Thursday, December 24, 2009

The South Butt Fiasco

If you haven't heard by now, I'll fill you in. Outdoor apparel manufacturing giant the North Face is suing a college kid named Jimmy Winkleman (yes, he really does go by Jimmy) for creating his own line of outdoorsy-type apparel and calling it "South Butt."1 I kid you not. Arguably Mr. Winkleman could have chosen a better name for his apparel, even if his intention was to "poke fun" at the norm.

Now apparently North Face is suing for dilution and infringemenet and saying not nice things about North Face.2 I find the whole thing ridiculous on both sides. First, apparently Mr. Winklemann in response to a cease and desist promptly offered to stop--for a $1 million buyout.3 Second, instead of negotiating or some other extra-judicial tactic, North Face launched a shock and awe trademark offensive.4 Granted, I'm not sure what other remedies there are, but suing the pants off of a college student (sound familiar?) never seems to be a popular idea.

Undoubtedly there is an issue with dilution here, possibly infringement and the North Face has a more than colorable claim. The real issue is something the RIAA ran into a few years ago, are you willing to get some egg on your face to protect your rights in a "small potatoes" setting? The corporate answer is yes, but the average joe's answer is probably no.

1: The South Butt, (last visited Dec. 24, 2009).
2: Debra Cassens Weiss, North Face Sues The South Butt for Trademark Infringement, ABA Journal, available at
3: Id.

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Thursday, December 17, 2009

The Force is Strong With This One

So George Lucas, creator of the multi-billion dollar empire known as "Star Wars" (and a few other notable movies) just lost a British copyright case over Mr. Ainsworth, a prop designer's use of original molds from 1976 to create Stormtrooper helmets.1

The U.K. court's decision attempted to discern whether the helmets were protectable as sculptures, ultimately decided they were not based on U.K. caselaw and the applicable facts in question (bummer for Mr. Ainsworth).2 Also notable was the U.K. court's refusal to extend jurisdiction to the US and allow the designer to avoid paying U.S. damages because of his limited contacts (just had a Civil Procedure I flashback....).3 The court did include an admonition to Mr. Ainsworth that he should probably not sell any more helmets to the U.S. Excellent idea Judge.

Overall, I think it's an interesting story because there are some copyright holders who are well known to be extremely protective of their copyrights or other rights. I don't have anything against this, except for the David v. Goliath court matchups that often result. Lucasfilm suing a London prop designer, Yoko Ono reigning in the use of the incredibly popular Beatles' music, etc. These people are acting well within their rights4 (generally) but there are times where I feel like the fight is not worth the time and expense to hire expensive copyright lawyers to sue some little guy. The counter argument of course is that if you DON'T enforce as strictly as they do, more people will infringe, etc. The slippery slope argument, which to be honest, has never held much water with me in the first place. Empirical research has demonstrated that a copyright's value is usually short lived.5 Mr. Lucas's and Mr. Lennon's works are atypical and for that reason perhaps, they should be more vigilant. And the debate continues...

Happy Holidays

1: Lucas v. Ainsworth, [2008] EWHC 1878 (Ch) (U.K.).
2: Id.
3: Id.
4: See 17 U.S.C. § 106.
5: I don't actually have any empirical research for this...if someone does and would like to share, that would be fabulous.

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Monday, November 23, 2009

Black Friday: False Advertising Bonanza

Dear me, it's already Thanksgiving week and the most infamous shopping day is nearly upon us.1 With the plethora of advertisements stuffing my mailbox, e-mail inbox and floating around on television, it gives a trademark man like me a bit of pause and some reason to reflect.

Advertising law is an interesting little offshoot of the friendly confines of trademark law. As we all know trademarks are source designators,2 but advertising poses an interesting question. Particularly false (or misleading) advertising.

The Lanham Act does provide a nice little section on false advertising,3 which is nice, but at first glance, it generally seems to relate more to a likelihood of confusion analysis related to the DuPont factors4 or counterfeit goods. But right now, I'd like to talk about good ol' misleading and false advertising.

So section 1125(a) for purposes of this discussion (and generally as far as I'm concerned) relates to factual misleading statements to a consumer that would be considered a material misstatement of fact.5

There have been numerous types of these claims in the past, that Airborne supplements "prevent" colds,6 that Nike hasn't been using slave labor,7 false endorsement claims by celebrities,8 yogurt that aids your digestion (but doesn't),9 and the list goes on and on . . .10

What a false advertising case really turns on in court takes us back to the statute. A "false or misleading description of fact" that causes mistake or deception.11 This is particularly true for advertising, as it got its own section (1125(a)(1)(B).12 What gets advertisers into trouble is that misstatement or confusion causing activity. As a former advertising man (I'm know, I'm being exceptionally self-aware today), there's always a fine line between "selling"/"puffery" and "lying" or "deception." Puffery is not actionable, lying is.13 Merchants will always to try to get a good deal off the unsuspecting consumer, that's why there's trademark law (among others), but the best advice and best practice for consumers is to be vigilant.

The thing to be careful of these days (particularly leading up to Black Friday) is to look extremely carefully at the fine print many of the retailers use. Often there's a limited number of a particularly good deal in the store (only four (4) of something at each store), or customers are required to purchase an unreasonable volume of the product to get the price listed (i.e., you need to buy five (5) 45" LCD televisions to get the price of $400 each). Granted some retailers are trying to make Black Friday easier, but I wouldn't hold my breath. The way people are (competitive) and the way retailers have historically acted (attempting to cheat you out of your money) suggests it will be business (and mayhem) as usual.

Happy Thanksgiving to everyone.

1: Black Friday (Shopping), (last visited Nov. 22, 2009).
2: See Anheuser Busch, Inc. v. Stroh Brewery, Co., 750 F.2d 631, 648 (8th Cir. 1984).
3: 15 U.S.C. § 1125(a) (2006).
4: In re E.I. DuPont DeNemours & Co., 476 F.3d 1357 (1973).
5: 15 U.S.C. § 1125(a)(1)-(3).
6: Airborne Settles Suit Over False Claims, Nat'l Public Radio, (last visited Nov. 24, 2009).
7: Kasky v. Nike, Inc., 45 P.3d 243 (Cal. 2002), certiorari dismissed as improvidently granted, 539 U.S. 654 (2003).
8: Hilton v. Hallmark Cards, 580 F.3d 874 (9th Cir. 2009) (celebutante Paris Hilton suing Hallmark gretting card company); Facenda v. N.F.L. Films, Inc., 542 F.3d 1007 (3d Cir. 2008) (notable NFL broadcast anouncer John Facenda); Browne v. McCain, 612 F. Supp. 2d 1118 (C.D. Cal. 2009) (Jackson Browne suing Presidential candidate John McCain for use of his song "Running on Empty").
9: Nathan Olivarez-Giles, Dannon Settles False Advertising Lawsuit over Activia, DanActive Yogurt, L.A. Times, Sept. 19, 2009, (last visited Nov. 24, 2009).
10: See, e.g., Fashion Boutique of Short Hills, Inc. v. Fendi USA, Inc., 314 F.3d 48 (2d 2002).
11: 15 U.S.C. § 1125(a)(1) (2006).
12: Id. § 1125(a)(1)(B).
13: Time Warner Cable v. DIRECTV, Inc., 497 F.3d 144, 159-60 (2d Cir. 2007) ("[P]uffery [is] not actionable under the Lanham Act."). The Time Warner court did find that the cable company's literally untrue statements however, were actionable. Id. at 154-55.

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Monday, November 9, 2009

Barbie's New Theme Song or How I Learned to Love My Previous Litigation Enemy

I was watching television last night while working on a project and realized that the new Mattel theme song for Barbie dolls is actually based on "Barbie Girl" by the band Aqua. Does anyone else find that strange? In a weird twist of 106 rights meets trademark lawsuit about 7 years ago?1

What a crazy world.

1: Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002).

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

Monday, October 12, 2009

Unspecified American Beer Commercial = False Endorsement?*

Recently, I was watching football on television on a nice, crisp Sunday morning. By crisp, I mean it was fricking freezing, but I digress.

A commercial appeared on my television, in which a spokesperson wore a blue shirt with khakis and proceeded to sell a (presumably) fake product endorsing a particular unspecified American beer. These commercials usually combined two or more things that are common at a tailgating party into ridiculous and clearly unusable or unworkable products. What caught my attention was the "spokesperson." He was dressed very similarly to a recently deceased infomercial spokersperson, Mr. Billy Mays. Indeed, even this spokesman's style was reminiscent of Mr. Mays (i.e., a lot of shouting and hyperactivity).

The area of law known as the right of publicity and false endorsement is an interesting one. Some people wish it would just go away, and others support it. Nonetheless, there's always the question of what is permissible and what is not, particularly in the context of a deceased celebrity. Unfortunately for most intellectual property types, the right of publicity is an animal of state law (depending on where the person is domiciled) and false endorsement falls under the Lanham Act's purview.

Personally, I highly doubt there's a true legal issue with this television commercial, but it did spark my interest. The commercial is enough of both a parody and I sense an 'homage' of Mr. Mays that even if the estate wished to challenge it, there would likely be a short and swift end to it (either settlement to avoid negative publicity or a summary judgment).

*Solely Editorial Material

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Friday, September 18, 2009

Of Course I Didn't Mean It!

It seems people these days are more copyright savvy. Or at least they think they are. Whether it be Ellen DeGeneres and her TV show stating they won't pay for licenses because they "don't roll that way,"1 or people like person I am about to tell you all about.

One day I happened to scanning my Facebook news feed, when I saw a friend of mine had posted a YouTube video on to their wall. If all this Facebook-speak is confusing, bear with me for a minute. The video they had posted included, in all caps in the description "NO COPYRIGHT INFRINGEMENT INTENDED."


First off, I will say the video in question was almost definitely copyrighted. Second, if you didn't intend copyright infringement, WHY DID YOU DO IT? To be clear, my friend did not write the description, they merely reposted a video. My real thoughts are directed at to the person who uploaded the video with the caveat of "I didn't intend to infringe your copyright (whoever you are)."

In my book, if you're "savvy" enough to put a notice like that on something you're posting online, you're intending it. A disclaimer such as that suggests you're aware you probably shouldn't be posting it online, in violation of the Copyright Act.2 Unfortunately for Mr. Clever on YouTube, Section 501 doesn't require you to 'intend' anything.3 It becomes a question of "did you do it or did you not?"

By the fact that I can find this video (both on YouTube and Facebook) suggests Mr. Clever (as I'm calling the original poster of the video) is in fact a copyright infringer. Whoops.

1: Travis Loller, 'Ellen' Sued for Thousands of Copyright Infringements, HUFFINGTON POST (Sept. 11, 2009), available at
2: 17 U.S.C. §§ 106, 501 (2006).
3: 17 U.S.C. § 501(a) ("Anyone who violates any of the exclusive rights of the copyright owner as provided by sections 106 through 122 [ . . . ], is an infringer of the copyright or right of the author, as the case may be.").

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Saturday, September 5, 2009


Some people that I know (who shall remain nameless - Jack), are very excited for the upcoming release of the video game The Beatles: Rock Band.1 For those of you who are unaware of the Rock Band line of video game titles, I will briefly explain.

Rock Band is a video game where instead of using controllers in the normal sense, players use mock plastic instruments.2 The players then "play" their instruments using a variety of keys or pads or what have you to emulate the song that the game plays on the screen.3 If they players hit all the "notes" they are required to, the music track plays.4 If they do not, then the particular audio track each player is responsible for (be it drums, guitar, bass, vocals, etc.) "skips" like it would on an old LP.5 The previous two installments of Rock Band used a variety of tracks from artists ranging from the Who to current independent or underground musicians.6

Fast forward to this week. A new edition of Rock Band is due to arrive in stores which allows players to play Beatles tunes (previously unavailable) and "re-enact" key moments in the Beatles career.7 As I mentioned earlier, Jack is very excited.

There is, however, one particular detail about this release that send my antennae all abuzz. Apparently, unlike in other incarnations of Rock Band, The Beatles: Rock Band will not allow players to alter the musical tracks (by use of a "whammy bar"8 or "drum fill"9 which Rock Band 1 & 2 allowed players to use).10 In addition, if the players were to be unable to complete song ("fail"), instead of the usual crowd booing that occurs, the Beatles game simply cuts to black with a "Retry" prompt.11 Allegedly, this is because the two surviving Beatles as well as others involved in licensing the Beatles franchise are concerned about maintaining the integrity of the Beatles brand.12

So what in tarnation does this have to do with this blog? Hopefully you've already figured out where I'm going with this. What stuck out to me was the amount of control the Beatles stakeholders wanted to exert over the development of The Beatles: Rock Band. The limiting the interacivity of the game and the amount of development input (based on the articles I read) seemed to be far above and beyond what other musicians and artists have done. I believe several other bands have done "band-centric" versions of either Rock Band or Guitar Hero (a similar game). The desire to protect your creative lifeblood is understandable, but this concern about brand dilution is possibly a bit far-fetched.

Dilution under the U.S. statute requires a mark to be sufficiently "famous."13 That's all well and good, I'm almost positive the Beatles qualify under the non-exclusive 8 factor test Congress provided. My concern is what you consider "dilution." Section 1125(c) simply says there's a cause of action for the "dilution" of a brand (yes, I'm using mark and brand interchangeably because for purposes of this discussion, they're basically the same thing).14 What does that mean exactly?

The courts are also a little unclear on dilution.15 There's a bit of a misunderstanding over whether it's "famous" or "well-known" marks,16 but that's a whole other blog post. Generally, there has to be an intentional dilution of the quality of the mark and some kind of harm.17 I don't really see it here. Letting a bunch people occasionally "fill" or ever so slightly modify a Beatles recording seems to be a de minimis invasion upon the Beatles brand, and therefore, no big deal.18

I say let the gamers rock on.

1: Jeff Howe, The Beatles Make the Leap to Rock Band, WIRED (Aug. 12, 2009), available at
2: Rock Band (video game),
3: Id.
4: Id.
5: Id.
6: Id.
7: Howe, supra note 1.
8: Daniel Radosh, While My Guitar Gently Beeps, N.Y. TIMES (Aug. 16, 2009) at MM26, available at
9: Id.
10: Id.
11: Id.
12: See Howe, supra note 1; see also Radosh, supra note 8 (discussing the lengths the Rock Band development team took to ensure the Beatles stakeholders were satisfied with the portrayal and use of the Beatles and their music).
13: 17 U.S.C. § 1125(c)(1)(A)-(H) (2006).
14: Id. at § 1125(c)(1).
15: See ITC Ltd. v. Punchgini, Inc., 482 F.3d 135, 156 (2d Cir. 2007), cert. denied, 128 S. Ct. 288 (2007) (confusing "well-known" and "famous" marks).
16: Id.
17: See Mosely v. V. Secret Catalogue, Inc., 537 U.S. 418, 432 (2003).
18: H-D Michigan, Inc. v. Top Quality Service, Inc., 496 F.3d 755, 762 (2007) (stating that a de minimis trademark infringement as non-actionable).

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Monday, August 31, 2009

The Amazing Adventures of Spider-Man (in the Magic Kingdom)

Last summer (2008), I went to see Iron Man. I didn't know what to expect, but was pleasantly surprised by the film's story, character development, and huge Michael Bay style action scenes. Admittedly, the film wasn't Atonement. However, it was a superhero film and a fairly good one at that. I imagined the future when I'd sit in a theater and enjoy the further adventures of Iron Man in Iron Man 2 . . . Until today.

Today, Disney purchased Marvel Entertainment for the small sum of $4 billion.1 Being an IP nerd of sorts, the first thing I thought of was, "What happens to the Amazing Adventures of Spider Man ride at Universal Studios?" This question presents the premise for what I intend as a brief foray into probing the questions of what a deal like this means for well known characters.

Of all places, MTV raised an interesting point: Does this mean that Marvel Characters will now cross paths with Disney Characters?2 As an example, MTV points to the moment when Roger Rabbit brought together Daffy and Donald Duck.3. Imagine the combinations possible with the Marvel/Disney family. Will Iron Man patrol the Magic Kingdom in Tomorrowland in the near future? Will the Hulk stalk Epcot Center? Will Spider Man replace the Indiana Jones Stunt Spectacular at MGM Studios (I hope not...)?

MTV raises a point that Marvel does not own all of its characters' film rights (e.g., Fantastic Four, Daredevil). However, this still brings us back to the question of Spidey. The Amazing Adventures of Spider Man ride located at Universal Studios Islands of Adventure constitutes a classic ride according to some.4 Some contend that the sale will have no short term effect on rides of this type: Disney will allow the name and character usage in the ride to stay in place, third party deals may stay in place.5 However, Universal Studios would likely no longer be able to use Marvel characters in themed attractions. In a park such as Islands of Adventure, this presents a problematic situation - the park contains a section devoted to Marvel characters (e.g., The Incredible Hulk roller coaster). If the park cannot add additional rides in this theme, will it eventually have to declare the section outdated, and replace the classic rides with more updated ones to which Universal owns the characters?

This also brings me back to my fears for Iron Man 2. What happens when a movie studio known for fairly conservative, family entertainment takes over the rights to a superhero dynasty? I had a similar concern when Disney took over Pixar - that the Pixar films would lose their uniqueness; however, Ratatouile and UP! have certainly proven me wrong on this number in the recent past. What does this collaboration mean for the direction of Marvel characters? What does it mean for the rights of those that created these characters (cough, cough, Stan Lee), if anything?

I end with the assumption that minds much more familiar with this sort of licensing/copyright/trademark situation have attended to the details and figured them out. However, without seeing the agreement, it still seems a relevant inquiry as to what happens when this sort of a deal occurs. Essentially, what happens when Venom visits the House of Mouse?



3. Id.


5. Id.

6. Id.

All Trademarks and Copyrighted Material Are Owned By Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Friday, August 28, 2009

Graffiti: Expression, Trademark, or Illegal ?

It could certainly be the case that the answer to the above question is "yes."

On the one hand, graffiti is an artist's expression memorialized on a building, roadway or some other public place.1 It meets the prima facie elements for copyrightability.2 There's certainly enough creativity under the "modicum" required by Feist Publications, Incorporated v. Rural Telephone Service Company.3 After all, graffiti is unique to each artist both in style, substance and location.4 The problem may be the fixation, as upon discovery, most graffiti is painted over or washed off with paint thinner by either the local authorities or by the property owner whose property was "defaced" by the work in question.5 But really, how is this different from a pencil drawing on a piece of paper? A person could erase it in the same way graffiti is removed. Arguably then, the copyright lasts as long as the work does (in this case...I don't feel like invoking a copyright term discussion). So the answer to the first part of my query is "yes, probably."

In the alternative, if I have not already persuaded you, graffiti could be a trademark. Actually, it probably couldn't be, but let's walk through it regardless.

A trademark is a mark that denotes the source or origin of a good or service.6 Because graffiti is not really a "good"7 and more a mark of a "service,"8 we'll have to go with graffiti as a service mark. What service? Why painting surfaces in a colorful and unique design of course! Some people would term this blight,9 others would call it art.10 To me it makes little difference for the purposes of our discussion. Blight versus art is a discussion of opinion and taste and I'm sure there are plenty of idiots who think Monet's haystacks and bridges are terrible paintings. Luckily, I'm not friends with any of them. For purposes of copyright and trademark, the court doesn't usually delve into valuation of the art itself, only the expression11 (but that leads me back to copyrights...let's stay focused).

The main problem with trademarking a piece (or work) of graffiti is the "use in commerce" requirement.12 Let's be honest, 99% of graffiti artists are not making any money by doing this and they're not really selling any services either. So the real answer to part two of my question is "no."

Ok, two down, one more to go. True, graffiti is probably illegal in most jurisdictions. I don't know, I'm not up on my local ordinances. Probably. This may or may not invalidate any attempt at a copyright13 and by inference possibly trademarking.14 So the ultimate answer to my question about life, the universe and everything (including graffiti) is yes, no, yes, and 42.15

1: See Graffiti, (last visited Aug. 28, 2009).
2: 17 U.S.C. § 102 (2006) (requiring a copyrightable work to be "fixed in any tangible medium of expression").
3: Feist Publ'ns, Inc. Rural Telephone Serv. Co., 499 U.S. 430, 341 (1991).
4: Graffiti, supra note 1; see also Feist, 499 U.S. at 341; (discussing the amount of creativity required to acquire a copyright); Burrow Giles Lithography Co. v. Sarony, 111 U.S. 53, 58-60 (1884) (examining the level of creativity required for copyright and suggesting that even a minimal amount would be sufficient).
5: Graffiti, supra note 1.
7: 15 U.S.C. § 1127.
8: Id.
9: Graffiti, supra note 1.
10: Id.
11: Bleistein v. Donaldson Lithographic Co., 188 U.S. 239, 251 (1903) ("It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits.").
12: 15 U.S.C. § 1127.
13: Cf. Mitchell Brothers Film Grp. v. Cinema Adult Theater, 604 F.2d 852, 854-55 (5th Cir. 1979) (providing copyright protection to a work deemed to contain "obscene" content while not addressing whether the actual nature of the work would affect the copyrightability).
14: See 15 U.S.C. § 1127 (providing that trademarks must relate to "all commerce which may lawfully be regulated by Congress.").

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Sunday, August 16, 2009

Sponge-Secret Trade-Pants?

OK, so aside from mangling the name of a popular children's television show, I thought that title was clever.

I only bring this up because the other day I was sitting in my apartment watching television when that show came on. Now, I personally enjoy watching the show, I know some of you may find it juvenile and I won't disagree.

There is, however, an interesting thought that popped into my head while I watched the show this time. For those of you who are unaware, Spongebob Squarepants involves a sea sponge who lives undersea and works at a diner known as the Krusty Krab. The sandwiches at the Krusty Krab, known as Krabby Patties, are apparently extremely delicious and the attempts of the diner's rival owner Plankton to secure the top-secret formula for the Krabby Patties are a recurring theme on the television show.

What does that have to do with this blog you may ask? Quite simple, the formula for a Krabby Patty is a trade secret.

Trade secrets, by definition are secrets used to gain an advantage over one's competitor's.1 They are only safe as long they are secret, once they've been placed in the public domain, there's no recovery of the "secret" status.2 So theoretically, the damages available are limited to the economic harm caused by the revalation of the secret. In this fashion, Mr. Krabs (proprietor of the Krusty Krab) certainly goes to an extreme effort to keep his sandwich formula safe.

I didn't have much on this one today but felt like sharing my observation.

1: See RESTATEMENT (SECOND) OF TORTS § 757; see also Ruckelshaus v. Monsanto Co., 467 U.S. 986, 1001-02 (1984).
2: Ruckelshaus, 467 U.S. at 1001-02.

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Wednesday, August 12, 2009


Squishy Mind Property was recently given a thoughtful shout-out by a co-blogger and colleague of ours, Mr. Jack O'Connor over at Skittering. I felt it only appropriate to return the favor. If you're interested in reading Skittering, it is a quirky wine blog that I enjoy. Jack's entries provide guidance that you don't always find in a liquor store and he relates it in "normal people" terms, something some other wine people tend to forget.

Enjoy Skittering and don't forget to come back here once in a while!

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Tuesday, August 11, 2009

Trademark v. Copyright - CAGE MATCH

In a recent story, the Carolina Hurricanes™1 got into a spat with a local rapper named Tyrone Banks over a song he wrote in tribute to the Hurricanes. The story goes, that Banks wrote the song, which was subsequently adopted by the Hurricanes as some sort of "official anthem." It was apparently played at games frequently, usually highlighting Mr. Banks in the crowd and giving him the appropriate credits on the video monitor.2 It seemed everything was peachy, until this week. Apparently the Hurricanes didn't care for the way Mr. Jones was promoting himself, making an implied connection between the two seem too strong for their liking.3 The "official anthem" became unofficial on Mr. Banks's website.4 The Hurricanes, however, apparently continued to play the song at games.5 This irritated Mr. Banks, as he had implicitly withdrawn his permission for them to do so.6 So now you have people suing each other over basically the same song but different causes.

The trademark/brand protection claim by the Hurricanes has now tacked on a copyright infringement issue. In the words of Borat, "Very Nice!"

First, to the brand and trademark protection. Be definition, a trademark is a source designator,7 and the Hurricanes hold a trademark in the team, the name, the logo, etc.8 So they are certainly within their rights to control who can make use of the Hurricanes logo or promote their brand. I've seen rap videos where the rappers are wearing sports team paraphernalia, but it's been blurred out to reduce the likelihood that a viewer will assume the team endorses the rapper in question. So far so good (I think) on the likelihood of confusion. I think the Hurricanes probably decided things were getting too cozy and pulled the plug on the connection, totally within their rights as a trademark holder.

Then we get to Mr. Banks's claim, and this is one that certainly has piqued my interest as of late. As a recent attendee to Lollaplooza this summer has reinforced in my mind, performance rights are certainly one that any musician must be aware of and control, as they are currently the basis of his/her livelihood. In general, music copyrights are bifurcated into 1) a musical work and 2) sound recordings.10 The difference between these is significant in their base nature and the rights ultimately afforded them. Musical works are the compositions of the musical songs themselves, an arrangement of notes, melodies, etc. Sound recordings are actual recordings of a person performing the musical work. The Copyright Act provides different rights to each, namely an exclusive public performance right to a composer of a musical work, but only an exclusive digital public performance right to the owners of sound recording copyrights.11 So to me, the ultimate question here is did Mr. Banks write the song? If that's the case and he's a composer (in addition to hip-hop artist), he has that exclusive right to publicly perform AND authorize the performance of12 his musical work that was for a short time the Hurricane's anthem. So if we take it to the logical conclusion (and boy do I love a logical conclusion), if Mr. Banks is the composer, the Hurricanes may have overstepped the bounds by playing his song without his permission. If he is not, the Hurricanes may have still played an unauthorized public performance, but they need to be speaking with someone else. All this could be avoided with a little forthought...

I'll watch this one carefully, as I always enjoy a Trademark/Copyright mix-up. Or is that a mixtape?

1: See (last visited Aug. 11, 2009). The Hurricanes are currently North Carolina's NHL® franchise. (last visited Aug. 11, 2009).
2: Mike Baker, A Bad Rap? Hurricanes Sue Hip-Hop Artist over Song, available at;_ylt=AhwW9hjTGec1jkGd_o4qltl7vLYF?slug=ap-hurricanes-song&prov=ap&type=lgns.
3: Id.
4: Id.
5: Id.
6: Id.
7: 15 U.S.C. § 1125(a)(1) (2006); see also Anheuser Busch, Inc. v. Stroh Brewery, Co., 750 F.2d 631, 648 (8th Cir. 1984) (discussing the importance of looking to the trademark's purpose as a source designator when analyzing a trademark claim).
8: See (last visited Aug. 11, 2009).
9: 17 U.S.C. § 101 (2006).
10: See 17 U.S.C. § 106.
11: Id. at 106(4), (6) (providing sound recording copyright holders an exclusive right to public performances only in the instance of digital transmissions, i.e., webcasting).
12: Id. at 106.

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Friday, July 24, 2009

Wait, A Reasonable Copyright Holder?

The Associated Press today announced it was going to start using a digital framework of sorts to track when people copy the AP's content without permission.1 This at first sent tremors of "uh-oh" here at Squishy Mind Property until we read further into the article. The program is aimed at stopping those mass aggregators who rip off large amounts of AP content, not little bloggers like us.2 So we breathed a sigh of relief. Granted we at SMP try to cite our sources as best we can and definitely refrain from outright copying, plagiarism, etc.

Technically speaking, the AP is absolutely correct, that anyone who wishes to use their actual stories (the text article the AP created) MUST get a license from the AP.3 The distribution right has been long established to be one of those exclusive rights of a copyright holder.4 The preamble to 106 provides the AP can publish/distribute OR authorize said publication and distribution.5 So all that being said, I have to say that the AP is taking the exact opposite approach the RIAA has used (until recently). But I think part of this may be related to an old Supreme Court case involving the AP.6 In Associated Press v. International News Service,7 the Court found that the "news" itself was not copyrightable, but the expression of the news was.8 In this way, the AP is acting within the Copyright Act and the AP decision. They have all the right to go after the little guy in this case, but so far they are choosing not to and for that, I applaud them as a reasonable party in this current struggle to make sense of the digital domain and the future of copyright law.

1: Debra Weiss, AP to Crack Down on Use of Its Content, ABA JOURNAL, July 24, 2009, available at
2: Id. ("[T]he intent was to deter those who engage in large-scale copying of AP content rather than bloggers who use too many paragraphs from an AP story.").
3: 17 U.S.C. § 106(1), (3) (2006).
4: Id. at 106(3).
5: Id. at § 106.
6: Associated Press v. Int'l News Serv., 248 U.S. 215 (1918).
7: 248 U.S. 215 (1918).
8: Id. at 234-35.

You Gotta Fight, For Your Right, of Priiiiiiiiiivacy

I woke up this morning and checked my Facebook news feed (as usual). Today however, I noticed something that concerned me. A friend of mine had posted a warning on her status about Facebook making use of my pictures and other various actions to create advertisements that my friends see.

I don't know about you, but any arrangement that uses my private information and then requires me to opt-out if I don't want them to is bogus in my mind. First year Contracts I students learn that silence is almost NEVER acquiescence. I'm not really impressed by Facebook's Terms of Use/Service, which suggest that we (the users) are on notice of this practice as it's pretty unclear. Now to be fair, I haven't seen any ads with my friends pictures in them (yet).

The whole reeks of rampant capitalism and an invasion of privacy. Granted, there has to be first be an expectation of privacy and this is the internet. But in my irate defense, I have my personal profile set fairly private. Literally, when people want to friend me, they generally have to e-mail me or ask me in person because I don't show up in search results, I untag myself from a lot of pictures and I generally just don't make it easy for people to find me. This little option seems to not care, which irritates me. As I said before, silence is not acceptance, particularly in a case where a person is going to making money (selling ad space) by using your information.

I did follow my friend's instructions on how to stop Facebook from using this information. I have reposted below:

"Facebook has agreed to let third party advertisers use your posted pictures without your permission. Click on SETTINGS next to where you see the LOGOUT link. Select PRIVACY. Select NEWS FEEDS AND WALL. Select th
e tab that reads FACEBOOK ADS. There is a drop-down box, select NO ONE. Then hit SAVE."

It should ultimately look like this when you are done.

When will Facebook learn to stop trying to get so damn creepy?

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Monday, July 13, 2009

Doppelgangers Need Tweets Too

So I just heard this interesting little factoid. Apparently there's been an issue lately with imposter tweets in the blogosphere.1

I find this topic interesting on two fronts. There's the subject of personal accounts, like Mr. La Russa,2 Mr. Schuller,3 and even the notable Sarah Palin.4 Then you have to look at the likes of corporations, several of which have come under attack from alleged "insiders" tweeting about the goings on in the company.5

The first set of tweets goes to a right of publicity issue. Does a person have the right to control the public perception and economic exploitation of their person? Sure they do. If they are a celebrity. The common law right of publicity extends to allow a person to exploit their persona.6 Unlike a trademark issue, there's no need to address a likelihood of confusion either, it's a broader right of protection.7 So the question remains, what consitutes 'celebrity'? Well, the answer is there is not really an answer. The best answer is it depends on what you're worth, but even McCarthy is hesitant to draw lines and would extend it a right to anyone.8

The second set goes to an issue we haven't addressed much of late in this blog, trademarks. Trademarks are source designators.9 They tell you where something came from so you, the customer or client can be assured of the quality or you at least know what you are getting. Clearly if you are reading the tweets from someone who you THINK works for ABC-BIG COMPANY, but really isn't, there may be a problem, particularly if the impostor is telling you that ABC puts rubber cement in the bologna you're making your sandwich from.

Ultimately both issues goes to the idea that a person or entity needs to be able to have control over their rights. The big question here, is what the pecuniary gain is from posing as someone you are not. For the cases of Mr. La Russa or Mrs. Palin, the gain is likely not pecuniary, mostly to make a bad name for the individual being impersonated. This crosses more into the area of defamation or libel (since slander is spoken), less of an issue than I'd like to dive into right now. For the companies, one could argue dilution,10 but it's a weak claim. You could most likely argue tarnishment.11 That claim would likely survive a little bit, depending on what the impersonator decided to "tweet" about your company, assuming that ABC was a famous enough company to warrant Federal Trademark Dilution Act protection.12

Overall, there will always be those that try to pose as someone else to make a little money for themselves or to make a bad name for someone else, we should all consider ourselves warned.

1: Companies Cope with Twitter Imposters WALL STREET JOURNAL, June 29, 2009, available at; Kylie Crull, Watch Out for Imposter Tweets, ROCKFORD REGISTER STAR, July 12, 2009, available at; Geoffrey Fowler, Tony La Russa Drops Suit Over Fake Twitter Account, WALL STREET JOURNAL, June 7, 2009, available at; OMG! Imposter Tweets Pretending to be Prominent TV Evangelist Robert Schuller, NY DAILY NEWS, Mar. 26, 2009, available at
2: Fowler, supra note 1.
3: NY DAILY NEWS, supra note 1.
4: Brian Womack & Ian King, Palin's Twitter Impersonators Show Challenge of Tweet Control,, July 8, 2009, available at
5: WALL STREET JOURNAL, supra note 1.
6: Rogers v. Grimaldi, 875 F.2d 994, 1003-04 ("The common law right of publicity, where it has been recognized, grants celebrities an exclusive right to control the commercial value of their names and to prevent others from exploiting them without permission.").
7: Id. at 1004.
10: Id. at § 24:67.
11: See 15 U.S.C. § 1125 (2005).
12: 15 U.S.C. § 1125(c)(2)(A).

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Saturday, June 27, 2009

Pirates of the Swedish Coast 2: Still Guilty

The copyright pirates of Pirate Bay have had their appeal for a retrial denied. Epic fail (for them at least). The BBC reports that the defendants, who were found guilty of copyright infringement appealed and requested a new trial based on the discovery that one of the judges in the case had ties to a copyright protection group.1

While this certainly is an interesting thing to learn post-trial, it certainly wouldn't be enough to win the motion for a new trial.

I'm not up on my Swedish Civil Procedure or the Code of Professional Conduct for Swedish Lawyers and/or Judges, but I think the standard applied would probably be fairly high (nigh insurmountable?). In the United States, there could be an issue of conflict of interest,2 but even then, the ethical guidelines for judicial conduct seem to feel like there probably is not an issue.3 Note the use of italics to emphasize the speculative nature of those statements.

The Code of Conduct for U.S. Federal Judges, provides that judges are free to engage in civic and other extra-judicial activities as long as there is no likelihood that this activity would substantially interfere with their impartiality.4 Similarly, the ABA's model rules generally prohibit an attorney from representing a client when the lawyer is involved with another client whose interests are or a lawyer who has personal interest/affiliation from which a fiduciary duty extends which are adverse to the prospective client.5 Applying the Pirate Bay situation to an American court, it would be fairly clear that in the present case, unless you're in front of the Federal Circuit, where there's quite a bit of intellectual property work, you're probably going to get denied on the same motion. Even then I don't think it would have had much traction.

In the case of the Federal Circuit, membership in the pro-copyright group could be seen as prejudicial while the generalist judges likely don't see enough copyright cases for there to be a problem. Of course, the counter argument is the generalist judges maybe don't see many copyright cases and therefore may use the occasional copyright case as a platform to promote their cause if they were involved in the pro-copyright group. That would definitely be a violation of Canon 5 of the Federal Code of Conduct for U.S. Judges.6 I think the Code of Conduct neatly solves this by requiring the imparitality in the execution of justice.7 Unless you could prove the judge was openly hostile and blatantly adverse to the defendants, it's a pretty big stretch. So really, while it was probably an interesting sidenote that one of the Swedish judges was involved in a pro-copyright group, I think that motion was likely doomed to fail. On second thought even, my distinction between the Federal Circuit and the generalist judges is most likely a distinction without a difference.

1: Pirate Bay retrial call rejected, BBC, (last visited June 27, 2009).
2: See MODEL RULES OF PROF'L CONDUCT, R. 1.7, 1.8 (discussing a conflict of interest as a lawyer representing a client or conducting business with a client to which the lawyer has an adverse interest to the client and prohibiting such activity generally).
4: Id.
7: Id. at Canon 2.2.

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Saturday, June 20, 2009

Second Time is Definitely NOT the Charm...

So the Thomas copyright case in Minnesota came to a verdict this week.1 Instead of the previous $220,000 verdict, she's now on the hook for something to the tune of $1.92 million.2 Talk about things definitely not going your way. Checking the slip opinion from the trial court, it only had the motions in limine hearings, so it was not very helpful for my purposes.

Basically, as we can all tell, Thomas got put to the fire so the industry can have its big "win." The problem is this isn't a win, it's punishing someone incredibly out of proportion to what she did. Now I understand the argument that the fine should be that big because the files she shared can be shared ad infinitem.3 There is another way, you could track how many files were downloaded off of her computer and then determine how many copies of the song were released and THEN create your damages. Obviously this ignores the copies that were made and what happens to them, but there has to be a point where you stop counting.

The article does mention that the lawyers representing Thomas are also representing two other copyright infringment defendants.4 I sincerely hope they end up with a better result than this, because someone needs to find the bludgeoning tactics that the RIAA has been using. The RIAA has said it's stopping the consumer-lawsuit practice that has historically been using, however, if they really want to reclaim some of that goodwill, they should drop all their current open lawsuits and find a way to settle with people like Thomas who have been grossly over punished.

1: Chris Williams, Big fine Could be Big Trouble in Downloading Case, News, available at
2: Id.
3: Id.
4: Id.

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Wednesday, June 17, 2009

Derivation + Twitter = Twittervative?

In case you haven't heard, two guys who are big fans of James Joyce's novel "Ulysses" decided they would put it up on Twitter.1 An interesting idea, but one that brings up some copyright law.

Section 106 of the Copyright Act provides a copyright holder (in this case James Joyce) with the right to make derivatives.2 However, the thing is, copyrights last only 70 years after the death of the author3 (in this case, again, James Joyce, who died in 1941 4). Now, nevermind that, as the Eldred v. Ashcroft5 decision warrants a whole other post (and believe me, I have plenty to say about it). The whole derivative debate hinges on authorization and if you look at section 101, you see that this exercise would probably fall under that label of "derivative."6 If it's not authorized (and I'm not going into that), then you have to go to "fair use" to save your bacon.

What I like about the Twit-Lysses (that's what I'm calling it) is it's wicked creative and if you check it out, it's seriously entertaining (for literature people). Because Mr. Joyce's copyright technically still survives (1941 + 70 = 2011), one could conceivably get in trouble for this. Technically violating the public performance right from the Act might get you in trouble....usually.7 So we've figured out you could run into trouble with 106(2) and 106(4). Ouch.

Now people are always quick to claim fair use under section 107 of the Act.7 Problem with fair use is that is typically a 50/50 if you get to a jury trial, there's all kinds of factors and no categorical exceptions,9 etc...that would be nice to get into for a jury, but ultimately, Twit-Lysses is a harmless literary exercise (in my humble opinion). It's generally transformative (hardcopy book to Twitter micro-blogging), is not acting as a market substitute for the original work, doesn't really damage the market for the original, takes a small quantitative and qualitative portion of the original and generally is entertaining. Ulysses is a fictional work, so it receives a bit more protection than a non-fiction,10 but that's really only one factor in four that heavily weigh in the favor of Ulysses.

I say Tweet on!

1: "Twitter goes literary with Ulysses performance", available at
2: 17 U.S.C. § 106(2) (2006).
3: 17 U.S.C. § 302.
4: "James Joyce", available at
5: Eldred v. Ashcroft, 538 U.S. 916 (2003).
6: 17 U.S.C. § 101.
7: 17 U.S.C. § 106(4).
8: 17 U.S.C. § 107.
9: See id.
10: See id. (noting the nature of the work is to be taken into account).

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Tuesday, June 16, 2009

Comic Relief for a Dreary Tuesday

A friend of ours forwarded us this link, despite the obvious legal flaws, we did find it funny.

This raises an interesting question, if you could patent emotions (which I will tell you right now you cannot...seriously), since patents are referred to as "hard IP," versus copyright and trademarks being "soft," does that mean that an "emotional patent" would then be "hard/soft IP"? Or would it be "firm, yet yielding to the touch IP"?

Just spitballing here, carry on.

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Thursday, June 11, 2009

Happy June - I Think?

It's finally June and we finally have time again to write. Two interesting news stories this week.

1. Sweden Elects A "Pirate Party" Delegate to the European Parliament.1

Aside from the very cool fact that these guys decided to call themselves the Pirate Party and are all about reduced internet surveillance and more free content, there is something else interesting here. Part of their platform calls for the abolishment of intellectual property rights (i.e., a dismantling of the patent system, and deregulation of copyrights, etc.). This is all well and good, except there's a major flaw to that argument. If people can't get protection for their inventions, it's a simple fact that people will steal them. In fact, people get protection now and others STILL steal them (hence patent infringement suits). Now call me a bit "Ayn Randian" on this one, but if a guy spends his time working to create some new great gizmo that makes our lives faster/better/stronger, etc, shouldn't be there be a reward? Likewise, eliminating trademarks and copyrights lends itself to serious abuses. I think the idyllic "no-IP" world is a good thought, but best left to classroom and bar debates. In practicality, there are enough people willing to steal another's music or images, mislabel their product with someone else's label or simply rip off another's patented (or patentable) idea because they can and leave the creator high and dry. If this segment of humanity didn't exist, then fine. But since that segment does exist, we have to protect our artists, our inventors and our businesses (ultimately protecting the public from thieves and misappropriators).

2. American Family Discovers Their Photograph Used as a Czech Ad.2

This one just makes me laugh. A Czech company used an American family's Christmast picture to advertise. This is a classic case of copyrighted material being misappropriated. The picture definitely meets the Feist standard of creativity and doesn't need to be registered (although the family talking about watermarking the picture for future use provokes further interesting questions). I can only imagine their shock when they found out the news. They probably should have asked for a stock photo fee (those can be quite significant!).

But seriously, this just goes to show you how ubiquitous web searching has become and how people don't always realize they are taking someone else's property. Fortunately, it sounds like the Czech company is doing the right thing by taking down the pictures and offering to send some kind of apology gift (along with an e-mail). Be wary the next time you Google Image Search (TM).

1: Free web Pirate Party captures seat, News, (last visited June 11, 2009).
2: Mo. family Christmas photo turns up in Czech ad, News, (last visited June 11, 2009).

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Monday, April 20, 2009

Obama Poster: Redux

Dude seriously? I'm not sure George Lopez would be a top pick for me, but whatever.

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Friday, April 17, 2009

Not Quite Dead Yet

Yes dear readers (Hi Mom), we've been a bit busy lately, but that doesn't mean the intellectual property world has been resting. For your reading enjoyment, a couple of quick thoughts in the intellectual property world since we went on hiatus from mid-February until now.

1. "Octomom" Trademark

First of all, this woman (who in case you haven't heard, please see the article on Nadya Suleman1) bothers me. But irrespective of that, a recent story I ran across indicated that Ms. Suleman was seeking a trademark for the term "Octomom."2 Seriously? I mean I get the "use in commerce,"3 but I'm having an issue with this. First, you're making cash off a pejorative nickname (which I guess is a bit of "turnabout is fair play"), but still. Depending on how the mark is designed (picture of her or the kids), there could be cancellation ramifications4 or an issue of descriptiveness or generic-ness.5 The whole thing is a bit ridiculous to me. In a descriptive sense, she is the "mother of octuplets," so....Octomom? I could attempt to trademark the phrase "Jagoff McGee," but that probably wouldn't survive registration.

2. France's 3-Strikes Rule Is OUT!

In an interesting bit of news on the copyright law front of things, the French decided against a "3-Strikes" rule where if you are caught illegally downloading three times, you are cut off from all internet access.6 This policy is interesting to me, the parallel United States' attempt at using a similar system for criminal enforcement has worked seemingly very well....? It's questionable these systems have the deterrent effect that advocates of such a system (ahem...RIAA?) portend they do.7 But I digress. The interesting question really becomes, does a permanent denial to the internet for downloading copyrighted music violate basic human rights?8 Food for thought, where, in an digital world and with so much of the economy digitized on the internet, does a deprivation of that access and the free flow of ideas and information ultimately make you a pariah so much so that you can't even function? Would that violate your basic human rights to be a part of the human collective? Will such a threat if it were to actually stand be a deterrent? You're damn right it would be, hence why the RIAA and it's fellows are VERY excited to push the U.S. government in that direction.9 Scary.

3. Swedish Swashbuckling

I like pirates. Of the Caribbean. Trademark pirates I am less excited about for a couple reasons. Mostly because me personally, I am a trademark guy. However, I have to give Pirate Bay credit for being a creative adversary in the battle of copyright protection v. internet providers.10 However it seems they may have fired the last salvo in that fight for the time being. Just a couple days ago, a Swedish court put the founders of the ignominious website in prison11 (at least it's not Sing-Sing12). While this certainly should make copyright holders feel warm and fuzzy-ish, the defendants were only sentenced to a year (weak they serve IKEA(TM) meatballs in Swedish prison?), the fine was a hefty $4.5 million dollars.13 The catch with this judgment is, if you stamp out Pirate Bay today, there's going to be another tomorrow. The problem truly is, the music and movie industry missed the boat on the digital age and they are still playing catch up. When Napster first came out, there was almost no response from the RIAA or anyone else. Now they've moved to "scorched earth" tactics to litigate end-users, middlemen, frontmen, backmen, and any other kind of person they can think of. What they SHOULD have done was embrace the digital age early and taken advantage of it. I don't really feel that bad for the record companies. I feel bad for the individual artists who lose royalties, but I don't for the conglomerates who used to charge me $18.99 for a CD that cost them approximately $1.64 to make. I call bullshit.

1: Nadya Suleman,
2:, Octomom Seeks to Trademark her Nickname, (April 17, 2009)
3: 15 U.S.C. § 1051(a)(3)(C) (2006).
4: See 15 U.S.C. § 1052(a) (providing that a mark that resembles a living person or that is scandalous or immoral may be refused registration or by inference cancelled).
5: 15 U.S.C. § 1052(e).
6: David Kravets, French Reject "Three-Strikes" Piracy Measure,, Apr. 9, 2009,
7: See Jenny Murphy, Are Three-Strikes Laws Fair and Effective?,, June 12, 2000,
8: United Nations Universal Declaration of Human Rights, G.A. Res. 217A, at 71, U.N. GAOR, 3d Sess., 1st plen. mtg., U.N. Doc. A/810 (Dec. 12, 1948) (providing that human beings are entitled to not be subjected to "exile," granted "freedom of opinion and expression," a right of "equal access," "education," and the right to participate in culture).
9: Kravets, supra note 6.
10: See The Pirate Bay,
11: BBC News, Court Jails Pirate Bay Founders, Apr. 17, 2009,
12: Sing Sing,
13: See BBC News, supra note 11.

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Wednesday, February 4, 2009

Copyright Infringement, President Obama, and That Poster You've Been Seeing Everywhere

First thing's first: Go here,, and take a look at the AP Copyrighted picture of President Obama, and visually compare it to the (now famous) poster of President Obama by artist Shepard Fairey. Look a bit similar? The AP certainly seems to think so.

As the article with the images explains, the AP alleges that Mr. Fairey's poster of President Obama infringes on their copyrighted photo.
1 Mr. Fairey admits that he based his poster off of the AP image, but claims that his poster constitutes fair use.2 So who's right here: The AP or Mr. Fairey?

Assuming that both images constitute an original work of authorship fixed in a tangible medium of expression, the issue becomes: (1) Is Mr. Fairey's poster an unauthorized derivative work; and (2) If so, may he successfully defend his image with fair use? Sure.

As a brief, basic description, a derivative work is one based upon a preexisting work.
3 Mr. Fairey admits he based his poster upon the AP image, and thus, I think its clear that the poster constitutes a derivative work.

More at issue is whether Mr. Fairey's poster constitutes an infringing derivative work. The test for whether a derivative work infringes on the original copyright owner's rights is that of substantial similarity: The derivative work must take enough subject matter from the original work that a jury finds the works substantially similar to each other.4

Personally, I am a bit skeptical that the works are substantially similar. I find the posing of President Obama in each picture the most similar part of the works. Other than the pose, nothing else seems substantially similar to me. The photo background contains a flag, the poster background contains a red side and a blue side. The AP photo arguably conveys hope through Obama's quiet, upward gaze. However, I feel the poster not only conveys hope, but a patriotic feeling of change, made explicit by the "HOPE" wording on the bottom of the poster. Further, the poster washes Obama's image in red, white and blue. The photograph is realistic in every sense. However, this is a question of fact - the AP doesn't want me on their jury for this one because I really don't find these substantially similar. However, assuming arguendo that the images were substantially similar . . .

Fair Use. Mr. Fairey's attorneys claim that the poster constitutes a fair use of the photograph. The elements to examine in determining whether a work constitute a fair use are: (1) Nature and Purpose of the use (e.g., commercial or educational); (2) Nature of the copyrighted work; (3) Amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) effect of the use upon the market for or value of the copyrighted work.5

Regarding nature of the use, it seems that Mr. Fairey initially made the poster as a way to garner attention for Barack Obama's campaign. After he made the poster, demand skyrocketed and it became a viable commercial commodity. I'll call this one a split 50/50 in favor of both parties.

For nature of the copyrighted work, the AP is in the business of selling newspapers and images involved with those newspapers. I think that the nature of the copyrighted work is more commercial than educational or news related, but again, this could split. 50/50 again washes factors 1 and 2.

Amount and substantiality. I think this goes to Mr. Fairey. Yes, he took the pose, but he also added the wash of patriotic colors, the word "HOPE" and made the image more of a patriotic vision than a photograph. Further, I do not think the pose on its own was so inventive that Mr. Fairey took the heart of the APs work.6 There are many pictures where people are posed looking skyward in a thoughtful fashion.7 For instance, this poster from Stepbrothers - This factor goes to Mr. Fairey.

Which leads to whether Mr. Fairey's poster was a market substitute... This element seems to me the hardest one to determine. Would the demographic that would purchase the photo now purchase the poster instead? Would people who like the photo have ever purchased the poster? Are the photo and poster even really part of the same market? Obviously, the AP thinks so - they want credit and compensation for their photo being the basis of Mr. Fairey's poster. While I find this element possibly a 50/50 split, I don't like ties: I personally do not think that the poster took away the market for the photo. I would not purchase the AP photo regardless of whether Mr. Fairey's poster came into existence. I would purchase Mr. Fairey's poster as I think it represents what President Obama's campaign was about: Hope and a rejeuvenated passion for the United States. There's something iconic about the poster. While the photo is great, its not iconic - it seems more of a really good press shot.

Thus, I personally think that Mr. Fairey would win on a fair use defense if this matter came to trial. However, that would depend on the jury, and things are fairly close here. It would be interesting to see how the matter played out.

1: Hillel Italie, AP alleges copyright infringement of Obama image (Feb. 4, 2008),


3: 17 U.S.C. s. 102(a) (2006).

4: Castle Rock Entm't, Inc. v. Carol Pub. Group Inc., 150 F.3d 132, 137 (2d Cir. 1998) ("Since the fact of copying is acknowledged and undisputed, the critical question for decision is whether the copying was unlawful or improper in that it took a sufficient amount of protected expression from
Seinfeld as evidenced by its substantial similarity to such expression.").

5: 17 U.S.C. s. 107.

See e.g., Harper & Row

Tuesday, January 20, 2009

Thoughts on President Obama's Inauguration Speech

While this may be (and probably is) reading too deep into the text of our 44th President’s address today, I wanted to point out a couple passages.

“Our economy is badly weakened, a consequence of greed and irresponsibility on the part of some, but also our collective failure to make hard choices and prepare the nation for a new age.”1

While I cannot blame the current state of the economy on intellectual property issues, there is certainly quite a bit of complaint that can be made of greed and failure to make hard choices that may or may not need to be made. Patent trolls are one example that come to mind, and the firms that buy up unused or unheard of patents to landmine an unsuspecting company for millions of dollars.2 Also the Copyright Term Extension Act (“CTEA”) also comes to mind.3 The needless extension of the term of a copyright’s life, while protecting the artist’s (or creator’s) work, in thoughts acts as a chill upon the blooming of the creative arts. It was my understanding that Congress was supposed to encourage the useful arts,4 but the CTEA seems contrary to the purpose laid out in the Constitution.

“Rather, it has been the risk-takers, the doers, the makers of things — some celebrated but more often men and women obscure in their labor, who have carried us up the long, rugged path towards prosperity and freedom.”5

The makers of things. Those that use their mind’s power to make our world. They have always been celebrated and if not for American ingenuity we would not be the superpower we are. This is intellectual property at its core. Innovation drives all the economy and all of us.

“Our workers are no less productive than when this crisis began. Our minds are no less inventive, our goods and services no less needed than they were last week or last month or last year. Our capacity remains undiminished. But our time of standing pat, of protecting narrow interests and putting off unpleasant decisions — that time has surely passed.”6

Protecting narrow interests has been a hallmark of U.S. intellectual property policy around the world. This needs to change in a big way, or the U.S. will likely find itself on the short of end of a big stick in the future.7 Failing to protect other countries’ nationals’ IP eventually will result in a tit-for-tat trade war, one that we as a country will likely lose. The PRO-IP Act, recently passed into law at the end of George Bush’s tenure in office reiterates the attitude of “protect U.S. interests abroad, but forget the rest of the world.”8 President Obama is absolutely correct, that a new way forward, on all accounts will be necessary to properly heal the American economy and protect U.S. interests at home and abroad.

1: President Barack Obama, Inauguration Speech, January 20, 2009, available at
2: See generally Patent Troll, Wikipedia, available at
3: Copyright Term Extension Act, Pub.L. 105-298, codified in 17 U.S.C. § 102 (2006) (extending copyright protection to the life of the author plus 70 years or in the case of a corporate author 120 years after creation or 95 after publication, whichever is shorter).
4: U.S. Const., Art. I, § 8, cl. 8 (providing that Congress is "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.")
5: Obama, supra note 1.
6: Id.
7: See ITC, Ltd. v. Punchgini, Inc., 482 F.3d 135 (2d Cir. 2007) (“[Petitioner] argues the United States cannot expect other nations to protect famous American trademarks if United States courts decline to afford reciprocal protection to famous foreign marks.”); see also Brief for American Intellectual Property Law Association as Amicus Curiae Supporting Petitioner, ITC, Ltd. v. Punchgini, Inc., 128 S. Ct. 288 (No. 06-1722) 2007 WL 2174224 (suggesting the 2nd Circuit decision in ITC puts the U.S. in violation of its treaty obligations); Prioritizing Resources and Organization for Intellectual Property Act of 2008 S. 3325, 154th Cong. (2008) [hereinafter PRO-IP Act] (inferring from the Joint Strategic Plan’s primary focus on international relations, with a cursory discussion of domestic intellectual property issues that protection of foreign rights in the U.S. will be minimal).
8: See PRO-IP Act, supra note 7

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

That's Quite the Midterm "Grade Report" There Son...

Quick update before the story gets too old, the BBC1 was kind enough to post this story about a school in Suffolk winning the battle against a cybersquatter.2 I can only imagine what the parents of the students of Framlingham College thought when they visited what was supposed to be the school website. People talk about bad faith when it comes to cybersquatting,3 and I am personally of the opinion that any pornographic site that purposefully chooses a college name for its web address is likely doing so with something other than an above-the-table intent. The article talks about the “pernicious” and “misleading” effect of the squatting,4 I can only imagine. It would certainly make a parent rethink where the tuition money was going....

Happy Tuesday.

1: See “School’s links to porn site end,” BBC News, Jan. 14, 2009, available at
2: See The Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) (2006) (hereinafter ACPA) (according to the ACPA, cybersquatting is the registering, trafficking in, or the use of a domain name in bad faith with the intent to profit from another’s trademark); see also Uniform Domain Name Dispute Resolution Policy, ICANN (hereinafter UDNDRP) (listing that a complainant to a cybersquatting charge must establish that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; the registrant does not have any rights or legitimate interests in the domain name; and the registrant registered the domain name and is using it in "bad faith").
3: UDNDRP, supra note 2.
4: See BBC News, supra note 1.

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Thursday, January 15, 2009

Sexy Underwear Party + American Idol = Hilarity Ensues

What kind of world have we come to where the humble and hard-working adult dancer is in danger of being sued for trademark infringement by a giant media conglomerate.1 First off, I find the idea that a strip club "tarnishes" the American Idol image to be on the hilarious side. But really there is one thing I wanted to touch on, the allegations of trademark "tarnishment."2

As far as "tarnishment" of a trademark goes...that really puts things under the purview of the Federal Trademark Dilution Act ("FTDA"),3 a subsection of the Lanham Act.4 Tarnishment is a type of trademark dilution and is defined in the statute as an "association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark."5 However, this raises one problem because to qualify for FTDA protections, "American Idol" must be deemed a "famous mark." The test for which essentially asks if the mark is so prominent that it is "widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner."6 In the story at issue, it's probably arguable that "American Idol" is widely recognized by the general consuming U.S. public, except for probably the Amish. Most people when they see the "American Idol" logo would likely assume that whatever the logo is on comes from "American Idol," presuming the product has something to do with singing, show business, Ryan Seacrest, or some "Idol" product endorsement. Thanks to the recent passage of the Trademark Dilution Revision Act ("TDRA"), "Idol" does not have to prove the strip club would actually harm their mark, only that it is likely that it will.7

The FTDA arguably would qualify "American Idol" as famous, but ultimately, the question of "tarnishment" is a bit ridiculous. Granted, without an actual picture of the alleged infringing logo and t-shirts in question, it's hard to say how close the two are, but the fact that one involves a local stripping competition in Texas and the other a nationwide singing competition, the actual likelihood of confusion is probably minimal, as my guess is many of the male patrons of the strip club probably do not watch a whole lot of "American Idol," but I imagine they are probably fans of "Stripper Idol." Prior to the passage of the TDRA, I would think that the strip club probably has a pretty solid argument, but the newer statute weakens the argument a bit. Either way, I will be watching for the results of this case with interest.

1: See "'American Idol' sues Austin strip club," Emily Ramshaw, Dallas Morning News, January 13, 2009, available at
2: Id.
3: See generally Federal Trademark Dilution Act, 17 U.S.C. § 1125 (2002).
4: See generally Lanham Act, 17 U.S.C. §§ 1051-1129 (2002).
5: 17 U.S.C. § 1125 (c)(2)(C) (2002).
6: Id. at § 1125 (c)(2)(a).
7: Trademark Dilution Revision Act of 2006, 12o Stat. 1730, 1730-32 (2006) (providing a famous mark holder only need prove that the alleged infringer's use would likely dilute the rights holder's mark); but see Mosely v. V. Secret Catalogue, Inc., 537 U.S. 418 (2005), superseded by statute, TDRA, supra note 3 (holding a trademark owner had to prove actual dilution and harm to succeed on a claim of trademark dilution).

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property

Tuesday, January 13, 2009

Bears and Volcanoes and Trademarks, Oh My!

So it was recently reported in the news that Yellowstone National Park was going to esplode (sp) in a giant fiery caldera volcano.1 Sounds exciting, and very similar to two movies from the late 1990s.2 But I digress.

The actually interesting part of the story was about the website that reported said alarmist eruption used (rather unapologetically) the U.S. Geological Survey's logo (apparently in addition other trademark-ish type things). The site was since taken down, but either way the main concern by the Yellowstone spokesperson was that people would be confused about the source of the information.3 As McCarthy tells us, trademarks are about source and origin designation,4 so the USGS's concern is understandable, wouldn't want people thinking the U.S. government was flying off the handle with any inaccurate information.

The fact that the USGS technically is not selling any "product" per se would be a false assumption, as the news can be interpreted as a product5 (albeit freely accessible, usually at low cost). I think the disingenuous website poster probably made a smart move taking the site and the USGS's concerns well founded.

The funny thing is, the trademark issue wouldn't even blip on your radar, it's buried nicely in the article.

Happy Monday.

1: See "Caldera,", available at
2: See "Volcano," 20th Century Fox Entertainment, 1997; "Dante's Peak," Universal Pictures, 1997
3: See "Quakes shake loose fears about Yellowstone Volcano," Mead Gruver, Associate Press, available at
4: Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 3:4 (4th ed. 2008) (defining trademarks as a design which reflects the origin of the good or service and distinguish it from others); see also Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900 (9th Cir. 2002) (“[Trademarks are] the owner’s way of preventing others from duping consumers into buying a product they mistakenly believe is sponsored by the trademark owner.”).
5: See I.N.S. v. A.P., 248 U.S. 215 (1918) (holding that the dual nature of news reporting means there is a "product" to be had, albeit with restrictions).

All Trademarks and Copyrighted Material Are Owned by Their Respective Owners
All Credit for Sources is Given As Best As Possible

This blog may not be reproduced without permission from the author (which is usually given if asked). (C) 2009 Squishy Mind Property