Tale of a Trench-Coat

Luxury retailer Burberry has made excellent use of Facebook’s Timeline feature, using the tool to showcase advertisements and other photographs showing their products over the years.  (If you scan down to the 1910s, you can check out some Burberry-brand aviator suits which I’m pretty sure would be tough to track down today.)  This all sounds well and good, but this is a law blog and not a paid endorsement for Burberry, so you know there’s conflict ahead.

When Bogart, LLC, the company that manages Humphrey Bogart’s celebrity rights, got wind of the fact that Burberry had included a photograph of Bogart wearing a Burberry trench in the film Casablanca they threatened Burberry, claiming violation of right of publicity as well as trademark infringement and unfair competition. Burberry fired back, requesting declaratory judgment of non-infringement.

So who’s correct here?  It’s first important to note that copyright and ownership in the photo itself is not an issue here– Burberry had obtained a proper license to use the photo.  With copyright off the table, the question then becomes whether Burberry’s use of the photo constituted a trademark infringement or, failing that, a violation of Bogart’s right of publicity.

Burberry should have a fairly good argument as to the trademark issue.  It’s not as though they’ve launched a retail campaign with advertisements, signage, and other media that trades on the image.  The use in the Facebook Timeline, they’d argue, when taken in context, is one of many factual statements the company is making about its history.

When it comes to the right of publicity claim, things are less clear.  As the Bose Media Law Blog explains nicely, when it comes to these claims, it’s good to be in California.

Looking past the legal analysis under these doctrines, this case raises much larger questions that brand owners, marketing professionals, and lawyers will want to watch closely.  Depending on how this case proceeds, the court may address important issues regarding social media, advertising, and free speech.

Right now, the lines are a bit blurry (which could help or hurt Burberry here).  It’s clear that Burberry enjoys some commercial advantage by being on Facebook (oh, and it probably doesn’t hurt to have 12 million fans).  But does that mean that all of the company’s activities on Facebook are strictly commercial and not legitimate instances of story-telling or commentary (thus entitled to First Amendment protection)?

Courts are going to face more and more difficult determinations such as this one and must be careful to craft rules that provide clarity, fairness, and workability to all parties involved.  There’s no question that the law should recognize and protect the rights of celebrities as relates to unwelcome endorsements or false sponsorship, but the law should be careful, too, to leave room for story-telling.

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.

Abercrombie & Fitch Offers Jersey Shore’s “The Situation” Money to Stop Wearing Their Clothes

Whether you’re an actor, an athlete, or a musician, one of the big signs that you’ve “made it” is when clothing companies start asking you to don their apparel publicly.

But what happens when a company approaches you asking you to stop wearing their clothes?  Mike Sorrentino (no stranger to this blog and best known to us a “The Situation”) found that out recently when Abercrombie & Fitch (A&F) offered to pay Sorrentino to stop wearing the company’s clothes publicly.   An A&F spokesperson issued the following statement:

“We understand that the show is for entertainment purposes, but believe this association is contrary to the aspirational nature of our brand, and may be distressing to many of our fans.”

In flagrante delicto

El Sitcherino has, for his part, responded— and by what other means than Twitter, and A&F is now characterizing its offer as a PR Move.

Whether it’s a good PR move or a bad one is up for debate.   (For what it’s worth, A&F’s stock price took 10% dip yesterday, though that may have been caused more so by the company’s recent earnings report.)

This situation (the PR one, not the abdominal one) raises an interesting question about companies seeking to police the quality of their brand.  Trademark law recognizes this concept in a legal doctrine known as “dilution by tarnishment,” which basically involves an unauthorized use of a someone’s trademark that either creates a link between that mark and products/services that are low quality, or portrays that mark in an unwholesome or unsavory context.  Legally speaking, A&F’s possible claims for dilution here are pretty weak.  However, a contract’s a contract, and A&F and Sorrentino are free agree on any terms they want.

While A&F might be worried about Jersey Shore and its characters’ antics (personally I find them entertaining– somewhere right in that sweet spot between contemporary morality play and train wreck), the company may have acquiesced to the dilution of its “aspirational” brand back in 1999 when a band called LFO released their song “Summer Girls.”   (Out of mercy, I opted not to include the video in this post or link to it. )

Interestingly, A&F isn’t the only company trying to distance itself from what it sees as undesirable consumers.  The marketing bloggers over at Cream have some excellent thoughts on this story as it relates to the recent rioting in England and its implications for Research in Motion (RIM), the makers of Blackberry phones that figured into the organization of the riots.

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.

Chris Bosh Sues Producer of “Basketball Wives”

Post-relationship drama takes many forms, but federal court litigation under the Lanham Act isn’t typically one of them– unless you’re Miami Heat forward Chris Bosh.  Bosh recently filed suit against the producer of VH1’s “Basketball Wives,” which, as Bosh correctly notes, comprises about as many ex-wives and/or girlfriends as it does “basketball wives” in the term’s purest sense.

At any rate, Bosh is claiming that his ex-girlfriend and the mother of his child is violating his trademark, publicity, and “life rights” by using his name/likeness in connection with the show.  The lawsuit claims that  “[the show] provides these women with a vehicle and worldwide platform” to use the names of players without permission for commercial gain.”

To make out a publicity rights claim under the common law, a plaintiff must plead and prove that a defendant “(1) used plaintiff’s identity; (2) appropriated plaintiff’s name and likeness to defendant’s advantage, commercial or otherwise; (3) lack of consent; and (4) resulting injury.” Eastwood v. Super. Ct., 149 Cal. App. 3d 409, 417 (1983).

To establish the statutory cause of action in California, the plaintiff must also show knowing use of the plaintiff’s name, photograph or likeness for commercial purposes, and a direct connection between the use and the commercial purpose. Id. at 417-18; see also Michaels v. Internet Entmt. Group, Inc., 5 F. Supp.2d 823, 837 (C.D. Cal. 1998).

Although there are some credible defenses here (the weakness of Bosh’s trademark rights in his name; First Amendment; and de minimis use), this case most likely will settle out of court.

In the meantime, despite his pleadings in court, Bosh probably isn’t losing too much sleep over Shaunie O’Neal.  I’d imagine, for the time being, that distinction belongs to Kevin Garnett et al.

Charlie Sheen’s 22 Pending Trademark Applications? DUH, WINNING™!

USPTO records show that Hyro-gliff, a California-based company, filed trademark applications between March 19 and 22, seeking protection for a number of phrases from Charlie Sheen’s unique (and now ubiquitous) lexicon.  The proposed marks include: “Duh, Winning,” “Vatican Assassin,” “Tiger Blood,” “Rock Star From Mars,” and “Violent Torpedo of Truth.”

But, as most of us know, a trademark doesn’t give someone blanket rights or “ownership” of a particular word or phrase. Trademark rights only exist where a word or phrase indicates the source of goods and/or services.

So what are the proposed goods and services here?  Here’s a sampling from the application for “DUH, WINNING”:

[…] PRERECORDED DISCS, TAPES AND DOWNLOADABLE AUDIOVISUAL MEDIA FEATURING SPOKEN WORD, SPORTS, MUSICAL, COMEDY, DRAMATIC AND THEATRICAL PERFORMANCES, COMEDY […] ENTERTAINMENT SERVICES; […] BAGS AND BAGGAGE, LUGGAGE, BACKPACKS, PURSES, WALLETS, SHOULDER BAGS, KNAPSACKS, HANDBAGS, COMPUTER CASES, CARRYING CASES AND ACCESSORIES FOR PORTABLE ELECTRONIC DEVICES INCLUDING FOR MOBILE TELEPHONES;  […] HOLIDAY AND CHRISTMAS TREE ORNAMENTS; […] ; SHOES AND BOOTS; PET APPAREL; GLASSWARE, DISHES, PLATES, CUPS, MUGS, SHOT GLASSES; FRAGRANCES, SOAPS, ESSENTIAL OILS, COSMETICS, BODY AND HAIR LOTIONS AND OILS, BATH GEL, NON-MEDICATED HAIR, SKIN AND NAIL PREPARATIONS, SHAMPOOS; MUSICAL INSTRUMENTS AND CASES THEREFOR; […] RAW AND PREPARED FOODS; PET FOODS; PREPARED FOODS; CANDY; ALCOHOLIC AND NON-ALCOHOLIC BEVERAGES, VITAMIN DRINKS, FRUIT DRINKS, ENERGY DRINKS; DRINKING WATER; HOSPITALITY SERVICES; HOTEL SERVICES, TRAVEL AGENCY, TRAVEL PLANNING AND TRAVEL- AND ENTERTAINMENT-RECOMMENDATION SERVICES; BAR AND RESTAURANT SERVICES

I’ve pared down the description of goods/services significantly.  And, based on the above laundry list, you may be asking the question: where are DUH, WINNING™ branded travel agencies and prepared foods?  Have they not made it to my city yet?

Hyro-gliff filed this application under Section 1(b), meaning that they are not currently using the mark in commerce but they have a bona fide intent to do so in the future.

So we’ll have to wait and see whether someone releases a bath oil called VATICAN ASSASSIN™ or drinking water under the TIGER’S BLOOD™ name.  In the meantime, I think Sheen’s clearest trademark rights exist in Class 041 for: “Entertainment Services, namely [specify nature of services].”

But that still begs the question: what, exactly, is Sheen doing?

Gilbert Gottfried, Aflac’s Muted Spokesduck, and the Right of Publicity

Insurance giant Aflac recently parted ways with celebrity voice actor Gilbert Gottfried after he comments he made about the Japan crisis.  Gottfriend had long provided the shrill but persistent voice of the Aflac duck.

So with a muted spokesduck, what does Aflac do next?

From Tom Galvani:

It is highly unlikely that the split with Gottfried left the permissible use of the mark in question.  DuetsBlogs just has to be right about that: a company with that level of business acumen likely had many strategies thought out in advance.  Aflac is clearly the registered owner and likely has the right to use the mark.  It is extremely doubtful that Gottfried contracted with Aflac to remove their ability to use his voice after his engagement ended.  Nevertheless, who knows what goes behind closed doors and contracts.

I agree with Tom’s gut reaction– it is unlikely that Gottfried has any contractual rights that he can assert against Aflac for use of his voice, given that his employment is terminated.  But what about IP rights?  What, if any, right of publicity claims would Gottfried have in the absence of his contractual rights (assuming, for sake of the argument, that Aflac wanted to use his voice)?

Tom Waits successfully asserted publicity rights in his voice, even when it wasn’t actually his voice being used.

So what rights does Gottfried have here?  Obviously, he has rights in his own voice.  But what about the Aflac spokesduck character?  Clearly, there is a registration that covers the duck as a design mark, but that most likely doesn’t cover the character as a whole.  For example, let’s say the spokesduck appears in a movie.  Alfac would have a decent case for dilution, but what about Gottfried?  Has he created any publicity rights in the spokesduck character that extend beyond his voice?

These are very hypothetical questions, and this issue should quickly be disposed of by Aflac’s PR/Marketing types.  I will say one thing, however, if I write “spokesduck” one more time, I’m afraid I might start to develop anatidaephobia.

Girl Talk and Copyright Law: Is “Illegal Art” Really Illegal?

As you may have heard by now, Pittsburgh-based artist (let’s not call him a DJ), recently released another album.  The new album, “All Day” was released online for free download on his label, Illegal Art’s website.

Girl Talk is unlike most musical artists.  Rather than creating music using instruments/vocals/digital effects like most artists, Girl Talk (whose real name is Gregg Gillis) creates music almost entirely from snippets of other artists’ music.  He has gained popularity for his unique ability to take seemingly disparate pieces of music (say, Notorious B.I.G. and Elton John, for example) and combining them in a way that’s clever, interesting, listenable, and–you had to see this coming– danceable.

You don’t have to be a copyright lawyer to realize that Gillis’s project might raise some legal concerns.  Each album contains samples from hundreds of copyrighted songs.  For instance, “All Day” clocks in at 372. (It’s actually pretty fun to listen to a Girl Talk album and then compare notes with the Wikipedia entry for that album.  Sort of like “Name That Tune”: Hipster Edition.)

In any event, the more albums Girl Talk puts out, the longer the list of potential plaintiffs becomes.  So the question has to be raised: why hasn’t anyone sued him yet?

Each time Gillis uses another artist’s song without their permission, that use would constitute copyright infringement.   If Gillis were sued for infringement, he would most likely argue that his use of their work constitutes a “fair use” and is thus not infringing.   In Gillis’s case, the fair use question would come down to whether his use was considered “transformative.”  Intelligent minds are in disagreement as to whether or not Gillis would prevail in making a fair use defense.  And this debate has been going on for a while now: during law school, I advised another member of my journal on his student note, which dealt with this question.

However, maybe the real reason why Girl Talk hasn’t yet been sued depends less on the legal strength of his defense and more on the PR considerations involved (namely, that he’d have legal experts and public support at his side right from the start).  As Joe Mullin at paidContent.org points out:

So why hasn’t Gillis been hauled in front of a judge by the music industry? Probably because he’s the most unappealing defendant imaginable. Gillis would be a ready-made hero for copyright reformers; if he were sued, he’d have some of the best copyright lawyers in the country knocking on his door asking to take his case for free.

At the Electronic Frontier Foundation, probably the most well-funded public interest group working in the copyright space, lawyers have made it clear for years that they’re positively eager to litigate a case over music sampling, which they believe is a clear-cut case of fair use.

Then there’s the PR issue. Gillis is a popular artist who was even praised on the floor of Congress by his local representative, Pittsburgh Democrat Mike Doyle, who called Gillis a “local guy done good;” Doyle also suggested that mash-ups might be a “transformative new art that expands the consumers experience.”

For now, though, it seems as though Girl Talk can breathe easy and keep doing what he does best.  Enjoy!

Insurance as Trademark: Polamalu Insures Hair to Tune of $1M

As the Pittsburgh Steelers gear up for their season opener against the Atlanta Falcons later this week, they’ll have some added protection.  No, I’m not talking about the offensive line (although it’s looking strong, based on preseason performance).  I’m talking about the $1 million insurance policy from Llyod’s of London that now covers strong safety Troy Polamalu’s hair.

If you’ve seen Polamalu play, you can’t help but notice the unruly mane protruding from his helmet.  Polamalu is of Samoan ancestry, and as a tribute to his heritage hasn’t cut his hair since 2000.

Although there is no doubt a functional aspect to the insurance policy (the policy applies to on-field damage to Polamalu’s hair and would protect Polamalu in situations such as a 2006 incident in which Kansas City Chiefs running back Larry Johnson grabbed Polamalu’s hair in order to bring him down after an interception), I tend to see this as a branding move.

We have seen celebrity insurance policies before (See, e.g., Heidi Klum’s legs, Jennifer Lopez’s hindquarters, and Rod Stewart’s voice).   At the simplest level, these celebrity insurance policies are fairly straightforward: they hedge against risk by protecting something of value under certain circumstances.

But, in a way, these policies serve more than just an insurance function– they serve a trademark function as well.  Any trademark lawyer can tell you that distinctiveness and source indication are both prerequisites when it comes to trademarks.  These policies serve a trademark function by reminding consumers of a celebrity’s unique features and help establish that celebrity’s “brand.”

The Latest on the “THE SITUATION” Situation at the USPTO

In December 2009, two separate trademark applications were filed with the United States Patent and Trademark Office (USPTO) for the proposed mark “THE SITUATION.”

Who (or what) is “The Situation,” you ask?  For those of you who are not familiar with the cultural gem (or train-wreck, depending on one’s perspective), that is MTV’s reality show the “Jersey Shore,” The Situation” is the self-applied nickname of Michael Sorrentino, one of the show’s characters.

Interestingly, neither trademark application was filed by “The Situation” himself.   One application was filed by a company owned by “The Situation’s” brother, Marc Sorrentino, and another was filed byVadio, LLC and Matthew Hunter.  Both applications are being made in connection with various clothing items, including underewear.

The Smoking Gun tells the story in delightfully snarky detail:

For the first time in the republic’s history, government officials are being asked to grant a trademark for the nickname a man has given to his abdominal muscles, records show. The U.S. Patent and Trademark Office (USPTO) has received two applications to secure a mark for “The Situation,” a term recently popularized by “Jersey Shore,” the crass MTV reality show. One of the program’s characters is Michael Sorrentino, a 28-year-old New Jersey man who has christened his ripped abs “The Situation.” The gym habitue is known for exhortations like, “This situation is gonna be indescribable. You can’t even describe the situation that you’re about to get into the situation.”