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.

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?

Comic Book Legend, Plastic Toys Square Off in Dispute over “Super Seven”

At San Diego Comic-Con, comic book legend Stan Lee announced his newest foray into superhero lore: himself.

Lee unveiled his newest project titled “Super Seven” which stars Stan Lee himself as the octogenarian protagonist struggling with writer’s block. After running into a cadre of aliens in the desert (naturally), he assigns them each tasks. Thus, a meta comic book was born.

However, Super 7, a toy manufacturer is having none of it. Super 7 has sent Lee and his company letters detailing their intent to file suit should the project move forward with its proposed name. The announcement at Comic-Con was apparently the last straw as Super 7 filed suit against Lee, POW! Entertainment, A Squared Entertainment, and various other entities alleging trademark infringement and unfair competition.

According to the complaint, Super 7 alleges that both companies intend to use the respective marks Super 7 and “Stan Lee and the Super Seven” for wide-scale media, marketing, and product development. Due to the alleged similarity of the marks and field of use, they request a variety of forms of relief including both an injunction and an award for treble damages.

Trademark issues aside, the real question to be posed here is: Who really wants to read a comic book starring Stan Lee?

Are All the Good Band Names Already Taken?

John Paul Jones seems to think so.  The former Led Zeppelin bassist recently told the Wall Street Journal about the challenges he faced in coming up with a name for his new band.

“Every other name is taken,” said Jones.  “Think of a great band name and Google it, and you’ll find a French-Canadian jam band with a MySpace page.

Trademark rights are pretty much worthless if they can’t be used to prevent others from using a the same name, or even a confusingly similar name.   And given that trademark rights are generally established by being the first to use a name in commerce, the quest for the perfect band name takes on certain aspects of a footrace.  (I mean, once someone stakes their claim on “Someone Still Loves You Boris Yeltsin,” aspiring rock bands can just pack it in and starting thinking of other world leaders to whimsically evoke.)

So why is this a hot issue all of a sudden?  Apart from the obvious mathematical law that states that, as time proceeds, the number of available band names inevitably approaches zero, there is a more interesting and relevant issue that’s in play: technology.

I couldn’t put in any better than the Wall Street Journal does:

“The last decade’s digital revolution not only transformed the way people listen to music, it changed the way bands establish identities. In the past, identically named acts often carved out livings in separate regions, oblivious or indifferent to one another. Now, it takes only moments for a musician to create an online profile and upload songs, which can potentially reach listeners around the world.”

So what’s an up-and-coming band in search of a good name left to do?  Two things.

First, be creative.  You’re in a band, after all; so this should be the easy part.

Second, be careful.  In the present marketplace, with Rovi Corp., the owner of a large artist name database reporting a total inventory of 1.4 million artist names, I can’t stress enough the importance of clearing your rights to a name.

Finally, if you’re in the mood for a laugh and/or procrastination device, check out the “Most Annoying Indie Rock Band Name Generator.”  (I clicked until I stumbled upon my favorite: “Jimmy Hoffa Community College.”)