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.”

 

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.

OCCUPY WALL ST.™

In this line of work, sometimes nothing surprises you:

From the New York Daily News, a Long Island, N.Y. couple has recently applied for a trademark registration for (you guessed it) “OCCUPY WALL ST.”  The application was filed on October 18 as an intent-to-use (ITU) application, listing a variety of products including clothing, bags, and bumper stickers.

Depending on your outlook on things, it’s temping to be cynical (perhaps even from both “sides” of the aisle) at first, and I’ll admit that was my first reaction.  Moving beyond that reaction, though, I think that both the protesters and their critics can (at lease hopefully) agree that small business and entrepreneurship are vital to our economy.  And Robert Maresca (who appears to have filed under his wife’s name) is certainly an entrepreneur.

But I think there’s even more going on here.  Take a look at what Mr.Maresca, himself an injured ironworker and union member, told the Daily News of his idea to register the mark:

“People are calling this a crass attempt to profiteer off a social movement, but that’s not it [.] I do believe there’s a possibility it could become a global brand. I could maintain control to keep it from someone trying to undercut the 99% [.] [The trademark] “isn’t about me getting rich. If it turns into a big moneymaker, I would like some of it to go back to the group.”

Sometimes, it’s not about the money (as UK pop-singer Jessie J so catchily reminded us 156 million times or so, according to YouTube).  Sometimes it’s about principle.

Much of my non-trademark work centers on working with nonprofits.  And when nonprofit clients ask me trademark questions, I try to distinguish the sort of interests nonprofits and for-profits would have in trademark protection.  For nonprofits, there’s not such a clear “good branding equals more revenue” correlation.  For them, it’s about their message and making sure that that message is protected and not tarnished, maligned, or confused by those with conflicting values.

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.

Ambush Marketing and the Lanham Act

As the Netherlands and Spain prepare to face off in Sunday’s World Cup Final, there’s no doubt we’ll be seeing a lot of orange– both on the field and in the stands– when Sunday rolls around.

Fans wearing official orange (or “oranje” if you prefer) Netherlands soccer jerseys won’t have anything to worry about, but they may want to think twice about wearing orange if the color happens to bear an affiliation with the Dutch brewerey Bavaria.

For the second straight World Cup, individuals wearing Bavaria logos on their clothing were ousted from World Cup venues.  In Germany in 2006, it was 1,000 fans who were denied entry because of orange lederhosen they attempted to wear into the stadium.  (Officials kindly offered them unbranded shorts they could change into if they wished to enter.)  This year, in South Africa, it was 30 or so Dutch women in orange Bavaria minidresses who raised FIFA’s ire.

The reason?  The presence of Bavaria insignia’s would violate Budweiser’s exclusive endorsement agreement with FIFA.

Both incidents were planned, “ambush marketing” efforts on the part of Bavaria.

This, of course, raises the obvious question: can FIFA do that?

Interestingly, South Africa has an anti-ambush marketing law that outlaws Bavaria’s conduct.

But what if the United States were hosting the World Cup, and it had been the Miller Lite Girls and not the Bavaria Girls entering the stadium to Budweiser’s chagrin?

The Lanham Act most likely provides a limited remedy here.  The Lanham Act would provide possible remedies for ambush marketing that result in consumer confusion/likelihood of consumer confusion.  In other words, the conduct of an ambush marketer may have to rise to the level where an ordinary consumer in the stands would have to (mistakenly) think that the ambush marketers standing next to him had some sort of sponsorship or affiliation with the event.  Thus, it seems less likely that the Miller Lite Girls would get the boot in my US World Cup scenario.  For a more thorough treatment on ambush marketing, see Jason Schmitz’s article in the Northwestern Journal of Technology and Intellectual Property here.

Fast Food for Thought

Here’s another one via Jack Greiner. According to the Los Angeles Times, officials in Santa Clara County, California have passed an ordinance that prohibits restaurants from offering toys and other promotions along with meals that fail to meet nutritional guidelines adopted by the county Board of Supervisors.

This raises two questions.  First, does the inclusion of a toy or promotion in a kid’s meal constitute “speech?”  And second, if so, is this restriction on speech constitutional under the First Amendment?

As to the first question, the answer is probably “yes.”  When a restaurant selects a toy or series of toys to include in its kid’s meals, it constitutes a form of advertising.  Most advertising constitutes “commercial speech” under the First Amendment, which means that a court considering the constitutionality of the Santa Clara County law would apply the Central Hudson test:

Under Central Hudson, a government restriction on advertisements or other commercial speech is permissible only on a showing that (1) the advertising is misleading, (2) the government interest in regulation is substantial, (3) the regulation directly advances that interest, and (4) the regulation is not more extensive than necessary.

Under this test, the restaurants affected by this ordinance would probably prevail in making the argument for its unconstitutionality.

Public Enemy Number One?

So, ultimately, the question really comes down to whether a kid’s meal toy is a form of speech.  Although my initial hunch is that it is a form of speech, namely advertising, I imagine there are good arguments on the other side.  In any case, it will be interesting to see where this goes.  Although the founding fathers may never have envisioned the “Hamburglar” as the focus of serious constitutional inquiry, we may see courts wrestling with these issues in the future.