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.

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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.

SOPA Blackout

Wow.  So you take some time off for the holidays (and then catching up from the holidays) and aren’t IP blogging for a little while and then– all of a sudden– the whole web is talking (or not talking, out of protest) about copyright law.

You didn’t have to venture too far beyond a simple Google search (which we, as a planet, only do a billion or so times a day) to notice something strange was going on today.  Visitors to a laundry list of sites including Google, Wikipedia, and Twitter were greeted by blacked-out logos and missing content in protest of SOPA and PIPA, two IP reform bills currently in Congress.

And, according to the Los Angeles Times, this protest might have already had an impact as three co-sponsors of the SOPA and PIPA antipiracy bills have publicly withdrawn their support for the legislation.  From the Times:

Sen. Marco Rubio (R-Fla.) withdrew as a co-sponsor of the Protect IP Act in the Senate, while Reps. Lee Terry (R-Neb.) and Ben Quayle (R-Ariz.) said they were pulling their names from the companion House bill, the Stop Online Piracy Act. Opponents of the legislation, led by large Internet companies, say its broad definitions could lead to censorship of online content and force some websites to shut down.

In a posting on his Facebook page, Rubio noted that after the Senate Judiciary Committee unanimously passed its bill last year, he has “heard legitimate concerns about the impact the bill could have on access to the Internet and about a potentially unreasonable expansion of the federal government’s power to impact the Internet.”

 

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.

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!

“Los 33” and Copyright Law

File this one under “IP Issues Where You Least Expect Them.”

When 33 Chilean miners were trapped underground, they sent notice of their survival the only way they could. Jose Ojeda marked a ripped piece of paper with the words: “Estamos bien en el refugio los 33” (We are okay in the refuge, the 33) and attached it to a probe sent into the collapsed mine.

The note brought hope to their terrified families and renewed efforts to free the trapped men.  And we all know how the story ends.    What we may not know is that there’s an interesting copyright issue here.

Following the harrowing rescue, the Chilean President presented copies of the note to foreign dignitaries. As part of the seemingly inevitable marketing juggernaut that immediately followed, millions of people around the world have purchased mugs, t-shirts, and keychains with the oft repeated phrase.

Hoping to stop the abuse of Ojeda’s phrase, a famed Chilean writer, Pablo Huneeus, sought an official copyright registration of the piece.

Under United States law, copyright is effective at the moment of creation; however, it is easier to enforce legal rights once an official registration has been granted.

Although the note brought hope to millions, could it be considered copyrightable subject matter for purpose of United States law?

Under Chilean copyright law, protection is offered for “los autores de obras de la inteligencia en los dominios literarios, artísticos y científicos cualquiera que sea su forma de expresión”. (“authors of works of intelligence in the literary, artistic, and scientific dominions, whatever the form of expression may be”)

As both Chile and the United States are signatories to TRIPS, an international trade agreement protecting intellectual property rights, the Chilean copyright is enforceable in the United States. In fact, both countries are required by TRIPS to extend national treatment (where one nation treats a non-native copyright holder as well if not better than national copyright holders) to the copyright holders of fellow Member states.

American copyright law has a heightened standard for copyright requiring both originality and fixation of the work. However, TRIPS incorporates the language of the Berne convention which defines a literary work as “every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression”. This is certainly a “production” in the literary domain being a sentence written upon a piece of paper. Chilean law seems to obliquely reference a creativity or originality requirement through the language of “obras de la inteligencia”, but granting the copyright in this situation seems to undercut that possible reading.

Regardless, the question must be asked – how is a single sentence written with the intent to notify those above that the men below were still alive to be qualified as a creative expression of artistic intent?

Copyright, at least in the United States, is used to incentivize the production of creative works, and cannot be used to establish rights in a commerically-valuable phrase, something that’s a more appropriate task for trademark law.

Finally, thanks to Elliott & Davis law clerk, Kelly Miskowski for digging into some research and helping with Spanish translations for this post!

WHO DAT Redux

The New Orleans Saints may have won their first Super Bowl last month, but the trademark battle over the team’s famed rallying cry “WHO DAT” is far from over.

Those of you who have been following the story here and elsewhere will recall that the NFL made an effort to clarify exactly when fans can use the phrase without the NFL’s permission.

Recently, however, a “new” player has emerged.  On March 4, Who Dat? Inc. (“WDI”) filed a lawsuit against the NFL, the New Orleans Saints, the Louisiana Secretary of State and the State of Louisiana. A copy of the Complaint can be found here.  According to the Complaint, WDI was behind the creation and subsequent promotion of the “WHO DAT” cheer.  “WHO DAT” was born in 1983, and, since that time, WDI has filed a number of trademark applications for the mark when used in connection with a variety of goods, ranging from clothing, to potato chips and soft drinks.  Although WDI cites these marks in its Complaint as evidence of its trademark rights, most of these marks have been abandoned (for a variety of reasons including failure to respond to an Office Action and failure to file a Statement of Use).  For a thorough breakdown of WDI’s filings and more background on the case, check out Ryan Gile’s coverage.

Although this case just got underway, and it’s hard to predict where it will go, it certainly drives home the importance of the source-identifying function of trademarks.  As Ryan Gile notes:

“Just because you come up with a unique phrase does not mean that you have any exclusive rights to the term to the extent you are not actually using it in a manner that would be recognized as a source identifier in connection with particular goods and services.”

So what’s the takeaway for someone who just came up with a unique phrase?  There are two basic things to consider here.  First, and most obviously, you want to make sure that the mark you’ve created is being used as a trademark, and that it’s distinctive.  Generally, “arbitrary” or “fanciful” marks such as APPLE (when used for computers) or XEROX (a made up word) are stronger trademarks.  Weaker, less distinctive marks would be ones that contain the words describing the goods or services being sold (e.g., LAWN CARE EXPERTS, used for lawn care services). Second, you want to make sure your mark identifies you as the only source of the goods/services you sell.  This is where knockoffs come into play.  And if you come up with a cool phrase that gains popularity the way “WHO DAT” has, this becomes a particular challenge.  Unlike copyright, where you can receive protection simply by virtue of being the first in line to do something cool, trademark only protects you if the word or phrase you’re using indicates to consumers that you are the source of the goods/services on which the mark appears.

The First Couple, Coats, and the Right of Publicity

The White House is currently handling two separate disputes related to unauthorized use of images of President Barack Obama and first lady Michelle Obama.  Oddly enough, both matters relate to the first couple’s preferences for outerwear.

For the President, it was his decision to wear what was apparently a coat made by the Weatherproof Garment Company when visiting the Great Wall of China that led to the current controversy surrounding the unauthorized use of his likeness on a billboard in Times Square.

For the first lady, it was her decision not to wear fur coats that led to PETA’s unauthorized use of her likeness as part of its anti-fur campaign.

The ultimate issue legally in both cases is whether an “endorsement” has taken place.

Weatherproof could argue that the use of Mr. Obama’s image (which was licensed by the Associated Press) is merely a factual depiction, and that nowhere on the ad does it explicitly say he has endorsed it.  PETA could similarly argue that its use of Mrs. Obama’s image along with the words “Fur-Free and Fabulous!” is merely a statement of fact, namely that the first lady does not wear fur.

Both arguments are likely fairly weak, as the White House could just as well argue that, in both instances, the parties’ respective uses create an implicit endorsement.

Right of publicity cases generally involve commercial celebrities (athletes, entertainers, etc.) who frequently license their likenesses for profit.  The Obama cases are interesting because they raise these issues in a context (presidential politics) where they generally don’t arise as often.

For advertisers and businesses, the takeaway here is kind of a no-brainer: don’t use images of well-known politicians without their permission– especially in a manner that is likely to suggest sponsorship or approval.

More Fun with the Trademark Parody Doctrine

With the recent North Face litigation involving the spoof clothing brand “South Butt,” there’s been something of a buzz lately about trademark parody.

Michael Atkins, at Seattle Trademark Lawyer, recently wrote on (and was quoted by the Associated Press regarding) Christian-themed trademark “parodies.”  These alleged parodies generally consist of a Christian-themed message displayed in the look and feel of a famous brand such as Starbucks or Abercrombie & Fitch.  Arkansas-based company Kerusso, one of the nation’s largest Christian-themed apparel companies, is behind a good number of the designs.

Here’s an example:

So, the question is simple.  Is this a parody?  If it is, it constitutes free speech protected by the First Amendment, and brand owners would have difficulty prevailing on claims for trademark infringment or dilution.  On the other hand, if it is not a parody, the brand owners have stronger claims for infringement and dilution.

As Michael Atkins has noted before, the question, in large part, turns on whether the shirts (and other merchandise) here are parodying the brands themselves, or whether the connection to the brand is tenuous and the alleged parody is more or less an instance of one company trading on the goodwill of another company.

Parody or not, we might not see a lot of litigation arise over merchandise such as this, simply for PR reasons: brand owners don’t want to alienate their Christian client bases.  This may be the best approach for some brand owners.  If you recall the recent détente between Mattel and the band Aqua over the “Barbie Girl” song, we saw how Mattel changed its tune from bully to collaborator– and likely saw increased profits as a result.  Brand owners obvisouly don’t want to go too far in consenting to third party uses of their trademarks and copyrights.  But a “pick your battles” approach to policing IP rights might offer a nice way forward for companies that want to strike a balance between IP protection and public image.

Marley and Me

It’s nearly impossible to walk across a college campus without Bob Marley’s face popping up somewhere.  It may be on a t-shirt or perhaps hanging on a dormitory wall.  Sometimes it’s in black and white, other times it’s emblazoned with the Rastafarian colors of green, yellow, and red.

Regardless of how it appears, it’s nearly ubiquitious at this point, and the Marley family is now taking action in recognition of the value behind the Bob Marley “brand.”  According to an article in the Guardian, the Marley family has has hired a Canadian private equity firm, Hilco Consumer Capital, to protect its rights to the brand.

So how much is the Bob Marley brand worth? According to the article, “[t]he Marley name, look and sound are estimated to generate about $600m a year in sales of unlicensed wares. Legal sales are much smaller – just $4m in 2007, according to Forbes magazine.” Hilco CEO Jamie Salter estimates that in a few years, Bob Marley products could bring in as much as $1bn, according to an Associated Press story.

Speaking of dormitory posters and t-shirts worn on college campuses, any idea what this guy is worth?

Believe it or not, the Che Guevara image that appears on posters, t-shirts, and other assorted merchandise has actually been the subject of a number of lawsuits.  Cuban photographer Alberto Korda began asserting his rights to the image after Cuba ratified the Berne Convention on international copyright.

According to a story in the Australian, “[t]he new rules gave Korda a landmark legal victory in 2001 against the Lowe Lintas advertising agency, which had used his Che image in an ad for Smirnoff vodka. The Castro loyalist announced he’d donate his $US70,000 winnings to a children’s hospital in Havana.”

Korda died shortly after this suit, leaving his daughter, Diana Diaz, the exclusive rights to the image.  Ms. Diaz, for her part, has been fairly aggressive in protecting the image, having filed suit against Swiss t-shirt makers, Mexican burger chains, and French perfume makers, among others.

Intellectual property rights in celebrity images still occupy a strange netherworld between copyright and trademark.  Both forms of protection have their advantages and disadvantages.  If you’re lucky enough to be famous yourself or to at least have clients who are famous, the Marley family’s recent move highlights some of the potential value that underlies a famous icon such as Bob Marley.

And, in keeping with Bob Marley’s ethos, it’s not all about the money.  According to the Associated Press story, the Marley family “says it cares less about moving merchandise than about preserving the patriarch’s legacy in such efforts as the Marley organic coffee farm,” which promotes organic and sustainable practices and donates an undisclosed portion of proceeds to youth soccer programs in Jamaica.