AD-ttorneys@law – Dec. 9, 2022

Alerts / December 9, 2022

In This Issue:

TTAB Emancipates “Queen of Christmas” from Mimi

Mariah Carey lets mark registration go unchallenged


Mariah Carey takes a lot of guff for...strange behavior. We won’t review the stories here; poring over Carey’s eccentricities has been a hobby of the entertainment press for years now and we don’t have to take part. All we’ll do is acknowledge that she’s developed a certain...reputation. Whether or not it’s well deserved—we’ll leave that up to you.

The counter balance to all this supposed crazy-crazy is Carey’s incredible success—her icon status, hundreds of millions in sales, Billboard records galore, industry awards and so forth. The woman is a juggernaut.

But again, this is something most everyone who participates in popular culture understands. Today, we’d like to drill down on just one of her successes: something to get us into the holiday spirit. You know what we’re talking about. You have to know.

She Knows What You Want

We’re just going to come out and say it: “All I Want for Christmas Is You” is without a doubt, the greatest Christmas song ever written. You can keep your Mels Tormé. You can keep your Bings Crosby. You can even keep your Whams and (pace our college ex) your Waitresses.*

It’s the GOAT. Why? Well, we’ll start with sales: It’s the first and only holiday song to win RIAA diamond status. Recorded in 1994, it regularly hits Billboard’s Top 100 during ugly sweater season. Even the ringtone based on it is enormously successful.

The song is a monster. The 26-year-old Carey, who co-wrote it, had an enormous career ahead of her in any case, but if all she had written was “All I Want,” she would have a place in songwriting history and enough money to fill an ostentatiously sized swimming pool.

But “All I Want” is impressive as a work of art. It recognizes the backward-looking, mawkish sentimentality that makes certain holiday music tiresome, and flips it around: The yearning is all about romance. It’s future-focused, and starry-eyed, and most importantly, it declares that the listener—whoever that may be—is a gift better than anything St. Nick can deliver. And, driven by a bouncy, late-60s vibe, it yokes this romantic sensibility to the pulse of one of the high points of American culture: Motown.

Of course everyone listens to it again and again.

Never Too Far?

Now that we’ve explained our biases objective assessment of “All I Want,” we have to lower the boom: What was Mariah thinking?

You see, Carey jeopardized all the Christmas cheer and goodwill she developed over the years when she tried to register “Queen of Christmas” and related marks with the U.S. Patent and Trademark Office last year.

The attempt went nowhere—she was slapped with a loss by the Trademark Trial and Appeal Board in mid-November after a challenge by singer-songwriter Elizabeth Chan, an artist who exclusively works on holiday music—“pop music’s only full-time Christmas singer songwriter,” by her own account.

The opening of her opposition is worth quoting at length:

“Christmas is big enough for more than one ‘Queen,’” Chan writes. “Over the decades, several recording artists have been dubbed with the nickname the ‘Queen of Christmas,’ including Darlene Love, Brenda Lee, Elizabeth Chan, and Mariah Carey. This is a perennial nickname that has been and will continue to be bestowed on multiple future singers for decades to come.”

She also notes that Carey herself shied away from the title as recently as 2021—the same year she filed the “Queen” registration.

“Everybody’s faith is what it is,” Carey told the Daily Mail last December. “But to me, [The Virgin] Mary is the Queen of Christmas.”

The Takeaway

We’ll never know what this trademark fight would have become, which is our loss: Carey’s representatives never responded to Chan’s opposition, which ran out the clock.

It would have been enormous fun to hear Carey’s counter-arguments (not to mention witnessing a duke-it-out between two self-proclaimed Christmas divas). We certainly can speculate on what her motivations were for filing the registration in the first place—or whether she was the driving force behind the idea at all. Perhaps someone in her business office thought it was a smart way to make some money.

We love Mariah, so we’ll go with the idea that she just got some bad advice, and told her people to let go of the idea when it backfired with negative press coverage.

Which leads us to our takeaway: Don’t mess with Christmas. Or any other holiday, for that matter.
No one wants their treasured holiday sentiments to be commercialized, and they’ll take it out on you if you try. Unless your business is directly tied to holiday-related products or services, beware.

(*Maybe hang on to your Hathaways and Bowie/Bings duets, though.)

Riot Games’ Second Copyright Suit Teleports to China

Cali court says League of Legends maker is re-litigating issues that belong in the PRC

Base Race

Long before Fortnite enraptured the nation’s gamers, MOBAs ruled the Earth.

MOBA stands for “Multiplayer Online Battle Arena,” and games in the genre dominated the industry in the early half of the 2010s. MOBAs evolved from player-modded StarCraft and WarCraft maps and feature teams of heroes drawn from mythology (and modern game franchises) deploying fantastical abilities against each other across a large map. 

Big-title MOBAs included League of Legends, Dota 2 (don’t ask where the name comes from), and Heroes of the Storm.

The genre became such a monster esport that prize pools exceeded $50 million in 2018. And where quick financial success rears its head, a lawsuit will never be far behind...


Today’s MOBA match played out in the courts. And although it’s fun to imagine Kai’Sa unleashing her Icathian Rain power on a district courtroom, the fight featured entirely mundane legal powers.

It kicked off in 2017, when Riot Games, maker of League of Legends, sued Moonton Technology for copying League in its own games, including its Mobile Legends: Bang Bang title. (Even MOBAs, with their complex demands on user interfaces, went mobile, like every other game genre.)

The original case died that same year when the Central District of California dismissed it on forum non conveniens grounds. Riot’s choice of forum was overridden by Moonton’s argument that the case belonged in China. For starters, Tencent, Riot’s 100 percent owner, is a Chinese company and licenses League in China. Moreover, the court noted “conflicting claims” between the 2017 case and litigation already brought by Tencent against Moonton in China.

Finally, a case held in China would allow Riot to depose and secure documents from non-parties crucial to its case, while Moonton would be unable to depose or secure documents from Tencent should the case unfold in California. Tencent refused to fully participate in the case in the United States, which was crucial to the court’s decision, considering Tencent’s status as a key third party.

The Takeaway

Riot sued again this year, but despite its arguments to the contrary—that it is alleging different infringement from allegations made by Tencent in China, and that China was enormously inconvenient due to procedural challenges and COVID-19 travel restrictions—the company lost its 2022 suit as well, with the bad news delivered in a terse reply from the district court.

“The question is whether circumstances have truly changed from those that existed in 2017 or whether Riot simply seeks a second bite at the apple, unhappy with the progress (or lack thereof) in the still ongoing, parallel China litigation,” the Central District wrote. “The Court deems the latter to be the case.”

As an exercise in whimsy, we’d like to imagine a new MOBA power: an area-of-effect spell called forum non conveniens. A player who blasts an opponent with forum sends them off to another part of the map where they lack natural advantages.

That’s what happened here, and we expect to hear forum being applied with increasing frequency as the years go by: China is flexing its strength as the home base of numerous game producers and as a trademark and copyright player.

“Popcorn, Indiana” Should Be “Popcorn, Waukegan,” Says Class Action

Incessant plaintiffs’ firm is throwing everything into the oil for this false origin claim

Jersey Isn’t Proud of Taylor Ham

Despite its advancement of some revolutionary new class action theories, Snack Dragon, a name we’ve coined for an oft-discussed plaintiffs’ counsel, can sometimes bust out an old favorite. Recently, it fired off a good-old-fashioned slack-fill case; the trend continued this November with a false origin case. Given the tortuous, flamboyant nature of some of its best work, these cases seem even more pedestrian.

Snack Dragon’s target this time out is Eagle Family Foods Group, and its signature Popcorn, Indiana brand. And to us, it seems to be a bit of a stretch.

The complaint, filed by one Melissa Gibson in the Southern District of Indiana, begins by stressing something that, unless we’re mistaken, most consumers have no idea about: the primacy of Indiana popcorn. “Indiana ranks second in the nation in popcorn production only to Nebraska,” the complaint announces. “Popcorn is the official snack of Indiana, as this industry began here...Indiana’s connection with popcorn extends across the entire value chain, from the growing of the crops to the popping of the kernels. Due to this long history and roots in Indiana, popcorn made in Indiana from start to finish is generally believed to be of higher quality than popcorn made in other locations.”

Really? Is that true? Or is all this a way of trying to connect the product’s name to a damages claim, while weaponizing the Southern District’s (supposed) popcorn patriotism?

The Takeaway

Well, yes. The complaint states that in a market suffused with “increasing commercialization,” “authenticity has overtaken quality as the prevailing purchasing criterion.” Okay, fair enough. But what follows is a mind-bender, particularly for Snack Dragon, which routinely sues snack producers for betraying the taste of consumers by using inferior ingredients: “Consumers typically lack expertise in judging food quality and are not in the habit of spending time to assess objective quality, nor would they know what to look for.”

The thrust of the case is simple enough: Popcorn, Indiana, is a real location in Indiana, land of popcorn tradition. The “Popcorn, Indiana” brand is made in Waukegan, Illinois. Therefore, the brand name “is deceptively misdescriptive as a name” and “the value of the Product that Plaintiff purchased was materially less than its value as represented by Defendant.”

Consumers may believe that the popcorn is from Indiana after reading the label, and, to avoid cases like this, we always recommend structuring claims to avoid any consumer confusion. But are consumers harmed simply because the popcorn derives from another state in the Midwest? It’s unlikely we get a decision, so we’ll never know, but we think this theory relies too heavily on the assumption that consumers are ravenously searching for Indiana-sourced popcorn, and that they believe the brand name references anything more than a fanciful place (if they think about it at all).

We’ll see. The Snack Dragon has prevailed before!

FTC Announces Big Changes in Enforcement Philosophy

The definition of unfair competition—and its consequences—has just been expanded

History Rhymes

More than a hundred years after the Federal Trade Commission Act was passed, the commission it mandated announced a limit on its own power.

Section 5 of the Act prohibits “unfair methods of competition” and demands the FTC enforce that ban. But in 2015, the Commission “issued a statement declaring that it would apply Section 5 using the Sherman Act ‘rule of reason’ test, which asks whether a given restraint of trade is ‘reasonable’ in economic terms.” This policy statement essentially aligned the FTC’s standard with that of the Sherman and Clayton acts. These acts regulate competition by preventing anticompetitive behavior, limiting enforcement to unreasonable restraints of trade from an economic perspective.

It created actual economic benefit for the offender.

In 2021, the FTC rescinded that Statement of Enforcement Principles. Chair Khan (joined by Commissioners Slaughter and Bedoya) maintained that the 2015 statement, “however well intentioned, departed from the plain text, purpose, structure, and history of the FTC Act.” They went on to say that the 2015 position “effectively amounted to an abdication of the Commission’s statutory mandate, undermining our legitimacy.”

The Takeaway

This November, the Commission went one step further with the release of its “Policy Statement Regarding the Scope of Unfair Methods of Competition Under Section 5 of the Federal Trade Commission Act,” available here. The new 2022 statement envisions a much wider scope for the Commission’s enforcement powers regarding unfair competition—these new vistas include broader categories of offending conduct, loosened limits on demonstrating competitive harm and a wider scope for defining who is being harmed, adding “workers, or other market participants.”

The policy statement represents real conceptual shifts in how the FTC approaches one of its foundational roles, and it is hard to predict the implications of the changes it outlines.

One thing is for certain: The Biden administration is taking a bold, aggressive stance on enforcement. Until the policy changes yet again—or the current policy is challenged in court or in Congress—companies should be on notice that even “harmless” behavior may earn them uncomfortable regulatory attention.

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