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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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.

Gilbert Gottfried, Aflac’s Muted Spokesduck, and the Right of Publicity

Insurance giant Aflac recently parted ways with celebrity voice actor Gilbert Gottfried after he comments he made about the Japan crisis.  Gottfriend had long provided the shrill but persistent voice of the Aflac duck.

So with a muted spokesduck, what does Aflac do next?

From Tom Galvani:

It is highly unlikely that the split with Gottfried left the permissible use of the mark in question.  DuetsBlogs just has to be right about that: a company with that level of business acumen likely had many strategies thought out in advance.  Aflac is clearly the registered owner and likely has the right to use the mark.  It is extremely doubtful that Gottfried contracted with Aflac to remove their ability to use his voice after his engagement ended.  Nevertheless, who knows what goes behind closed doors and contracts.

I agree with Tom’s gut reaction– it is unlikely that Gottfried has any contractual rights that he can assert against Aflac for use of his voice, given that his employment is terminated.  But what about IP rights?  What, if any, right of publicity claims would Gottfried have in the absence of his contractual rights (assuming, for sake of the argument, that Aflac wanted to use his voice)?

Tom Waits successfully asserted publicity rights in his voice, even when it wasn’t actually his voice being used.

So what rights does Gottfried have here?  Obviously, he has rights in his own voice.  But what about the Aflac spokesduck character?  Clearly, there is a registration that covers the duck as a design mark, but that most likely doesn’t cover the character as a whole.  For example, let’s say the spokesduck appears in a movie.  Alfac would have a decent case for dilution, but what about Gottfried?  Has he created any publicity rights in the spokesduck character that extend beyond his voice?

These are very hypothetical questions, and this issue should quickly be disposed of by Aflac’s PR/Marketing types.  I will say one thing, however, if I write “spokesduck” one more time, I’m afraid I might start to develop anatidaephobia.

Pittsburgh Trademark Lawyer Turns One!

Well, it’s been a year.

Last October, I decided that I’d do my part and give the world just what it needs— another blog (and a Trademark Law Blog at that).

When I started blogging, I wasn’t really sure where, exactly, I would fit in the conversation.  After all, there were already a lot of intelligent voices out there in the trademark/IP blogosphere.  And, as visual evidence confirmed, I was “terrifyingly youthful” when I rolled out Pittsburgh Trademark Lawyer.  (I like to think, however, that after a year of blogging, I could be promoted to a mere “shockingly youthful.”  Ron?)

At any rate, I’ve had a lot of fun over the past year.  The blog has forced me to stay current on trademark issues.  It’s been a fantastic outlet for the side of me that thinks I’m still a journalist.  And– get this– people actually showed up to read the blog.

I want to say thanks to my law firm, Elliott & Davis, for allowing me to indulge my blogging impulses.  I also want to thank a few bloggers who have helped me with feedback, tips, and link-based karma.  Thanks to: Prof. Michael Madison, Ron Coleman, Ryan Gile, and Jack Greiner (as well as anyone else I may have missed).   Finally, thanks to everyone who’s taken the time to read my blog.

The Latest on the “THE SITUATION” Situation at the USPTO

In December 2009, two separate trademark applications were filed with the United States Patent and Trademark Office (USPTO) for the proposed mark “THE SITUATION.”

Who (or what) is “The Situation,” you ask?  For those of you who are not familiar with the cultural gem (or train-wreck, depending on one’s perspective), that is MTV’s reality show the “Jersey Shore,” The Situation” is the self-applied nickname of Michael Sorrentino, one of the show’s characters.

Interestingly, neither trademark application was filed by “The Situation” himself.   One application was filed by a company owned by “The Situation’s” brother, Marc Sorrentino, and another was filed byVadio, LLC and Matthew Hunter.  Both applications are being made in connection with various clothing items, including underewear.

The Smoking Gun tells the story in delightfully snarky detail:

For the first time in the republic’s history, government officials are being asked to grant a trademark for the nickname a man has given to his abdominal muscles, records show. The U.S. Patent and Trademark Office (USPTO) has received two applications to secure a mark for “The Situation,” a term recently popularized by “Jersey Shore,” the crass MTV reality show. One of the program’s characters is Michael Sorrentino, a 28-year-old New Jersey man who has christened his ripped abs “The Situation.” The gym habitue is known for exhortations like, “This situation is gonna be indescribable. You can’t even describe the situation that you’re about to get into the situation.”

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.

No Doubt Sues Activision for Misuse of Avatars

The rock group No Doubt has sued video game maker Activision Publishing, Inc. over Activision’s use of No Doubt avatars in the video game “Band Hero.”   According to the complaint, Activision was authorized to make use of the band members’ likenesses in three No Doubt songs featured in Band Hero,  but Activision exceeded their agreement with No Doubt by allowing the band to appear in more than 60 songs.

The dispute centers, in part, on the game’s Character Manipulation Feature.  According to an article in the Los Angeles Times:

“Rock band No Doubt has filed a real-world lawsuit over its virtual role in the just-released Band Hero edition of the Guitar Hero video game series, contending that the game has ‘transformed No Doubt band members into a virtual karaoke circus act,’ singing dozens of songs the group neither wrote, popularized nor approved for use in the game.

[…] the game’s Character Manipulation Feature, Stefani’s image can be induced to sing the Rolling Stones’ “Honky Tonk Women.”

‘While No Doubt are avid fans of the Rolling Stones and even have performed in concerts with the Rolling Stones,’ the complaint says, ‘the Character Manipulation Feature results in an unauthorized performance by the Gwen Stefani avatar in a male voice boasting about having sex with prostitutes.'”

This case raises some interesting questions about the scope of premitted uses of avatars.  Celebrities clearly have a right to compensation for use of their likenesses, but game makers will make the argument that they need to build flexibility into their games.  Regardless of how this case shakes out, the real takeaway for game makers and celebrities alike is that it’s important to have a contract in place that is very specific about the range of uses for avatars and to adhere closely to what the contract says.

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.