Signing Off (and Turning Over the Keys)

After more than three years of blogging at Pittsburgh Trademark Lawyer, this will be my last post.  I am leaving Elliott & Davis (the firm that has graciously indulged my blogging habit this entire time) to pursue other professional opportunities.

I have enjoyed the last three years, and, as someone who firmly believes in learning through teaching, this blog has been an incredible learning tool.  It’s forced me to stay current on developments in the law and has kept me armed with interesting cocktail-party-type anecdotes (e.g., the legal implications in Mike Tyson’s face tattoo) that have hopefully (at least to some degree) dispelled the notion that lawyers are boring or square.

I want to thank everyone who has read the blog (regularly or casually) of the past three years.  I’m grateful to have developed a steady flow of traffic that I wouldn’t have thought possible back when I was just getting started.

Finally, I’ve made some really good friends in the process.  Special thanks to Jim Singer, Tom Galvani, Ron Coleman, Ryan Gile, and Jack Greiner for their sharing links, thoughts, and experience.

But my departure doesn’t mean the end of Pittsburgh Trademark Lawyer—not in the least.  (Insert appropriate “the end is the beginning” type clichés here.)

I’m happy to announce that Daniel Friedson will be taking the helm in my absence.  Dan will roll out his first post early in the New Year, but I am confident that I’m leaving you in more than capable hands—another Dan, another journalism guy, and (a credential I can’t boast, but is definitely a nice one) a former clinical law professor.    Meet the new Dan, (kinda the) same as the old Dan.

New Tech Blog: Pittsburgh Cyberlaw

Good karma and name-dropping (though not necessarily in that order) will get you everywhere in blogging (and perhaps in life in general).

So it is with much gratitude to the bloggers who gave me that initial street cred every blogger needs in the early days, that I introduce the Pittsburgh Cyberlaw blog (part of my firm, Elliott & Davis, PC’s new Cyberlaw site), that Megan Costello (see introduction below) has recently rolled out.  (It’s a tumblr, which makes it prima facie much cooler than yours truly’s humble blog.)  Welcome to the club, Megan!  Happy blogging!

Hollywood, Piracy, and the Future of Media

Mail?  Yeah, we get mail.

Sometimes it’s spam.  Sometimes it’s someone who wants a trademark talking head (with a face for internet radio).

And sometimes, it’s something pretty cool.  Like this infographic from Peter Kim of Paralegal.net.  In particular, I like the statistics toward the end of the graphic about firms who have embraced new technologies.

Blogging About Clients: What’s a Lawyer to Do?

Jack Greiner shares some nice observations over at Jack Out of the Box about a recent matter involving a Virginia criminal defense attorney who is facing disciplinary actions from the state bar for allegedly posting confidential information about a client.

This is an interesting question, and it’s likely that bars in other states will be watching to see what happens with attorney Horace Hunter’s appeal.  Hunter contends that the names of his clients are not “confidential information” within the meaning of Virginia Rule of Professional Conduct 1.6, and he said that the blog posts with clients’ names are based entirely on open court proceedings and other matters of public record, which he said include clients’ names.

So what’s the takeaway for attorneys?  Regardless of how this plays out, it can never hurt to err on the side of caution and ask permission first.  A lot of clients (especially in IP, nonprofit, and business counseling settings) would be flattered to have you blog about them.  And the ones who wouldn’t be so flattered, I’m sure, would let you know.

A Geeky Brand of Humor

It’s probably fair to say that most people–irrespective of profession– look for humor in their daily routines.  As a trademark attorney, I spend a good bit of time poring over USPTO records, which (as readers of this blog probably already know) can contain quite a bit of humor (whether intentional or unintentional).

The marks themselves are generally the most obvious source of humor, but I sometime get a kick out of design codes (e.g., The iconic MR. PEANUT logo gets the following designation: “Monsters (not robots); Other grotesque including men formed by plants or objects”).

Self-proclaimed BRAND GEEK® Lara Pearson shares some trademark-related humor at her blog by the same name.

 

The Terrible Towel and Naked Licensing

It’s football season once again in Pittsburgh, and on the heels of a much-too-close victory in Indianapolis, I will kick off Steelers blogging season at PTL.  My off-season wasn’t nearly as colorful as the Steelers’ (I didn’t even get an invite to be on Dancing With the Stars, let alone win it— though, in hindsight, it may have had something to do with my lack of star-status and/or dancing skills).

I recently had a great conversation about the trademark rights in the Terrible Towel at breakfast with my former professor, Michael Madison.  He has some excellent analysis over at Madisonian about the possible naked licensing issues involving the Towel.

I’ve blogged on the the Towel in the past, but here’s the quick background for those unfamiliar with the Towel’s origins.

Myron Cope, a Pittsburgh sports announcer known as the “voice of the Pittsburgh Steelers” for many years, is credited with inventing the Terrible Towel.   Cope assigned the Terrible Towel trademark to the Allegheny Valley School (AVS), a Pittsburgh-area institution specializing in intellectual developmental disabilities that has cared for Cope’s son, Danny, who has severe autism.  Proceeds of the Terrible Towel’s sales benefit the School.

I suspect that a lot of non-Pittsburghers reading this post might  not have known that back story, but that virtually everyone reading this post associates that Towel with the Steelers.

And that is precisely the problem here, from a trademark doctrine standpoint.

When consumers associate the mark with the licensee (the Steelers) and not the licensor/owner (AVS), it creates a risk of “naked licensing” and a possible forfeiture of the owner’s rights in the mark.  For a nice general overview of naked licensing in the context of a recent Ninth Circuit decision, check out Jim Singer’s post from last winter.

It’s tempting to simply say “OK, so consumers think the Towel comes from the Steelers and not the AVS– so what?”.  From a practical standpoint, it’s probably not a big deal.  People buy the towels (we’ve got one at my house), they wave them at games, and the school gets money.  Everyone wins.

But this scenario does raise an interesting question about the internal architecture of trademark law– why the statutory language says what it says and what the purpose(s) of trademark law is/are (e.g., protecting investments in marketing, preventing consumer confusion, etc.)

I agree with Professor Madison that one of the fundamental purposes of trademark law is consumer protection.   A quick look at some of the language in two historic trademark decisions provides some support for this position.

From Dawn Donut Company, Inc. v. Hart’s Food Stores, Inc. (1959):

“If the licensor is not compelled to take some reasonable steps to prevent misuses of his trademark in the hands of others the public will be deprived of its most effective protection against misleading uses of a trademark. The public is hardly in a position to uncover deceptive uses of a trademark before they occur and will be at best slow to detect them after they happen. Thus, unless the licensor exercises supervision and control over the operations of its licensees the risk that the public will be unwittingly deceived will be increased and this is precisely what the Act is in part designed to prevent. See Sen. Report No. 1333, 79th Cong., 2d Sess. (1946). Clearly the only effective way to protect the public where a trademark is used by licensees is to place on the licensor the affirmative duty of policing in a reasonable manner the activities of his licensees.”  (Emphasis mine.)

And from Taco Cabana International, Inc. v. Two Pesos, Inc. (1991): 

“The purpose of the quality-control requirement is to prevent the public deception that would ensue from variant quality standards under the same mark or dress. Where the particular circumstances of the licensing arrangement persuade us that the public will not be deceived, we need not elevate form over substance and require the same policing rigor appropriate to more formal licensing and franchising transactions.”  (Emphasis mine.)

It’s hard to imagine a public outcry when Towel wavers “find out” that the Steelers are not the the “real” source of the Towels.  But it is important for trademark owners to exercise care to avoid “naked licensing” when entering into a licensing deal.

Trademark law recognizes the value of providing flexibility for licensees/licensors and relieving them of statutory formalities (where possible), but it must do so while remaining grounded on one of its key commitments — to prevent consumer confusion in the marketplace.

Updated October 5, 2011: 

Considering Bernard Schneider’s comment below and having done a bit more digging into the “naked licensing” doctrine, I think I should try to flesh out my thoughts a bit more here.

The license between AVS and the Steelers for the Terrible Towel is not a “naked license.”

There are a couple of reasons for this.  First, AVS “does controls the nature and quality of goods sold by the Pittsburgh Steelers under its trademarks. [AVS] periodically examines those goods and has the right under its license agreement to demand quality enhancements if necessary (See first comment below).

Second, there’s the “inurement” doctrine.  As Prof. Madison explains in an update to his post:

The Lanham Act provides, in connection with registration, that use of a mark by a “related” company “inures to the benefit” of the mark owner (registrant).  […]  The public policy behind the “inurement” rule closely parallels the public policy behind the “naked licensing” rule:  so long as consumers get a consistent product/service experience associated with the mark, then consumers are not deceived.  The mark is valid; actual ownership of the mark is, for this purpose, not relevant.

[…]

If the AVS and the Steelers have a licensing relationship that in fact grants the AVS the power to monitor and control the quality of goods produced under the TT mark, then the consumer goodwill associated with the TT inures to the benefit of the AVS.

I think these two doctrines (quality control and inurement) square with a consumer-protective theory of trademark law.  If consumers are confused as to the “real” source (i.e., the record owner of a particular trademark), a close relationship between licensor and licensee and the presence of quality-control mechanisms should obviate any theoretical harm to consumers.

Put differently, these doctrines make sure that consumers get what they think they’re getting.

It’s interesting to try to unpack the statutory language of the Lanham Act and try to puzzle out trademark law’s key functions in society.  And I think there’s good evidence to suggest that consumer protection is a big part of it.

But it’s also important for brand owners to have a clear set of rules that allow them to enter into licensing relationships freely in order to capitalize their brands (and, in the case of the Terrible Towel– for an incredibly good purpose).

And as the Steelers wrestle with injury problems as they prepare for this week’s home game against Tennessee, one thing’s for sure.  Come Sunday afternoon, Heinz Field will look a little something like this:

How to Select a Trademark

One of my favorite conversations with clients is the conversation about how they should go about choosing a trademark (which, as most of you reading this blog know, could be many “things” including names, logos, symbols, devices, heck– even blue turf— at least for certain collegiate football teams in Idaho).

It requires creativity– from both a legal perspective and a marketing perspective.  It involves a delicate balance between recognizing your client’s business goals on the one hand and informing them of legal risks on the other.

And Mike Atkins sums it up nicely here.

Artist, Studio Tussle over Tyson’s Tattoo

The Hangover II enjoyed a record-breaking weekend at the box office, but not without a little help from U.S. District Judge Catherine Perry of Missouri.  Last Tuesday, Judge Perry declined to grant an injunction based on alleged copyright infringement, which would have halted the movie’s scheduled release.

The copyright battle started when S. Victor Whitmill, the tattoo artist responsible for Tyson’s famous facial tattoo, filed suit in the U.S. District Court for the Eastern District of Missouri, claiming that the similar-looking tattoo which the Ed Helms character receives in a Bangkok tattoo parlor infringes on his copyright in the design of Tyson’s tattoo.

Here’s a look at the tats at issue:

Substantial Similarity?

This is a fascinating case, and there’s been a lot of great coverage on the blogs.  Check out Matthew David Brozik guestblogging at Likelihood of Confusion here.  Over at Madisonian, Ann Bartow shares interesting observations on Professor Nimmer’s dual role as Warner Bros.’s expert witness and (as we know him best) author of the leading treatise on copyright law.

Lots of questions here.  First, does a tattoo constitute copyrightable subject matter?  There’s dispute over this point (from Prof. Nimmer’s filed declaration with the court):

The tattoo qualifies as an original “work of visual art” that may gain ”recognized stature,” with the result that a court may enjoin its destruction. See 17 U.S.C. § 106A(a)(3)(B). After a court invokes that provision to bar him from removing his tattoo, Mr. Tyson literally may not show his own face to the world; that is, he will be required to keep Mr. Whitmill’s handiwork spread across his face, regardless of his own desires. Copyright law thereby becomes the instrument to impose, almost literally, a badge of involuntary servitude, akin to the mark with which ranchers brand the cattle they own.

Then, if we concede (and the court already has), that a tattoo is copyrightable, what does that right protect?  Can the tattoo artist prevent Tyson from appearing in movies, commercials, etc., or are his claims limited to Helms (and other cases of similar-looking facial tattoos) only?

If the Helms tattoo is an infringement, the question then becomes whether Warner Bros. would be entitled to the affirmative defense of fair use.

And, finally, there’s been a recent claim that Whitmill’s rights in the tattoo may be weak in light of the design’s roots in Maori tradition (via TechDirt):

Professor Ngahuia Te Awekotuku, author of Mau Moko: The World of Maori Tattoo, described Mr Whitmill’s claims of ownership as insufferable arrogance. “It is astounding that a Pakeha tattooist who inscribes an African American’s flesh with what he considers to be a Maori design has the gall to claim that design as his intellectual property,” she said.

“The tattooist has never consulted with Maori, has never had experience of Maori and originally and obviously stole the design that he put on Tyson.

As an attorney, I generally think it’s good that cases settle.  But as a blogger, I’d really love to see this one play itself out a bit.

New-ish Trademark Blog: Trademark Sentinel

San Jose law firm Owens Tarabichi LLP has rolled out a (relatively) new blog: Trademark Sentinel, where they do a nice job of covering some of basics in a client-friendly manner.

Here’s a post that breaks down the key distinctions between patent and trademark protection.  There’s something there for lawyers, too.  Here’s a recent post on the applicability of a registrant’s scope of expansion in ex parte proceedings.

Welcome to the party (such as it is)!

Don’t Be a Jerk

The holiday season is here, and Seattle Trademark Lawyer, Michael Atkins, has some simple, well-phrased, and timely advice for attorneys (and people too!):

Don’t be a jerk.

It’s that simple.

A big part of professionalism is common courtesy.

I’m no expert, but I know being a lawyer is so much more fun and rewarding when the jerk factor’s at a minimum.

Showing respect. Accommodating schedules. Cooperating in discovery. Having a sense of humor.

A side benefit is all this conveys strength. If you’re in the power position, it’s easy to be magnanimous. If the facts or law aren’t on your side, it’s tempting to be shrill. So fake it with kindness and you look like you’re holding the winning hand.

Happy Hanukkah.   Merry Christmas.

Don’t be a jerk.