Intellectual Property

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Hasbro, Inc. recently made headlines when it received a federal trademark registration for the scent of its Play-Doh product. While it isn’t impossible to register a trademark for a scent, it is rare, and it is a reminder of the many options business owners have to create connections with customers (and even make a big splash while doing it).

Scent trademarks – and other marks like tastes, colors, sounds, product designs, textures, and even moving images – are part of a larger family of marks often referred to as non-traditional trademarks. The USPTO has issued registrations on all kinds of non-traditional trademarks, including the scent of strawberry for toothbrushes, the “Nationwide is on your side” song for insurance agencies, the word “yummm” sung at the end of Red Robin restaurant commercials, and even a cherry scent for synthetic lubricants.

Registering a non-traditional trademark can help a business protect the exact ways it connects with its consumers. As businesses think more about these non-traditional marks, they may find more ways to set their goods and services apart from their competitors’. These marks can be powerful marketing tools in their own rights as well. For example, Hasbro has earned heaps of free press for its scent registration, and even markets the scent on its own as part of a perfume.

Part of the reason these kinds of trademark registrations are so rare is that they are difficult to get. The U.S. Supreme Court has made clear that features of a product are never inherently distinctive. As a result, trademark applicants seeking to protect non-traditional trademarks have a high hurdle to clear to show that the scent, taste, color, etc. has acquired distinctiveness and functions as a trademark. Is the purported mark a functional element of the product? Are there third parties using the same mark? Has the mark been used for a long time? Has the mark (not just the underlying product) been advertised by the business or reported on by the media? These are just some of the questions a business must ask about its purported non-traditional marks.

In the end, Hasbro was able to clear this hurdle and was granted a trademark registration for “a scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough.” Will this registration redefine Hasbro or its Play-Doh product? Probably not. But non-traditional trademarks could help your business mold its marketing efforts into something special, and should be considered as part of any overall branding strategy.

Animal selfie enthusiasts rejoice – your pet cannot sue you for copyright infringement for reproducing their pictures online under the Copyright Act of 1976.  The United States Court of Appeals for the Ninth Circuit (“Ninth Circuit”) has now answered the concern that has (obviously) been at the forefront of every legal professional’s mind – whether a selfie-taking monkey can sue humans, corporations, and companies for copyright infringement.  The answer – (deep breath) – is no.

The copyright case at issue, Naruto, a crested macaque v. David John Slater, et al., Case No. 15-cv-4324, centered on the allegation that Naruto (a seven-year old Indonesian crested macaque) was the true author of a series of “selfies” allegedly taken by Naruto in 2011 with a camera owned by photographer David Slater and thereafter reproduced by Mr. Slater and certain companies.  The People for the Ethical Treatment of Animals (“PETA”), who brought the lawsuit on Naruto’s behalf, claimed that Mr. Slater and others violated the Copyright Act by falsely claiming to be the author of the “monkey selfies” and reproducing those images for profit.  In response, Mr. Slater argued that Naruto lacked constitutional “standing” to sue and that animals cannot sue under the Copyright Act.  The district court dismissed the action, agreeing that Naruto could not sue under the Copyright Act, but declining to assess whether Naruto has the constitutional “standing” to sue.  PETA appealed but settled the lawsuit with Mr. Slater while the appeal was pending.

Undeterred by the settlement, the Ninth Circuit affirmed the lower court’s dismissal.  Sharply criticizing PETA for bringing the lawsuit and then settling it without Naruto’s participation, the Ninth Circuit found that binding circuit precedent forced the court to accept that animals have constitutional standing to assert claims in the federal courts.  The Ninth Circuit, however, was not about to throw open the courthouse doors to all animal-plaintiffs.  The Ninth Circuit found that under the plain text of the Copyright Act Naruto (and all other nonhumans) could not file copyright infringement lawsuits.  In fact, the Ninth Circuit was so adamant about this conclusion that it awarded Mr. Slater his attorneys’ fees incurred in opposing the appeal.

Thus ended the saga of the monkey selfie seen ‘round the world – not with new, ground-breaking animal rights law, but with the strict interpretation of a federal statute, adherence to the doctrine of stare decisis, and a plea that the prior Ninth Circuit law on an animal’s constitutional standing be reexamined.