College Football, Cookies, and Finding a Balance in Trademark Protection

College football season is upon us.  This weekend, a lot of eyes will by on my alma mater as they take on Penn State in its first game in the wake of the recent scandal.  A lot of eyes will be glued to TV sets and filling the stands in stadiums across the country. And that means huge licensing money, especially for high-profile teams.   According to the Collegiate Licensing Company, collegiate licensing is a market currently valued at $2.7 billion a year.

With this much money at stake, it’s not surprising that universities are going to great lengths to make sure the valuable brands that underlie their sports teams are protected.  But as readers of this blog know, there have been numerous accounts in the media over the last few years of “trademark bullying” — instances where brand owners are seen as going too far in protecting their rights and risk alienating potential customers.

So where do we draw the line between good enforcement and “bullying”?  As with most legal questions, there’s often a lot of grey area, but I think consumers themselves provide a nice feedback loop.  (Which perhaps lines up with or could be explained by a consumer theory of trademark law.)

The University of Alabama came under fire recently after it sent a cease and desist letter to a local bakery demanding that it stop making cakes and other desserts bearing the university’s logos.  After a widespread show of support for the bakery, Mary’s Cakes & Pastries, the university changed its tune and (get this!) apologized to the bakery for sending the letter.

This might leave some lawyers scratching their heads, but marketing and PR folks would see this as a no-brainer.  Why would you want to alienate the very people you’re hoping will fill the stands each fall and buy your official merchandise?

I think it’s fair to draw a distinction between the Alabama cookies dispute and, say, an instance where someone is selling knockoff t-shirts that compete unfairly with officially-licensed merchandise.  But what about the “zone of expansion” argument and the “duty to police”?  Even though I think Alabama did the right thing from a PR standpoint, would they have an argument that baked goods are a market to which they’re likely to expand or that they can’t acquiesce to the bakery’s use for fear of losing their rights?  Should they?

Those are the thoughts to chew on.  But, thankfully, what could have been another story of trademark bullying had a happy ending.

 

 

 

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N.Y. Court Rules That “INSTANT HEART ATTACK” Can Stay on Menu, Despite Trademark Claims

There’s been a lot of talk on blogs and in the media on the recent decision by the Southern District of New York in a case involving a Las Vegas burger joint and a New York deli’s dispute over sandwich names that pay tribute to their cardiac side effects (the TRIPLE BYPASS BURGER and the INSTANT HEART ATTACK SANDWICH, respectively).

Applying the likelihood of confusion factors, the court held that the New York deli can continue using its name.  Tim Buker and Ron Coleman offer some nice analysis of this case at their blogs.

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.

Western PA Company and Captain Morgan Square Off on Trade Dress

For many years, Capri Sun had the pouched-beverage market cornered.  As children, we were attracted to shiny, colorful packaging and the novelty of drinking from malleable pouch (despite the repeated frustrating experiences trying to insert the drink’s plastic straw without punching a hole in the side of the pouch).

Fast forward to today.  Not all beverages served in pouches are sugary kids’ drinks– adult beverage companies have jumped on the idea.  Which brings us to a recent IP dispute of local interest.

As the Pittsburgh Tribune-Review reports, American Beverage Corp. (based in Verona, PA, just outside of Pittsburgh) filed a federal trademark lawsuit recently, claiming Diageo, which owns Captain Morgan, copied its single-serve frozen cocktails design, constituting patent and trade dress infringement.  The Complaint is available here.

I’m not a patent attorney, so I won’t go into the question of whether the Defendants’ design infringes on Plaintiff’s patent.  But this case does present an interesting question about trade dress.

Here’s a look at the products, side-by-side.

Generally speaking, trade dress will not be protected if it’s “functional.”  If trade dress didn’t have this limitation, competition would be inhibited.  The first person to think of serving beer in a bottle would “own” that concept, and so on and so on.

But trade dress protection is available to reward producers for creating innovative product designs (and to protect consumers from confusion when they rely on the distinctive appearance of a product to make a purchasing decision).  Most people can recognize a bottle of Coca-Cola by its shape, even if the label were removed.  So the question is, how unique, how distinctive, is the American Beverage pouch? Is it like the Coca-Cola bottle, or is it just another pouch?

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.

Book ’em, Danno: Facebook Updates User Agreement to Protect Trademark Rights in “Book”

Much of the discussion around Facebook’s changes in policy have revolved around privacy.  But a recent revision to the company’s Statement of Rights and Responsibilities has people talking about Facebook’s inclusion of a term designed to protect its trademark rights in the word “book.”

Jon Brodkin over at ars technica breaks it down nicely:

So, what exactly is Facebook changing? If you view the current Statement of Rights and Responsibilities, you’ll find this sentence:

“You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Wall and 32665), or any confusingly similar marks, without our written permission.”

If you’re wondering, 32665 is the number allowing Facebook users to update their pages through text message. The newly revised user agreement reads as follows (emphasis ours):

“You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Book and Wall), or any confusingly similar marks, except as expressly permitted by our Brand Usage Guidelines or with our prior written permission.”

Not accepting the terms isn’t really an option for anyone with a Facebook account. “By using or accessing Facebook, you agree to this Statement,” the document says.

This isn’t the first time the company has asserted rights in the word “book.”  There have been disputes (involving “Teachbook” and “Lamebook,” among others), but the move to include “book” among marks protected in its new terms is seen as newsworthy because “book” is not among the company’s extensive list of marks registered by the USPTO.

According to the ars technica piece, “Facebook has a pending trademark application on ‘book’ listed in the European Union’s trademark database, but the current status is ‘application opposed’ with ‘likelihood of confusion’ listed as the reason for opposition.”

Most readers of this blog already know that you don’t need to have a registered mark in order to have enforceable trademark rights in the United States.  And by incorporating this mark into its user terms, Facebook (potentially, depending on what a court would say) is adding breach of contract claims to its menu of options in enforcing its trademark rights.  And when you have, oh, 845 million or so contracts out there, well, that can’t hurt either.

They Call Alabama the Crimson Tide…

I’ll spare you the Steely Dan joke (can’t find a fitting one right now) and jump right into the facts:

The U.S. 11th Circuit Court of Appeals in Atlanta heard arguments today in the trademark infringement case between sports artist Daniel Moore and the University of Alabama.  Alabama sued Moore in 2005 alleging that Moore’s paintings, which depict scenes from Alabama Crimson Tide football games, infringe on Alabama’s trademark rights.

In 2009, the lower court found that Moore’s paintings and prints did not infringe and were protected free speech but that other items — such as coffee mugs — were infringing.  Apparently, the parties were unhappy with the court’s “split the baby” approach, as they both appealed.

I blog a lot about public relations concerns as they relate to trademark law, and although the mere fact of filing suit is often seen as bad PR, I did like the soundbite from university spokeswoman Deborah Lane.  From Businessweek:

Lane said the University of Alabama has licensing agreements with some 600 business owners and that supporters want to buy products “that benefit the university they love rather than an unlicensed competitor.

“The university asks that businesses — like (Moore’s) New Life Art — that profit from the university’s name and reputation pay a few cents in licensing fees out of each dollar they receive from the sale of merchandise bearing university trademarks,” she said. “These licensing fees fund academic scholarships for UA students.”

It will be interesting to see how this plays out.  There’s a lot at stake here not only for the parties, but also in terms of the precedent this will set for universities and artists.

Florida Restaurant Sues Wendy’s Over Use of Slogan

Phelan Holdings Inc., owner of Pinchers Crab Shack, a small seafood restaurant chain in Florida, has sued Wendy’s over its use of the slogan “You Can’t Fake Fresh.”   According to the Complaint, filed this week in U.S. District Court in Fort Myers, alleges those four words are worth somewhere around $2 million.

Pinchers registered the name with the USPTO in February of 2010 and has been using the name since 2004.

Wendy’s use of the slogan is part of its recent campaign that touts the freshness of the restaurant’s offerings.

Pinchers also alleges that Wendy’s use of a second slogan “You can’t fake real” (which, at least to me, seems a little redundant) constitutes an infringement of its mark as wel  Here, the marks themselves are identical, or in the case of Wendy’s second allegedly infringing mark, they are at least very similar.  This obviously works in Pinchers favor.

The big question will be how similar/different are the two restaurants’ respective services and how much care would likely be exercised by the consumers here.   There is probably something to Wendy’s likely argument that the restaurants occupy different markets.  As Rene Dial over at TacticalIP notes, he doesn’t see a likelihood of confusion “unless Wendys decides to start seling crabs at their restaurant.”

iCloud Communications Sues Apple for Trademark Infringement

If you’ve been reading this blog long enough, you should know that I love following David and Goliath stories.  Unlike most of the stories I’ve covered, however, this one involves David taking the first swing.

In a Complaint filed last week in United States District Court in Arizona, iCloud Communications, a Phoenix-based voice over IP provider, alleges that Apple has infringed on its “iCloud” trademark.  The Complaint alleges that “Apple has a long and well known history of knowingly and willfully treading on the trademark rights of others,” citing to the company’s previous scuffle with the Beatles over the “APPLE” trademark.

Apple has a lot riding on this one (as evidenced by the company’s 11 pending trademark applications with the USPTO), and it is likely that a settlement of some sort will be reached here– though it probably won’t have the sort of warm, fuzzy ending as the Beatles lawsuit did.

Perhaps the most interesting question that’s raised here is this: what trademark rights do the parties have in the stylistic, prepended “i” in their names?  For a while, anything bearing the prefix “i” would automatically be associated with Steve Jobs and company.   But as Tom Galvani cleverly notes, the use of the “i” prefix is widespread, bordering on cliche.  I took Tom’s challenge (think of good/service, tack an “i” onto its name, and see if it already exists), and it looks like Tom was right.

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.