Our weekly SoCal IP Institute meeting on Monday, August 12, 2013 will be a discussion of a recent 9th Circuit decision regarding player likenesses in games and a non-precedential case at the TTAB involving the Morehouse defense. Brief synopses of the cases appear below.

Keller v. EA, Inc., Case No. 10-15387 (9th Cir. July 31, 2013) (available here).  The district court concluded that the game developer, Electronic Arts (“EA”), had no First Amendment defense against the right-of-publicity claims of the football player, Samuel Keller. The 9th Circuit affirmed. Under the “transformative use” test developed by the California Supreme Court, EA’s use did not qualify for First Amendment protection as a matter of law because it literally recreates Keller in the very setting in which he has achieved renown. The other First Amendment defenses asserted by EA did not defeat Keller’s claims either.

Citadel Federal Credit Union v. KCG IP Holdings LLC, Canc. No. 92/055,228 (T.T.A.B. July 10, 2013) (available here). Citadel filed a petition for cancellation of KCG’s mark on grounds of priority and likelihood of confusion.  KCG IP received numerous extensions of time to answer and, eventually, filed an answer and a motion for summary judgment. KCG asserted the so-called Morehouse defense and argued that the marks were essentially the same and cover essentially the same goods and services.  Citadel countered that KCG applied a more lenient likelihood of confusion test, rather than the required “essentially the same” test.  Because the marks were not “essentially the same” with Citadel’s mark including a crenelated design.  The Board ruled that the Morehouse defense was unavailable to KCG and denied the motion for summary judgment.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 12, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.