In The News

18Jan

SCOTUS TO DECIDE IF DISPARAGING NAMES CAN BE FEDERALLY REGISTERED TRADEMARKS

  • Posted by lawyeradmin
  • On January 18, 2017
  • In News
DEAD KENNEDYS. SEX PISTOLS. PUSSY RIOT. Band names are sometimes offensive. They also can be service marks governed by the federal Trademark Act and state trademark acts. On January 18th, the US Supreme Court heard oral argument on whether the disparagement provision of the Trademark Act, which provides that no trademark shall be registered which “consists of…matter which may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” is facially invalid under the Free Speech Clause of the First Amendment. The responding party, Simon Tam, is the founder of an all-Asian American rock band called THE SLANTS, who has stated that the band intends to reclaim the word “SLANTS,” much as the gay community has embraced the word “queer.” The dispute started when the US Patent and Trademark Office refused registration of THE SLANTS as a service mark for a musical group. Mr. Tam appealed the decision to the Federal Circuit Court of Appeals, which sided with Mr. Tam, reasoning that while some trademarks “convey hurtful speech that harms members of oft-stigmatized communities,” the First Amendment “protects even hurtful speech.” Recent Supreme Court decisions also have liberally protected offensive speech, including protests at military funerals, depictions of animal cruelty and lies about military achievements. But, federal registration of a service mark is all that is at issue in this case, so even if SCOTUS upholds the Trademark Office’s decision denying registration, THE SLANTS are free to continue using their name. This could prove to be a decisive nuance under a free speech analysis. Ironically, THE SLANTS in 2011 were added to the US Armed Forces Entertainment Roster and invited to perform for active duty troops overseas. So regardless of whether THE SLANTS can attain federal trademark registration of their mark, at least one government agency has embraced the band and its name; and all the publicity around this case can’t be hurting their booking calendar.
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12Dec

HW News Highlights

  • Posted by lawyeradmin
  • On December 12, 2016
  • In News
Dear Friends, As we head toward a new year, we are delighted to share with you some of the exciting news, events, awards, wins and client successes we and our clients experienced during 2016. We begin with our brand-new website! www.holmesweinberg.com. Designed in collaboration with our client Pop2Life (www.pop2life.com), our new website displays our new branding. With clients ranging from under-25 entrepreneurs and creative professionals in entertainment, social media and digital tech to global corporations, our updated website and branding reflect our desire and ability to successfully represent and advise our wide range of clients. If you're not familiar with our full set of services, please visit http://www.holmesweinberg.com/what-we-do/. Michael Leventhal joined the firm as a partner Michael is a veteran technology, business and IP transactional lawyer who most recently served as chief legal officer and Vice President at Magic Leap, Inc., the well-known augmented/mixed reality venture. He has represented dozens of startups as well as Fortune 500 companies, and has been on the forefront of the legal and business aspects of nearly every major technological innovation in digital media. Michael is outside general counsel for several tech companies, assisting them with corporate and IP/tech agreements and issues and is very involved in augmented reality tech law. Recognition for the Firm and Its Lawyers For the fifth year in a row, our Firm has been named to Best Law Firms in America by US News and World Report, and Partner Steve Weinberg was named to the list of Best Lawyers in America for the eleventh consecutive year, an honor which is awarded to only 4% of all practicing lawyers in the US. Partners Henry Holmes, Hillary Bibicoff and Steve Weinberg were once again named as Southern California Super Lawyers ­ Hillary and Henry (both for entertainment law) for the 10th year and Steve for the 5th year (intellectual property and IP litigation). Henry and Steve also were recognized by Who's Who Legal, Henry for Sports and Entertainment and Steve for Telecommunications Media & Technology and Information Technology. Henry and Hillary received the "highest possible rating" by Martindale-Hubbell ­ "AV Premier," and Steve again was named as one of the top trademark law litigators in California and nationally by World Trademark Review (the WTR 1000). Client Successes // Transactions You all know of client George Foreman's incredible success with the "George Foreman Grill," a deal put together by HW partner Henry Holmes. During this last year, Henry negotiated George's deal with the highly successful NBC show "Better Late Than Never" and for a feature film about George's life, and Henry and Steve negotiated a licensing deal for George involving walking shoes (and if you haven't tried George's online food company, the George Foreman Butcher Shop, you're missing out: www.gfbutchershop.com) After successfully representing writer/director Alfonso Cuaron in the highly awarded (including 7 Academy Awards® and BAFTA®) and acclaimed film Gravity, Henry and the team at HW is representing Mr. Cuaron in a new feature film entitled "Roma," which he is producing, writing, directing and editing. We also are representing his son Jonas Cuaron in connection with his writing a new "Zorro" film and in other projects. HW's Hillary Bibicoff represented Rob Long as showrunner for "Kevin Can Wait," starring Kevin James, which has received a full season order, and represented Pam Fryman in her deals for directing episodes of "Odd Couple" and "Man With A Plan." Hillary also represented Jen McGowan who is in pre-production to direct her next feature, "Rust Creek," which is scheduled to commence principal photography at the end of this month, as well as the showrunner of the hit series "The Blacklist," John Eisendrath, in connection with the upcoming "The Blacklist" spinoff (both Mr. Eisendrath and HW client Dan Knauf continue to serve as executive producers on "The Blacklist"). Hillary also served as production counsel for the Super Bowl Pre-Game and Halftime Shows, as well as the NFL Kickoff Celebration for the third year in a row, and also provided production legal services in connection with the Democratic National Convention, and HW client and nationally syndicated "Jump Start" cartoonist Robb Armstrong's book, "Fearless: A Cartoonist¹s Guide to Life" was recently published. HW client and Snapstar Tristan deBurgh aka Tristan Tales, represented by Mike Salvatore, did Snapchat takeovers and promotions for Coca Cola, Just Dance 2017 (video game), Beyond (TV series), Dead of Summer (TV series) and Alice Through the Looking Glass (film). HW also served again as production counsel for The Teen Choice Awards on FOX and represented a number of its producer clients in film, television and social media channel options. Outside of the entertainment and social media worlds, Steve Weinberg, who serves as outside general counsel for LanguageLine Solutions, the world¹s largest language services company, assisted with the sale of LanguageLine Solutions to Teleperfomance, a worldwide leader in outsourced multichannel customer experience (LanguageLine Solutions continues as an operating company within the Teleperformance group of companies). Steve also represented the owner of the LA based Depot Fitness health and fitness group in deals relating to the expansion of the group, a major consumer product company in negotiations regarding the filming of a documentary about the company and its well-known founder, as well as a number of licensing deals for clients in the digital media, mobile app and consumer brand spaces. Client Successes // Litigation 2016 was an active year for litigation. In addition to the many Trademark Office opposition and cancellation proceedings and civil lawsuits still being litigated by HW for its clients, and the literally dozens of trademark and copyright enforcements we handled and are handling for our clients, we won the following important cases (we didn't lose any!): The Ninth Circuit Court of Appeals affirmed the summary judgment decision we obtained on behalf of our client E. & J. Gallo Winery that the trademark EL GALLO for an energy drink infringes the Winery's exclusive rights in the GALLO trademark. The Trademark Trial and Appeal Board of the US Patent and Trademark Office ruled that KARAOKE'S GOT TALENT for talent contests could not be federally registered as a service mark in light of our client FremantleMedia's prior ownership of the AMERICA'S GOT TALENT mark. In ruling in our client's favor following an accelerated trial, the Board held that AMERICA'S GOT TALENT is a "famous" mark, a particularly great part of the overall result. The Board rarely holds marks to be "famous" — a finding that extends the broadest possible protection to a trademark or service mark. HW obtained summary judgment for client KidTribe against the attempt by two former employees to register HOOP IT UP as a service mark for providing educational athletic services to school kids. KidTribe has been providing athletic/empowerment programs for school kids nationally, including at the White House. Unfortunately, the owner had not entered into written agreements with two of its instructors, who decided to abruptly leave the company to start a competitive business, using and seeking to register KidTribe's popular trademark HOOP IT UP. The Trademark Trial and Appeal Board agreed with our client that the former employees could not succeed with their plan. Last but not least, with co-counsel Meylan Davitt, HW obtained summary judgment in our client McKeon Products' favor in the Northern District of California, in which the court held that plaintiff Moldex-Metric's green colored earplug used in industrial settings was not a protectable trademark under the Supreme Court¹s Qualitex Co. v. Jacobson Products Co. and the Ninth Circuit's Disc Golf standards for determining functionality. Moldex touted that its neon green colored earplugs were the best for compliance checks in industrial settings and dominated that market segment. The court held that under these facts, the color green was functional as a matter of law and therefore not protectable. Moldex has filed an appeal of the decision with the Ninth Circuit, which has been fully briefed. Thanks for letting us share our news with you, and thanks to our wonderful clients for trusting in us!
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20Nov

HW Wins Ninth Circuit Appeal in a Trademark Case November 20, 2016

  • Posted by lawyeradmin
  • On November 20, 2016
  • In News
We are delighted to share with you that the Ninth Circuit Court of Appeals has affirmed the decision we obtained on behalf of our client E. & J. Gallo Winery that the trademark EL GALLO for an energy drink infringes the Winery’s exclusive rights in the GALLO trademark. HW partner Steven Weinberg and senior associate Michael Salvatore represented Gallo in the trial court and on the appeal.
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08Nov

HW Named to Best Law Firms 2017

  • Posted by lawyeradmin
  • On November 8, 2016
  • In News
We are delighted to share that HW has for the 5th year in a row been named to Best Law Firms in American by US News and World Report. From the “Best Law Firms” Press Release: Firms included in the 2017 “Best Law Firms” list are recognized for professional excellence with persistently impressive ratings from clients and peers. Achieving a tiered ranking signals a unique combination of quality law practice and breadth of legal expertise. “U.S. News is the global authority in rankings,” says Tim Smart, executive editor of U.S. News & World Report. “Evaluating law firms is a natural extension of what we do best.” The 2017 rankings are based on the highest number of participating firms and the highest number of client ballots on record. To be eligible for a ranking, a firm must have a lawyer listed in The Best Lawyers in America, which recognizes the top 4 percent of practicing attorneys in the U.S. Over 10,000 attorneys provided more than 800,000 law firm assessments, and over 10,000 clients provided more than 90,000 evaluations. HW founder Steven Weinberg was listed in Best Lawyers in America for the fifth year in a row.
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07Sep

TOP TECH LAWYER JOINS HW

  • Posted by lawyeradmin
  • On September 7, 2016
  • In News
We are delighted to announce that Michael Leventhal has joined the firm as a partner. Michael is a veteran technology, business and IP transactional lawyer who most recently served as chief legal officer and Vice President at Magic Leap, Inc., the well-known augmented/mixed reality venture. He has represented hundreds of startups as well as Fortune 500 companies, and has been on the forefront of the legal and business aspects of nearly every major technological innovation in digital media. A frequent speaker and author on intellectual property and digital media matters, Michael’s extensive experience is described at http://www.holmesweinberg.com/attorneys/Michael-Leventhal.
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04May

MORE TRADEMARK WINS FOR HW CLIENTS

  • Posted by lawyeradmin
  • On May 4, 2016
  • In News
AND THE WINS KEEP COMING! Following last year’s big win for our client E. & J. Gallo Winery against the use of EL GALLO as a trademark for an energy drink (Eastern District of California), HW has recently won three more important cases. In the first, the Trademark Trial and Appeal Board of the US Patent and Trademark Office ruled that KARAOKE’S GOT TALENT for talent contests could not be federally registered as a service mark in light of our client Fremantle Media’s prior ownership of the AMERICA’S GOT TALENT mark. In ruling in our client’s favor following an accelerated trial, the Board held that AMERICA’S GOT TALENT is a “famous” mark, a particularly great part of the overall result. The Board rarely holds marks to be “famous”; a finding that extends the broadest possible protection to a trademark or service mark. In the second case, HW obtained summary judgment for client KidTribe against the attempt by two former employees to register HOOP IT UP as a service mark for providing educational athletic services to school kids. KidTribe has been providing athletic/empowerment programs for school kids nationally, including at the White House. Unfortunately, the owner had not entered into written agreements with two of its instructors, who decided to abruptly leave the company to start a competitive business, using and seeking to register KidTribe’s popular trademark HOOP IT UP. The Board agreed with our client that the former employees could not succeed with their plan. Last but not least, with co-counsel Meylan Davitt, HW convinced the Northern District of California to enter summary judgment in our client McKeon Products’ favor, holding that plaintiff Moldex-Metric’s green colored earplug used in industrial settings was not a protectable trademark under the Supreme Court’s Qualitex Co. v. Jacobson Products Co. and the Ninth Circuit’s Disc Golf standards for determining functionality. Moldex touted that its neon green colored earplugs were the best for compliance checks in industrial settings and dominated that market segment. The court held that under these facts, the color green was functional as a matter of law and therefore not protectable. Moldex has filed an appeal of the decision with the Ninth Circuit. Congratulations to our clients and many thanks to them for trusting in HW to represent them.
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22Dec

YOU CAN NOW REGISTER DISPARAGING TRADEMARKS

  • Posted by lawyeradmin
  • On December 22, 2015
  • In News
The Court of Appeals for the Federal Circuit, which governs appeals from the Trademark Office, has ruled that the barring of “disparaging” trademarks or service marks from federal registration violates the First Amendment. In this 62 page en banc (the entire panel of judges heard the case) decision, the majority of the Federal Circuit in In re Simon Shiao Tam, ruled that the “disparagement” restriction in Section 2(a) of the federal Trademark Act, which has been used to prevent registration of a number of “disparaging” marks including the REDSKINS professional football team name, is impermissible government regulation impermissibly burdening private speech based on disapproval of the message conveyed and therefore violates the First Amendment. The court left open for another day the constitutionality of the Section 2(a) regulations prohibiting registration of “immoral, deceptive or scandalous” marks, or marks “which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” The facts of the case were whether the Asian band name THE SLANTS should be denied registration under Section 2(a). The Trademark Office had refused registration on the basis that the name was disparaging of Asians. Significantly , the owner of the mark, a band member, claimed that the name was chosen to “reclaim” and “take ownership” of Asian stereotypes, urging that Asians should be proud of their heritage and not offended by stereotypical names. As a result of this decision, the Trademark Registries likely will become pretty interesting for a while.
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08Dec

The Studios May Be Cutting Content Licenses to Digital Networks

  • Posted by lawyeradmin
  • On December 8, 2015
  • In News
Studios reportedly are weighing a cut in content licensing to digital networks such as Netflix, in an effort to stem the tide of dwindling interest in traditional TV. This comes at the same time as digital content houses, such as Full screen, are preparing an expansion into consumer-facing subscription VOD portals in direct competition with Netflix, Amazon, Hulu and others. While the industry continues to adapt to consumer trends and chase revenue, a fundamental rule that cannot be ignored is letting consumers watch great content on their own terms. http://www.hollywoodreporter.com/news/tvs-new-dilemma-do-digital-844915
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13Nov

HW CLIENT TRISTAN TALES SPEAKING AT DIGITAL LA!

  • Posted by lawyeradmin
  • On November 13, 2015
  • In News
Congrats to our client Tristan deBurgh (“Tristan Tales”), a leading Snapchat Star, who will be a panelist on the Snapchat Panel at Digital LA on Monday, November 16th. We’ll be there – so come join us! http://digitalla.net
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12Nov

HW WINS FEDERAL CIRCUIT APPEAL FOR CLIENT KIDTRIBE

  • Posted by lawyeradmin
  • On November 12, 2015
  • In News
Our client KidTribe is a children’s wellness and exercise company that teaches happiness and healthiness through Hula-hoop exercises and dance programs at schools and sponsored events. One of its popular trademarks is Hoop-It-Up! ™. Two of its employees decided to go out on their own and tried to federally register the Hoop-It-Up! ™ trademark for a competitive business. We filed an opposition proceeding in the Trademark Trial and Appeal Board against that attempted registration and won. The employees appealed to the Federal Circuit, which just upheld the decision. One of the more interesting aspects of the case was proving KidTribe’s priority through its principal’s using the phrase Hoop-It-Up! ™ on DVDs. And of course it didn’t hurt that the defendants were former employees who used to use the mark themselves when they worked for KidTribe!
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11Nov

NEW STUDY ON SOCIAL MEDIA INFLUENCE REVEALS IMPORTANT INSIGHTS

  • Posted by lawyeradmin
  • On November 11, 2015
  • In News
An new study by the marketing firm Ogilvy & Mather suggests that the raw numbers of a social media influencer’s followers may not tell the whole story—rather, the influencer’s ability to engage fans and build an online community is more meaningful to brands. For influencers, this means that while growing subscribership remains important, creating content that engages, entertains and keeps fans coming back for more may be the best measure of success—and of a brand’s interest in working with you. This study is consistent with other studies that show social Next Gen 2015: YouTube's Top 30 Influencers
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05Oct

HILLARY BIBICOFF HONORED, AGAIN

  • Posted by lawyeradmin
  • On October 5, 2015
  • In News
HW’s Hillary Bibicoff was once again named by Southern California Super Lawyers as one of the “Top Women” entertainment lawyers in SoCal.
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29Sep

HW’S STEVEN WEINBERG FEATURED AS SPEAKER

  • Posted by lawyeradmin
  • On September 29, 2015
  • In News
Partner Steven Weinberg on September 21 was a featured speaker in a nationally webcast webinar entitled “Social Media and Marketing” sponsored by The Knowledge Group. Steven covered both business and legal issues and strategies relating to the use of social media as a marketing strategy, including new applications of Snapchat and YouTube and emerging intellectual property issues. On October 1st, Steven will be presenting his annual lecture on The Role of Intellectual Property in Entertainment Industry Deals in Randy Greenberg’s The Business of Entertainment course offered through the UCLA Extension Entertainment Studies Program.
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29Sep

ANOTHER KNOCK OUT FOR HW CLIENT GEORGE FOREMAN

  • Posted by lawyeradmin
  • On September 29, 2015
  • In News
Forbes Magazine just gave George Foreman’s new venture “George Foreman’s Butcher Shop” – an online store for steaks, chops, sides and other great food – a terrific review.http://www.forbes.com/sites/larryolmsted/2015/09/22/from-boxer-to-butcher-world-heavyweight-champ-takes-shot-at-mail-order-meat/. While working with Mr. Foreman in putting the deal together we tried many of the offerings featured on the site and loved them all, and Forbes has confirmed what we all experienced. If you’re into excellent food and don’t feel like going out for it, this is a great way to go. www.gfbutchershop.com.
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06Apr

Holmes Weinberg rated as a Best Law Firm by U.S. News for 2015

  • Posted by lawyeradmin
  • On April 6, 2015
  • In News
Holmes Weinberg PC is very excited to announce that U.S. News & World Report has rated Holmes Weinberg as a Best Law Firm in America for 2015 in its Fifth Edition of Best Law Firms. The ratings are based on independent surveys of peers, clients and colleagues.
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