Intellectual Property Insights from Fishman Stewart PLLC
Newsletter – Volume 24, Issue 22
Share on Social
ATLIENS vs. ATLiens, Let Me Hear You Say “O-Nay-Yer”
In 1994, a little-known hip hop band from Atlanta named Outkast released its debut album Southernplayalisticadillacmuzik. The album achieved some success, but the band’s second album, ATLiens, put the band on the map. Outkast’s ATLiens album (which contained a song by the same name) has enjoyed enduring critical and commercial success.
ATLiens Touring, Inc., also from Atlanta, is an electronic dance music (EDM) duo that has been performing under the name ATLiens since 2012. In 2020, ATLiens Touring obtained a trademark registration for the mark ATLiens for entertainment services.
Outkast’s holding company, High Schoolers, LLC, filed its own applications for ATLIENS in 2021, for a variety of music and entertainment goods and services. The applications were refused registration based on ATLiens Touring’s registration, and Outkast petitioned to cancel the registration.
Last month, Outkast filed suit against ATLiens Touring, seeking an injunction against ATLiens Touring’s continued use of ATLiens and seeking damages. Outkast asserts that it coined the term “ATLiens” as a portmanteau of “ATL” and “aliens,” and that it has prior rights in ATLIENS based on its 1996 album and song, followed by new versions and remixes of the ATLiens song, as well as associated merchandise.
Under trademark law, the title of a single creative work such as a book, song or movie, does not function as a trademark, but rather, merely serves only as the work’s name and does not identify its source. Source identification is the function of a trademark.
When a designation such as a title or character is used for a series of creative works (meaning two or more), trademark rights can accrue. Under certain circumstances, an original work and subsequent versions of the work can constitute a series, if the original and subsequent versions differ significantly in content. Outkast will need to demonstrate that the original ATLiens song and the follow up versions and remixes are substantially different to qualify as a series, which may give rise to trademark rights.
Additionally, it remains to be seen whether Outkast can prove priority of rights. It released the ATLiens album in 1996. ATLiens Touring began use of the mark in 2012. Trademark rights in a series may date back to the original work in the series, if the subsequent works were published within a reasonable time such that it creates an association to the public between the works as a series.
We will watch this case with interest, though we think it is likely that this case will go the way of the Lady A dispute (formerly Lady Antebellum), with the parties reaching a confidential settlement.
Michelle Visser is a partner of Fishman Stewart, with over 25 years of experience practicing trademark law with other members of the firm’s Trademark Group. Check out her full bio here.
Related Content from Fishman Stewart
L.A.B. Golf aims to protect its innovations, and therefore its market position, owning three patents for its zero-torque design. The question now is whether L.A.B. Golf can withstand the wave of copycat designs.
One of his most famous songs, “Lose Yourself” was recently at the center of a lawsuit. In 2019, Eminem’s publishing company Eight Mile Style sued Spotify claiming that Spotify streamed a number of its musical compositions without proper licenses.
Our latest article tackles three common trademark questions: 1. Can I trademark my own name? 2. Can I trademark the name of a fictional character? 3. Can I trademark the name of a U.S. president or British royal?
One of the most common challenges is whether AI should be free to train on data that is protected by copyright and owned by third parties without first obtaining permission.
Like the titles of single creative works, character names do not generate trademark rights unless used for a series of creative works (meaning two or more). A year ago, Jane Wick, LLC filed a trademark application for the mark JANE WICK in logo format.
The U.S. Copyright Office (USCO) recently published its latest report on AI and “copyrightability.” In short, the USCO considers only some AI-generated works to be sufficiently creative as to deserve copyright protection, and thus, registration.
We know that as of June 4, 2024, the United States Patent and Trademark Office (USPTO) had issued more than twelve million patents. We also know that more than 10,000 patents were in existence before the count began.
Back in the 1940’s assignments by independent contractors could be permanent and irrevocable. Things changed in 1976, when Congress overhauled the Copyright Act.
Generally, copyright protects the specific expression of ideas, such as the arrangement and presentation of visual elements, but it does not protect general concepts or styles.
In the age of the internet, memes are a universal language. A meme is a piece of content, typically an image, video, text, or a combination of these, that spreads rapidly across the internet, often with humorous, relatable, or satirical undertones.
IDENTIFYING, SECURING AND ADVANCING CREATIVITY®
