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.

Pumped Up Kicks

I’ve always been fascinated by the outer reaches of trademark protection.  These examples of weird things (e.g., Boise State’s blue turf, or the sound of MGM’s roaring lion) make great anecdotes in social settings, and I like using these examples to get clients to think creatively about their branding strategies and what trademark law can protect.

Erik Pelton’s IPelton® blog has a nice post on one example of non-traditional trademarks: shoe designs.

A picture is worth many, many lawyerly words - "Description of Mark: The mark consists of a stylized checkerboard design positioned around the sidewall on the sole of a shoe. The design of a shoe represented by dotted lines is not part of the mark and only serves to show placement of the mark on the goods."

Under the Lanham Act, a  trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods.  See 15 U.S.C. § 1127.

In a lot of ways, the sky’s the limit in terms of the subject matter that can serve as a trademark.  It all comes down to whether something serves as an indicator of source.  You see blue turf, you think of Boise State football.  You see a robin’s egg blue jewelry box, you think of?

In the case of footwear, there are a lot of ways for brands to signal the uniqueness of their product, and for consumers, in turn, to signal their brand loyalty.  But when product designs carry as much (sometimes more) cache than the brand name on the tag or box, there is an increasing risk of copycat designs and, thus, litigation.  See Christian Louboutin’s woes over red bottom heels and Adidas and Wal-Mart’s dispute over three-stripe designs as examples of how these disputes can play out.

Which is why, for brand owners large and small, it’s important (1) to think creatively about how to expand the scope of their trademarks and (2) to secure the proper protection for these design (or other) marks through trademark registration.

Trademarks on the Green: An Update from Bankruptcy Court

Here’s an update from an earlier post regarding the trademark dispute that is at the core of the ongoing bankruptcy proceeding involving New York City’s once-famed, now-shuttered restaurant, the “Tavern on the Green.”

From Reuters:

“New York City’s claim to the name of the landmark Central Park restaurant Tavern on the Green has caused crippling delays and left some creditors with little chance of getting their money, the bankrupt restaurant’s unsecured creditors committee said.”  […]

‘The city’s conduct not only has adversely affected the value of the debtors’ assets, but has also burdened the debtors’ estates with considerable professional fees and expenses, which in tandem have sounded the death knell for any prospect of meaningful recoveries to unsecured creditors,’ said the official committee of unsecured creditors in court documents dated Monday.

New York City claims it owns the valuable Tavern on the Green trademark. Without the name and the prestige it conveys, the property is languishing, with its future in doubt, the committee said.

Judge Miriam Goldman Cedarbaum at the U.S. District Court for the Southern District of New York has yet to rule on the dispute over the ownership of the name and other intellectual property.”

I’m not a bankruptcy attorney, and I’ve never even played one on T.V., for that matter.  But I can say this: the very fact that the trademark issue is a point of contention that’s raising unique issues in this bankruptcy proceeding underlies just how valuable intellectual property– including trademarks and branding rights– is to business today.  So for now, the Tavern is still closed, but some were able to find a silver lining.  I mean, where else can you get a stained-glass peacock for $75,000?

The Property Rights Debate Behind the Pittsburgh Parking Chair

In Pittsburgh (and in Baltimore, and Philadelphia, and Boston, just to name a few), it works something like this.  First, you spend the an hour or so shoveling the freshly fallen snow (if you’re lucky) or the hardened, impossibly heavy slush (if you’re not so lucky) to carve out a parking space for your car.  Then, when you need to leave the spot, you take an item– perhaps a chair, but trashcans, traffic cones (I’m still puzzled as to how so many of my neighbors just have these lying around at their homes), and even ladders will suffice– to place in the spot as a way of claiming it while you are away.  When you return, your spot is (generally) still there.

This logo (via wearpittsburgh) captures the sentiment nicely, and in a tasteful black and gold, might I add.

How and why, exactly, does it work this way?  You don’t have to be a lawyer or a property law scholar to know that a street parking space is public property and cannot be converted into private property through the strategic placement of a lawn chair.  But, legal niceties notwithstanding, the custom of recognizing “claimed” parking spots is alive in well in a number of Northeastern cities.  There’s even a Wikipedia entry on the “Parking Chair.”

But there’s debate to be had.  Prof. Michael Madison has a nice summation of both sides of the debate (“pro-chair” and “anti-chair“).  The pro-chair argument basically tracks the argument for the traditional labor theory of value, famously articulated by John Locke.  This argument says “I shoveled the spot; now it’s mine.”  Adding to that argument, you could argue that without the resulting property right people wouldn’t have an incentive to shovel out parking spaces.  The anti-chair argument basically says that people are going to shovel out parking spots no matter what, so there is no need to provide an incentive to do so.  Prof. Madison focuses on the nasty self-help remedies (e.g., keying someone’s car or heaping snow on top of it when they “steal” a parking spot that was previously claimed) as one factor that favors the anti-chair camp.

So who’s right?  Boston has attempted a compromise somewhere in the middle, which I think makes sense, at least in theory.  The rule in Boston is that you can keep a spot once you shovel it out and mark it, but you only get to keep it for 48 hours.  The Boston Rule agrees with the pro-chair camp’s basic point– people won’t shovel out spots (or at least as thoroughly) if you don’t give them some sort of expectation that the spot will be there when they come back.  But the Boston Rule (again, at least in theory, because no one in Boston seems to be following it, according to the article) also recognizes that, unless people have to give up their spaces at some point, the city will remain filled with mounds of snow where decent parking spots used to exist.  This is a great argument from an economic efficiency standpoint– and it’s probably the best argument for the anti-chair camp.

In any event, the parable of the parking chair offers a couple of important lessons.  First, property rights matter.  No matter how you shape them in terms of breadth and scope, property rights at some basic level are essential to getting things done, be it the creation of a parking space or the development of intellectual property.  Second, custom is sometimes more powerful than law.  Many of us will take a calculated risk when the risk that’s being taken is only a parking ticket.  But how many of us in, in Pittsburgh or in Boston, really want to take the risk of moving some guy’s carefully-placed lawn chair?

Is the NFL More Than Just a Sum of Its Parts?

With the Super Bowl only days away, we have, for the forty-fourth time (or the fortieth, if you’re focusing on the AFL-NFL merger), two teams pitted against each other… in an epic battle… where on any given Sunday… (you probably can fill in the rest in your favorite sportscaster’s voice).

This year, the New Orleans Saints and the Indianapolis Colts will battle each other in Miami for the Lombari Trophy.  But, recently, the question has arisen as to just how independent from one another NFL teams actually are.

This week’s Economist offers a great (and brief) treatment of the subject and poses the question “Is the NFL more than the sum of its parts?”

This question is based on the fact that the NFL consists of 32 separate entities that come together under the mantle of the National Football League.  And the NFL, like other American sports, has benefited from certain exemptions from antitrust law.

Antitrust law, among other things, prevents competitors in the marketplace from coming together or otherwise conspiring to restrain trade or prevent competition.  To put it in concrete terms, this means Ford and GM can’t get together and secretly plot as to how to put Toyota out of business.

Professional sports, the NFL included, are allowed to bypass the normal antitrust laws, in large part, because they need to in order to have a “product” for consumers.  Imagine an NFL without a set 16-week schedule, a playoff scheme, let alone a basic agreement as to the rules of the game.

But this antitrust exemption is up for review.  As the Economist reports:

For decades this practice went unchallenged. But in 2000 the National Football League (NFL) agreed to make Reebok the exclusive producer of its team-branded clothing, cutting out all other firms from the business. As any Economist reader would have been able to predict, the price of caps promptly rose, by 50%, while team jerseys began selling for 40% more. In response, American Needle, a hat-manufacturer that previously drew a quarter of its sales from NFL caps, filed an antitrust suit.

The league claimed that it was immune from antitrust scrutiny because, even though it consisted of 32 clubs, it acted as a “single entity”, which could not conspire with itself. This assertion had been rejected in many other courts. But the court of appeals for the seventh circuit accepted it and found for the NFL.

American Needle appealed to the Supreme Court. In a rare move, the NFL also asked for a review, even though it had won, hoping that the highest court might grant it an even more favourable ruling. Whereas the appeals court had held that the NFL could be considered a single entity only in the context of licensing, the league is asking the Supreme Court to grant that status to all aspects of its business.

It will certainly be interesting to see what happens to the NFL’s antitrust exemption here.  In the meantime, we have more important things to worry about.  And, as much as the partisan Steelers fan in me would like to pretend, it’s not so much the Pro Bowl as it is a certain game between a team from Indianapolis and a team from New Orleans.