xclusive-Lee, Inc., to one of her social media accounts without license or permission from the copyright owner. Xclusive-Lee, Inc. v. Hadid, 1:19-cv-00520-PKC-CLP (E.D.N.Y. 2019). 於2019年年初,哈蒂重製一張由狗仔對所攝含有她自己的照片並上傳於其社群網頁,而該照片之著作權人為Xclusive-Lee, Inc.,該公司遂以“幾近相同”為由,對之提起侵害著作財產權訴訟。 Aside from bringing the same claim as Cepeda, Xclusive also notes that Hadid had first-hand knowledge that what she was doing constituted copyright infringement since she had been sued for the same thing just two years prior. The district court dismissed this case due to a lack of a copyright registration, though Hadid’s legal team also raised the defenses of fair use and implied license. The second case may have begun paving the way for future legal challenges to clarify these issues by raising a novel argument—implied license—alongside the more typical defense of fair use. Perhaps the time has come for these arguments to finally be decided by the court since Hadid has been sued yet again—this time for posting a photographer’s copyrighted photo of her former boyfriend and singer/songwriter, Zayn Malik, without license or permission. O’Neil v. Hadid, 1:19-cv-8522 (S.D.N.Y. 2019). An initial pretrial conference is scheduled for January 14, 2020.以上中文譯文,為本人所譯;請尊重著作權,違法利用,本人必究。

▲蘇狀師談娛樂法(藝人代言契約實務–藝人代言契約應注意事項)

Rights & Licenses 權利及授權 [Sender.Name] is requesting the exclusive right and license to utilize this name in connection with the advertisement, promotion, and sale of their product. This contract is an agreement for those rights and services with the following terms being in place. 被授權者(下稱甲)要求專屬權及被授權利用權利者(下稱乙)之姓名於廣告行銷與銷售產品。本契約係依根據下列條款所為係爭權利與服務之協議。 [Endorser.Name] will provide rights for [Sender.Company] to hold all exclusive rights and licenses needed during the term of [Agreement.Term]. including the ability for use of any nicknames, initials, autographs, photographs, or any other property in relation to the advertisement or sale of mentioned product. 在契約期間,乙將專屬授權與甲,包括有權去利用任何乙之別名、藝名、簽名,照片或其他任何與廣告行銷有關之財產或本契約提及之銷售產品。 Endorsement Agreement Effective Date 代言契約生效日 This agreement shall become effective as of signature dates below and will remain effective for a term of 12 months unless prematurely terminated for failure to comply with any of the terms or conditions listed in this agreement. 本契約於下簽名日時生效,並於簽名生效後12個月為契約期間,除非契約任一方有違約情事,於預先終止本契約,否則契約仍有效存續。 Payment of Royalties 給付權利金 [Sender.Company] agrees to pay all royalties due from sales of such products as agreed between parties.Any and all royalties owed will be due on a yearly basis and shall be payable no later than thirty (30) days after the termination of the preceding full calendar quarter. 甲願給付雙方同意銷售產品所得所有之權利金。如何拖欠及所有之權利金應以年度為基準來給付。 For each royalty period due [Sender.Comany] will provide endorser with written notice of all royalties as well as any and all descriptions of Products that were sold during the Royalty Period or whether any actual Royalty was owed. “Net Sales” shall mean [Sender.Company] gross sales of Product, excluding all customary discounts and allowances as well as returns. The receipt or acceptance by [Endorser.LegalName] for above mentioned statement or payment shall not prevent Endorser from challenging or requesting proof of such document findings. Any and all obligations for the payment of Royalties shall survive expiration or termination of this Agreement and will continue for as long as Endorsed Constructor continues to sell the Product or payment is owed. In the event of underpayment to endorser for any and all royalties, endorser will bill for all royalties as well as interest fees in relation for said royalties.   請尊重著作權;違法利用,本人必究。

▲蘇狀師談娛樂法(藝人代言契約實務–藝人代言契約應注意事項)

Rights & Licenses 權利及授權 [Sender.Name] is requesting the exclusive right and license to utilize this name in connection with the advertisement, promotion, and sale of their product. This contract is an agreement for those rights and services with the following terms being in place. 被授權者(下稱甲)要求專屬權及被授權利用權利者(下稱乙)之姓名於廣告行銷與銷售產品。本契約係依根據下列條款所為係爭權利與服務之協議。 [Endorser.Name] will provide rights for [Sender.Company] to hold all exclusive rights and licenses needed during the term of [Agreement.Term]. including the ability for use of any nicknames, initials, autographs, photographs, or any other property in relation to the advertisement or sale of mentioned product. 在契約期間,乙將專屬授權與甲,包括有權去利用任何乙之別名、藝名、簽名,照片或其他任何與廣告行銷有關之財產或本契約提及之銷售產品。 Endorsement Agreement Effective Date 代言契約生效日 This agreement shall become effective as of signature dates below and will remain effective for a term of 12 months unless prematurely terminated for failure to comply with any of the terms or conditions listed in this agreement. 本契約於下簽名日時生效,並於簽名生效後12個月為契約期間,除非契約任一方有違約情事,於預先終止本契約,否則契約仍有效存續。 Payment of Royalties 給付權利金 [Sender.Company] agrees to pay all royalties due from sales of such products as agreed between parties.Any and all royalties owed will be due on a yearly basis and shall be payable no later than thirty (30) days after the termination of the preceding full calendar quarter. For each royalty period due [Sender.Comany] will provide endorser with written notice of all royalties as well as any and all descriptions of Products that were sold during the Royalty Period or whether any actual Royalty was owed. “Net Sales” shall mean [Sender.Company] gross sales of Product, excluding all customary discounts and allowances as well as returns. The receipt or acceptance by [Endorser.LegalName] for above mentioned statement or payment shall not prevent Endorser from challenging or requesting proof of such document findings. Any and all obligations for the payment of Royalties shall survive expiration or termination of this Agreement and will continue for as long as Endorsed Constructor continues to sell the Product or payment is owed. In the event of underpayment to endorser for any and all royalties, endorser will bill for all royalties as well as interest fees in relation for said royalties.