January 2018

USPTO Denies Beyoncé’s Attempt to Trademark Her Daughter’s Name … Again

MJLST Staffer, Tiffany Saez

In January 2016, Beyoncé’s trademark holding company, BGK Trademark Holdings, filed an application to register the name of the singer’s first child, “BLUE IVY CARTER,” in 14 different trademark classes, covering everything from fragrances to postcards to online video games. In May 2017, however, a Boston-based event planning firm, also named Blue Ivy, filed a notice of opposition with the US Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) to challenge BGK’s trademark application.

Blue Ivy alleges, among other things that, BGK Trademark Holdings has no bonafide intent to use the BLUE IVY CARTER mark in commerce and that BGK is attempting to commit fraud on the USPTO by registering a trademark which it doesn’t intend on ever using.

Although Blue Ivy’s founder, Veronica Morales, already owns U.S. Trademark Registration No. 4224833, covering the standard character mark BLUE IVY for event planning and management services, Morales’ rights to Blue Ivy does not necessarily prevent Beyoncé from securing trademark rights in or a federal registration for BLUE IVY CARTER for goods or services that are not related to those covered by Morales’ mark. Trademark rights are jurisdictional. That is, the owner of a trademark owns it in the geographic region in which it is in use. Trademarks also do not apply to all goods and services worldwide, and instead apply only to the specific goods or services on which it is being used in commerce. Therefore, Morales does not have rights to the BLUE IVY mark for all goods and services, just event planning services.

The Blue Ivy trademark saga, however, does not mark the first time that a celebrity has tried to trademark a name or phrase.

In the United States, one’s name and likeness is generally protected through doctrines that rise out of common law or statute, such as the right of publicity or privacy. However, there are cases in which celebrities or other public figures might seek to protect their names under trademark in order to protect the financial integrity and use of their personal name in commercial activities. The USPTO’s website also notes that, one who attempts to register a trademark that includes one’s name, portrait, or signature (that could reasonably be perceived as that of a particular living individual) would need written consent from the identified individual in order to register the mark.

There are several types of trademarks (e.g., slogans, words, logos, phrases), but the essential function of a trademark is to exclusively identify the commercial origin of goods and services. The use of personal names can be registered as a trademark if the individual can establish that their name contains “secondary meaning,” also known as “acquired distinctiveness.” Secondary meaning is required when your mark is “descriptive,” but not “inherently distinctive” or “generic.” Secondary meaning is very fact-specific. Whether the mark in question has secondary meaning would therefore hinge on whether it has become closely associated with a particular good or service. Thus, in the Blue Ivy case, one’s personal name can acquire trademark protection if the public at large has identified the name with certain products or services.

Even though proof of secondary meaning is not always required, one’s own celebrity status or public persona is generally not enough to confer trademark protection upon a name. The name itself actually has to be associated with certain goods or services. This requirement may be problematic for those who endorse a particular product or intend on developing their own brand of goods, such as clothing.

It is highly unlikely that the general public has identified and closely associated the name of Beyoncé’s six-year-old daughter with certain goods, such as radio pagers. Yet Beyoncé is seeking trademark to prevent others from exploiting and cashing in on little Blue Ivy’s name.

Airbnb Regulations Spark Controversy, but Have Limited Effect on Super Bowl Market

MJLST Staffer, Sam Louwagie


As Super Bowl LII descends upon Minneapolis, many Twin Cities residents are hoping to receive a windfall by renting out their homes to visiting Eagles and Patriots fans. City regulations placed last fall on online short-term rental platforms such as AirBnB, which prompted an outcry from those platforms, do not appear to be having much of an effect on the dramatic surge in supply.

The short-term rental market in Minneapolis has been a renter’s market in the opening days since the Super Bowl matchup was set. There are 5,000 placements in the Twin Cities on AirBnB this week, as compared to 1,000 at this time last year, according to the Star Tribune. The flood of posted housing options has limited prices, as the average listing has cost $240 per night—more than usual, but much less than the thousands of dollars some would-be renters had hoped for. One homeowner told the Star Tribune that she had gotten no interest in her 4,000-square-foot, six-bedroom house just five blocks from U.S. Bank Stadium, and had “cut the price drastically.”

The surge in AirBnB listings comes despite ordinances that went into effect in December in both Minneapolis and St. Paul. The cities joined a growing list of major U.S. cities that are passing regulations aimed at ensuring guest safety and making a small cut of tax revenue from the rentals. Minneapolis’ ordinance requires a short-term renter to apply for a license with the city, which costs $46 annually. St. Paul’s license costs $40 per year. As of mid-December, according to MinnPost, only 18 applications had been submitted in Minneapolis and only 32 in St. Paul. That would suggest that many of the thousands of listings during Super Bowl week are likely unlicensed. The cities both say they will notify renters they are not in compliance before taking any enforcement action, but a violation will cost $500 in Minneapolis and $300 in St. Paul.

The online rental platforms themselves had strongly objected to the passage of the ordinances, which would require Airbnb to apply for a short-term rental platform license. This would bring a $10,000 annual fee in St. Paul and a $5,000 large platform fee in Minneapolis. According to MinnPost, as of mid-December, no platforms had submitted an application and it was “unclear whether they [would] comply.” Airbnb said in a statement that it believes the regulations violate the 1996 federal Communications Decency Act, and that “the ordinance violates the legal rights of Airbnb and its community.”

While the city ordinances created controversy in the legal world, they do not seem to be having a similar effect on the ground in Minneapolis, as Super Bowl guests still have a dramatic surplus of renting options.

Fi-ARRR-e & Fury: Why Even Reading the Pirated Copy of Michael Wolff’s New Book Is Probably Copyright Infringement

By Tim Joyce, MJLST EIC-Emeritus



Lately I’ve seen several Facebook links to a pirated copy of Fire & Fury: Inside the Trump White House, the juicy Michael Wolff expose documenting the first nine months of the President’s tenure. The book reportedly gives deep, behind-the-scenes perspectives on many of Mr. Trump’s most controversial actions, including firing James Comey and accusing President Obama of wiretapping Trump Tower.


It was therefore not surprising when Trump lawyers slapped a cease & desist letter on Wolff and his publisher. While there are probably volumes yet to be written about the merits of those claims (in my humble opinion: “sorry, bros, that’s not how defamation of a public figure works”), this blog post deals with the copyright implications of sharing and reading the pirated copy of the book, and the ethical quandaries it creates. I’ll start with the straightforward part.



First, it should almost go without saying that the person who initially created the PDF copy of the 300+ page book broke the law. (Full disclosure: I did click on the Google link, but only to verify that it was indeed the book and not just a cover page. It was. Even including the page with copyright information!) I’ll briefly connect the dots for any copyright-novices reading along:


    • Wolff is the “author” of the book, a “literary work” that constitutes an “original works of authorship fixed in any tangible medium of expression” [see 17 USC 102’].
    • As the author, one of his copyrights is to control … well … copying. The US Code calls that “reproduction” [see 17 USC 106].
    • He also gets exclusive right to “display” the literary work “by means of a film, slide, television image, or any other device or process” [see 17 USC 101]. Basically, he controls display in any medium like, say, via a Google Drive folder.
    • Unauthorized reproduction, display, and/or distribution is called “infringement” [see 17 USC 501]. There are several specific exceptions carved into the copyright code for different types of creative works, uses, audiences, and other situations. But this doesn’t fall into one of those exceptions.


  • So, the anonymous infringer has broken the law.


  • [It’s not clear, yet, whether this person is also a criminal under 17 USC 506, because I haven’t seen any evidence of fraudulent intent or acting “for purposes of commercial advantage or private financial gain.”]


Next, anyone who downloads a copy of the book onto their smartphone or laptop is also an infringer. The same analysis applies as above, only with a different starting point. The underlying material’s copyright is still held by Wolff as the author. Downloading creates a “reproduction,” which is still unauthorized by the copyright owner. Unauthorized exercise of rights held exclusively by the author + no applicable exceptions = infringement.


Third, I found myself stuck as to whether I, as a person who had intentionally clicked through into the Google Drive hosting the PDF file, had also technically violated copyright law. Here, I hadn’t downloaded, but merely clicked the link which launched the PDF in a new Chrome tab. The issue I got hung up on was whether that had created a “copy,” that is a “material objects … in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” [17 USC 101]


Computer reproductions are tricky, in part because US courts lately haven’t exactly given clear guidance on the matter. (Because I was curious — In Europe and the UK, it seems like there’s an exception for temporary virtual copies, but only when incidental to lawful uses.) There’s some debate as to whether it’s infringement if only the computer is reading the file, and for a purpose different than perceiving the artistic expression. (You may remember the Google Books cases…) However, when it’s humans doing the reading, that “purpose of the copying” argument seems to fall by the wayside.


Cases like  Cartoon Network v. CSC Holdings have attempted to solve the problem of temporary copies (as when a new browser window opens), but the outcome there (i.e., temporary copies = ok) was based in part on the fact that the streaming service being sued had the right to air the media in question. Their copy-making was merely for the purposes of increasing speed and reducing buffering for their paid subscribers. Here, where the right to distribute the work is decidedly absent, the outcome seems like it should be the opposite. There may be a case out there that deals squarely with this situation, but it’s been awhile since copyright class (yay, graduation!) and I don’t have free access to Westlaw anymore. It’s the best I could do in an afternoon.


Of course, an efficient solution here would be to first crack down on the entities and individuals that first make the infringement possible – ISPs and content distributors. The Digital Millennium Copyright Act already gives copyright owners a process to make Facebook take bootleg copies of their stuff down. But that only solves half the problem, in my opinion. We have to reconcile our individual ethics of infringement too.



One of the more troubling aspects of this pirateering that I saw was that the link-shares came from people who make their living in the arts. These are the folks who–rightly, in my opinion–rail against potential “employers” offering “exposure” instead of cold hard cash when they agree to perform. To expect to be paid for your art, while at the same time sharing an illegal copy of someone else’s, is logically inconsistent to me.


As a former theater actor and director (read: professional almost-broke person) myself, I can understand the desire to save a few dollars by reading the pirated copy. The economics of making a living performing are tough – often you agree to take certain very-low-paying artistic jobs as loss-leaders toward future jobs. But I have only met a very few of us willing to perform for free, and even fewer who would tolerate rehearsing with the promise of pay only to be stiffed after the performance is done. That’s essentially what’s happening when folks share this bootleg copy of Michael Wolff’s book.


I’ve heard some relativistic views on the matter, saying that THIS book containing THIS information is so important NOW, that a little infringement shouldn’t matter. But you could argue that Hamilton, the hit musical about the founding of our nation and government, has equally urgent messages regarding democracy, totalitarianism, individual rights, etc. Should anyone, therefore, be allowed to just walk into the theater and see the show without paying? Should the cast be forced to continue performing even when there is no longer ticket revenue flowing to pay for their efforts? I say that in order to protect justice at all times, we have to protect justice this time.



Creating, downloading, and possibly even just viewing the bootleg copy of Michael Wolff’s book linking around Facebook is copyright infringement. We cannot violate this author’s rights now if we expect to have our artistic rights protected tomorrow.


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These were just some quick thoughts, and I’m sure there’s more to say on the matter. If you’d like to discuss any copyright issues further, I’m all ears.