Summertime

Well, it has been nearly two months since our last post here and unfortunately, this post will keep the dry spell going.

My co-author and I are graduating in a week or so, then commencing bar examination studies for the next two months.

As such, we are "officially" taking a leave of absence until bar studies have concluded and we have regained our sanity.

Have an excellent summer.

.amc. & jdjstra

Mmmmm......brains....

This weekend I ran the Shamrock Shuffle in Chicago with a few friends of mine. As we passed the Willis (Sears) Tower, one of my friends commented that we were nearly finished as we had just passed the Sears Tower. Being snarky (and a little tired) I told her it was clearly the Willis Tower, all she had to do was look at the sign on the side of the tower. To no great surprise to me, all three women I was running with chimed in that the Willis Tower would always be the Sears Tower and that it would always be Marshall Fields, not Macy's as far as they were concerned.

This of course, set an interesting thought loose in my head. What is a trademark owner or business to do when they acquire a well known or quite popular mark and then do away with it? What if it becomes a zombie trademark, feeding on your company's or mark's lack of goodwill as a means to survive, much the arisen dead in a terrible movie.1 I am sure this was certainly a business consideration the purchasing businesses take into account, but at the same time, I find the underground resistance attitude to be an interesting consumer backlash. It certainly demonstrates that trademarks are by no means fungible and that it requires a great deal of care to get consumers to make this kind of switch. I personally have a hard time thinking about the Sears Tower as the Willis and have to actively remember to say Willis instead. Macy's v. Marshall Fields I am less sensitive about, possibly because I am not a huge department store shopper.

It's an interesting debate, what you have to do to keep a zombie trademark from sneaking in through the back window and eating your brains...

1: For a further and probably more enlightened discussion of this topic, see Jerome Gilson & Anne Gilson Lalonde, The Zombie Trademark: A Windfall and a Pitfall, 98 Trademark Rep. 1280 (2008).

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

Endorsement-What?

There has been much made of what to do about bloggers and the blogosphere and their penchant for endorsing products through blogs. At this blog, we're not hawking any wares,1 but I did find it interest that the FTC appears to have finally come out and given us some guidance,2 as to what would be an endorsement.3 About time the government did something proactive...although to be fair this has been a long time coming, particularly with some much debate about endorsements and television advertising.4

Honestly though, the longer I write here and work in the legal profession, the more I am impressed with the FTC's attempts to make its decisions and regulations accessible to the lay person (read: non-lawyer). The Commission includes on its website some helpful (and thankfully short) videos explaining the application of the above-referenced Code of Federal Regulations5 to the average blogger and the "marketing blogger."6

The former advertising exec in me still gets a bit grouchy when I think about the wannabe blog marketers, but it could just be jealousy over free stuff that I'm not getting.

That is all.

1: But we'd be more than happy to start if someone is willing to pay us or give us free stuff.
2: No seriously, I would really like some free stuff.
3: Revised Endorsement and Testimonial Guides, 16 C.F.R. § 255 (2009), available at http://ftc.gov/os/2009/10/091005revisedendorsementguides.pdf.
4: See, e.g., Liisa Thomas & Robert Newman, Social Networking & Blogging: The New Legal Frontier, 9 J. Marsh. Rev. Intell. Prop. L. 500 (2009); Ann K. Hagerty, Comment, Embedded Advertising: Your Rights in the TiVo Era, 9 J. Marsh. Rev. Intell. Prop. L. 146 (2009).
5: 16 C.F.R. § 255.
6: See Federal Trade Comm'n, Federal Trade Commission's Advertising - Endorsement Guides, http://www.ftc.gov/multimedia/video/business/endorsement-guides.shtm.

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

Nom-Nom-Nom

Ok, to clarify, nom equals name en français.

I was struck by a couple of short (and arguably stupid) news stories in recent weeks. The first is one we've already reported on, the Octomom applied for a trademark and somehow the story was refreshed again recently. No idea why, because I'd prefer she sink into the black hole of media oblivion ASAP.

The real story that interested me was that "Snooki", an "actress" on the [not]Music Television show1 "Jersey Shore" has decided to file a trademark application for her nickname in relation to a book she is planning on writing. This, much "Octomom", is probably also going to make it through the registration process,2 but in that case I would seriously start to doubt the intelligence of the examiner. Nickname trademarks I have always been suspicious of, mostly because of the relative ease with which a person can acquire a nickname, whether or not it's actually worthy of "source-designation." If I had my way, I think that any kind of nickname trademark needs to meet a higher standard than your regular trademarks, something akin to the "famous" marks doctrine under the FTDA or the "well-known marks" doctrine under the various international treaties.

But really, my kvetch biols down to two points. First of all, she can write? Second, stupid. Again, much of my analysis on the "Snooki" nom de stupide3 is similar to my discussion on the Octomom.

1: This is a jab at the once great television network that thinks shows about idiotic partying and Kurt Loder are more important that actual music...deceptive much? But I digress.
2: 15 U .S.C. § 1502(c) (2006). The statute prevents the registration of any trademark that "[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow." Id.
3: Instead of nom de plume.

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

Books Make People All Googly-Eyed

I hope you are all aware of the Google Books project and the subsequent litigation, governmental interference, outcry, lobbying and three four settlement agreement drafts.1 There has been much written and argued about the project and its future.2

What interests me is the U.S. Department of Justice's current complaints about the revised settlement agreement between Google and the authors. The main concerns appear to be orphan works,3 foreign authors, and the creation of a "horizontal agreement" and de facto exclusivity.4 Pardon me, but I believe orphan works are really the Copyright Office's problem,5 and if we can't find these authors, in all fairness they probably should lose out on the right to profit from Google Books. You snooze you lose. Secondly, foreign authors are also not the DOJ's problem either. The settlement agreement as it is written now does provide some protection for foreign authors.6

That leaves me with the antitrust concerns (which I will certainly concede fall within the DOJ's jurisdiction). The thing that bothers me the most is the de facto exclusivity is cited as a problem by the DOJ, but some court7 in Washington, D.C. has said before (and repeatedly I believe) that just because you have a great idea that no one has yet emulated well enough to compete, you're automatically liable for antitrust violations.8 That is actually counter-productive if you're attempting to create an environment that fosters competition.

I can understand what the DOJ is going after, especially with the Obama administration's stance on antitrust issues, but I feel that the DOJ's energies would be better spent breaking up the cable television cartel, the wireless communications cartel, or some of the professional monopolies that currently exist. This looks looks like another example of the establishment unnecessarily fighting progress.

1: See Class Action Complaint, Author's Guild, Inc. v. Google, Inc., Civ. No. 05-CV-8136, 2005 WL 2463899 (S.D.N.Y. Sep. 20, 2005); Settlement Agreement, Author’s Guild, Case No. 05 CV 8136 (S.D.N.Y. Oct. 28,
2008) (proposed), available at http://www.googlebooksettlement.com/intl/en/Settlement-
Agreement.pdf [hereinafter Settlement Agreement]; Memorandum of Law in Opposition to the Settlement Proposal on Behalf of the Federal Republic of Germany, Author's Guild, Inc. v. Google, Inc., Civ. No. 05-CV-8136, 2009 WL 2823706 (S.D.N.Y. Aug. 31, 2009); Statement of Interest of the United States of America Regarding Proposed Class Settlement, Authors Guild. v. Google, No. 05 Civ 8136 (DC), 2009 WL 3045979 (S.D.N.Y. Sept. 18, 2009).
2: For a detailed history of the Google Books Project, see Jonathan Band, The Long & Winding Road to the Google Books Settlement, 9 J. Marsh. Rev. Intell. Prop. L. 227 (2009), available at http://www.jmripl.com.
3: See Report on Orphan Works, Copyright Office, (Jan. 31, 2006), available at http://www.copyright.gov/orphan.
4: Statement of Interest of the United States of America Regarding Proposed Amended Settlement Agreement at 21, Authors Guild. v. Google, No. 05 Civ 8136 (DC) (S.D.N.Y. Feb. 4, 2010).
5: See Report on Orphan Works, supra note 3.
6: See e.g., Settlement Agreement, supra note 1, § 2.1(a)–(b).
7: I would believe it's known typically as the Supreme Court of the United States of America (SCOTUS).
8: Verizon Commc'ns, Inc. v. Law Offices of Curtis V. Trinko, LLP, 540 U.S. 398, 407 (2004) ("It is settled law that this offense requires, in addition to the possession of monopoly power in the relevant market, 'the willful acquisition or maintenance of that power as distinguished from growth or development as a consequence of a superior product, business acumen, or historic accident.'”). Additionally, the fact that Google (or the Authors Guild for that matter) are entering into an exclusive deal and not dealing with other potential competitors (e.g., Microsoft, Amazon) does not create liability either. See Aspen Skiing Co. v. Aspen Highlands Skiing Corp., 472 U.S. 585, 600-01 (1985).

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

Picasso-lypse Now

Recently, a woman fell while at the Met in New York and did a bit of damage to a Picasso painting.1 While the painting will apparently be salvageable, it did make something pop into my head.

Several years ago, Congress enacted the only attempt by the United States to grant any kind of moral rights2 to copyright creators.3 The Visual Artist's Rights Act4 provides a measure of comfort to the "creative types" who are concerned about a buyer "repurposing" or destroying their work.5

Now Picasso has been dead since 1973, so applying the standard "life-plus"6 formula, his works are still technically under copyright (assuming they're validly copyrighted in the U.S.). For that reason, and because a painting is one of the works considered "fine art" under VARA7 and therefore protectable, paintings such as Picasso's would be protected from mutlilation8 (which arguably this woman did when she thoughtlessly fell and mangled the painting).

All that aside (and I don't really think that estate of Picasso is going to or could sue this woman), I find VARA interesting because the United States, aside from this one section of the U.S. Code, does not recognize moral rights, in direct violation of our international obligations.9 I'm all for protected an artist's right and I can't figure out for the life of me why this concept has not established itself more firmly in the United States. May it's our mercenary attitude toward economics and business transactions, that once you've sold your "thing" you can't retain any rights to it. Perhaps we (as a country) don't like artists. They do smell kind of bad (like my cat's breath). For whatever reason, VARA seems to fall short mostly because it is fairly limited in scope.10 It requires the work be "fine art" under section 101,11 and that definition along with the limited application of VARA12 make it essentially a toothless statute.

1: Picasso Painting Ripped by New York Woman's Fall, BBC.com, http://news.bbc.co.uk/2/hi/americas/8478347.stm (last visited Jan. 30, 2010). The tear was approximately 6 inches long to a corner of the painting. Id.
2: See Lee v. A.R.T. Co., 125 F.3d 580, 582 (7th Cir. 1997) (defining moral rights as a way where "artists may block any modification of their works of which they disapprove.").
3: Pub. L. No. 101-650, § 610, 104 Stat. 5128 (1990).
4: 17 U.S.C. § 106A (2006).
5: Id. § 106A(a).
6: See Eldred v. Ashcroft, 537 U.S. 186, 206 (2003).
7: 17 U.S.C. §§ 101, 106A(a).
8: Id. § 106A(a)(2).
9: Berne Convention for the Protection of Literary and Artistic Works, art. 6bis, Sept. 9, 1886, S. Treaty Doc. No. 99-27, 1161 U.N.T.S. 3, available at http://www.wipo.int/export/sites/www/treaties/en/ip/berne/pdf/trtdocs_ wo001.pdf; 17 U.S.C. § 104(b)(1)-(2) (2006) (incorporating by reference international coverage under the Berne Convention subsequent to the United States' November 16, 1988 accession and March 1, 1989 implementation to the treaty).
10: See 17 U.S.C § 106A(c)(3).
11: Id. § 101. The statute states:

A “work of visual art” is--

(1) a painting, drawing, print, or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author, or, in the case of a sculpture, in multiple cast, carved, or fabricated sculptures of 200 or fewer that are consecutively numbered by the author and bear the signature or other identifying mark of the author; or

(2) a still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author.

A work of visual art does not include--

(A)(i) any poster, map, globe, chart, technical drawing, diagram, model, applied art, motion picture or other audiovisual work, book, magazine, newspaper, periodical, data base, electronic information service, electronic publication, or similar publication;

(ii) any merchandising item or advertising, promotional, descriptive, covering, or packaging material or container;

(iii) any portion or part of any item described in clause (i) or (ii);

(B) any work made for hire; or

(C) any work not subject to copyright protection under this title.

12: Id. § 106(c)(3).

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

Maps

So lately, there has been a surge in television advertising by both Verizon Wireless and AT&T (Cingular?) comparing maps about 3G coverage and downloading and phones and Luke Wilson and whatever else they can think of. Honestly, I would just prefer a price war any day over a feature war, but that's the low-budget kind of guy that I am.

Aside from all that, I can't help but notice an immense amount of fine print on these ads. We've discussed false advertising previously and the statute bears repeating really only in a citation.1 The usual stuff, material misprepresentation, blah blah blah.2 And while some would say it's merely puffery3 (I can't help but snicker a bit at the word), part of me also has to bear in mind that if you don't read the fine print (which you can't because it's tiny and on the screen for about .4 seconds) you could easily be misled into thinking either 1) AT&T has no reception or 2) Verizon doesn't let you do anything.

Some of the potential issues are material, especially if you want to buy a phone. Just give me a map of both of them side to side to compare. Problem is, the maps are in all likelihood identical (once you parse down the 3G issue - which I would argue most people either don't need or don't use). After that, it boils down to what phone you want-except the only difference between AT&T and Verizon is the iPhone and the Droid and I would argue people who actively seek those phones out are relatively insensitive to things like "maps," "cost," or "reason."

Can you tell I'm a BB user? Ha.

1: 15 U.S.C. § 1125(a)(1) (2006).
2: Id. § 1125(a)(1)(B).
3: Time Warner Cable v. DIRECTV, Inc., 497 F.3d 144, 159-60 (2d Cir. 2007) ("[P]uffery [is] not actionable under the Lanham Act.").


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

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, http://www.thesouthbutt.com (last visited Dec. 24, 2009).
2: Debra Cassens Weiss, North Face Sues The South Butt for Trademark Infringement, ABA Journal, available at http://www.abajournal.com/weekly/article/the_north_face_sues_the_south_butt_for_trademark_infringement.
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

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

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), http://en.wikipedia.org/wiki/Black_Friday_%28shopping%29 (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, http://www.npr.org/templates/story/story.php?storyId=87937907 (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, http://articles.latimes.com/2009/sep/19/business/fi-yogurt-settlement19 (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