Tag Archives: Licensing

Will New York State Go With (the) Flo (& Eddie)?

More of a Grass Roots fan.

More of a Grass Roots fan.

Every once in a great while comes along an intellectual property law decision so significant that blawgers fall over themselves and each other in the scramble to write something pithy about it. The April 13, 2016, decision from the Second Circuit in Flo & Eddie, Inc. v. Sirius XM Radio, Inc. is not such a case. Rather, it is a decision worth writing about because of the handful of opportunities it presents to make puns involving song titles and lyrics.

That’s not to say that the decision isn’t important on its own merits. Indeed, as the brief opinion begins, “This case presents a significant and unresolved issue of New York copyright law.” On the other hand, the issue is not resolved by the decision. Because it is that important! You’ll see.

The plaintiff-appellee is a California corporation that “asserts that it owns the recordings of ‘The Turtles,’ a well-known rock band with a string of hits in the 1960s.” The California corporation is “controlled by two of the band’s founding members, [and] acquired the rights to The Turtles’ recordings in 1971 and continues to market the recordings in a variety of ways, including by licensing the rights….” Let’s unpack this before we go any further. Read More…

Now you can go Holmes again!

Originally posted 2014-01-03 09:48:52. Republished by Blog Post Promoter

Watson and Holmes

Which one is Brozik? Is Coleman really that old?

“Knock, knock.”

 “Who’s there?”


   “Watson who?”

    “Not much. But there is this decision from the U.S. District Court for the Northern District of Illinois…”

It would be tempting, to be sure, to try to embellish a discussion of the recent Sherlock Holmes decision with Holmesian flourishes, but this blawger isn’t going to do that—even though the decision has recognized his—and yours, for that matter—freedom to use the “characters, character traits, and other story elements from Sir Arthur Conan Doyle’s Sherlock Holmes stories”—or at least those published before 1923. That said, a simple recitation of the relevant facts is in order—a method Holmes himself might have employed—in a bulleted list (and Holmes would have been able to tell you whether I am left- or right-handed just by examining these bullets!):

  • Sir Arthur Conan Doyle wrote four novels and fifty-six short stories featuring the fictional characters Sherlock Holmes and his friend and chronicler Dr. John H. Watson.
  • The first story, “A Study in Scarlet,” was first published in 1887 (in the United States in 1890). Forty-five further stories and the four novels were published in the U.S. before January 1, 1923. All of these works are in the public domain.
  • The remaining ten stories, published after 1922, are still protected by copyright, owned by a company whose principals are relatives of Conan Doyle.

Read More…

Stand by me?

Originally posted 2013-10-15 11:38:17. Republished by Blog Post Promoter

Does anyone write a better lead sentence in trademark blogging than Pamela Chestek?:

International Importers v. International Spirits & Wines, LLC is, at bottom, a manufacturer-distributor dispute. It’s also a lesson in how not to handle trademark ownership.

Seated figure outside New York State Supreme Court 2And is anyone better at guiding us through the most tortured factual corporate histories in the process of teaching that lesson?  I don’t think so.  So no sense in my trying; read the post.  It’s a picnic of complicated licensing and corporate-legal missteps that would warm the cockles of IP litigators’ “hearts” (if we had any)  — and speeds them up a bit.

Here’s why.  The mess comes about in a fight over standing, prudential and otherwise.  Pretty technical stuff.  Here’s a part I was able to alight upon that seemed like just foothold enough for LIKELIHOOD OF CONFUSION®:

With that as background (phew!), International Importers sued International Spirits & Wines, LLC and “D’Aquino Group of Companies,” a non-existent legal entity, for infringement of the mark WALLABY CREEK based on the defendants’ importation and sale of the wine. Most notably, Fernbrew is one of the “D’Aquino Group of Companies.” So at the end of the day we have what is a common situation – the former distributor of a product claiming ownership of the trademark and bringing a trademark infringement claim against the manufacturer and the new distributor. But because of the joint ownership of the mark, what happens next is far from typical.

Looks like I chose well!  So?  Next:

Rather than sorting out the ownership under the usual manufacturer-distributor framework (alert – recursive link), the defendants challenged International Importers’ standing under Fed. R. Civ. P. 12(b)(1), on the theory that all co-owners must be joined, and under Fed. R. Civ. P. 12(b)(7) for failure to join a necessary and indispensable party under Rule 19, namely, the other owners of the trademark.

So does one owner have standing without joining the other owners?

The answer to this question sounds like something Rule 12 mavens should know.  Read the whole thing!  Seriously.  In this fight over spirits, there’s some dispiriting in there — for transactional and litigating IP lawyers alike.  I’ll take a double!

Arnold Palmer and the Perfect Brand

Originally posted 2013-11-11 10:39:03. Republished by Blog Post Promoter

This post is based in part on part of my contribution on trademark law and the right of publicity in the New York State Bar Association publication, In the Arena.  As with other posts on the blog where I have recycled revisited such material, it may sound a little bit less like a LIKELIHOOD OF CONFUSION® blog post and a little bit more book-like.  In this case, however, the post is a significant expansion upon what appeared in the book.

As seen in the Benny Goodman case in the TTAB, celebrity, brand power and trademark rights may outlive a celebrity’s peak performing years, but will bear fruit only as long as the roots of the “brand” itself—the image, sensibility or other association the celebrity name elicits—remains alive.  How does a brand stay alive after the celebrity’s career (much less his life) are over?

BG in Hi FiFor insight into the answer, consider the management of the BENNY GOODMAN trademark, where one significant basis for the TTAB’s ruling against the seemingly bona fide applicant was the finding that a corporate successor in interest was actively exploiting the late King of Swing’s fame.

In contrast, the custodian of the intellectual property rights bequeathed by Goodman’s contemporary and colleague, the great band leader Glenn Miller, managed to completely squander those rights. Miller died tragically in 1944, and decades of internecine squabbles among his heirs followed. Finally, in 2006 the Ninth Circuit essentially declared the “Glenn Miller” and “Glenn Miller Orchestra” trademarks dead as well, affirming the district court’s ruling that decades of inaction by the plaintiff, despite knowledge of the defendant’s infringement, amounted to a fatal case of laches.

Glenn MillerThe lessons of these cases for advising celebrities are obvious: Lawyers must ensure that a star’s brand does not die with him — or with his playing career. An athlete’s planning for post-career continuation of the brand should begin early. Few athletic careers extend past age 40, and most end far earlier. Absent proper brand management, a sports star’s trademark rights may wither and die well before he does.

This need not be the case. Endorsement power can live and grow well past the active playing life of a professional athlete. There is no better example than the extraordinary post-play branding career of golfing legend Arnold Palmer, who unlike Miller and Goodman didn’t lead the perfect band but arguably developed, and exploited, the perfect brand. Read More…

Gratuitous link to trademark case based on mark that sounds like a bad word

Originally posted 2011-07-21 14:45:05. Republished by Blog Post Promoter

What gets written on the Las Vegas Trademark Attorney blog just can’t resist not staying on the Las Vegas Trademark — well, you get it.

Here, I had to link to it. Because someone is going to ask people who read this blog if they’ve heard about this case. And I owe it to you….

… the reader ….

to keep you up to date on these things. Without actually writing out bad-sounding trademarks on my own site of course.

See you after the Jewish holiday. And, yes, we’ll be eating chicken. Generic (but delicious!) chicken.

UPDATE:  More on dirty trademarks from two of my favorite trademark opinionators here.  But I am dropping this “beat” from LIKELIHOOD OF CONFUSION effective immediately.  As the title of this post indicates, part of the purpose of these registrations is to utilize childish vulgarity or scatological language as a lever for brand development.  I’m sure it’s a great strategy, but LIKELIHOOD OF CONFUSION isn’t going to be a part of it any more.

If infringement falls in a forest….

Framing the Marshall courthouseCan there be “infringement” of a trademark without confusion? As she is so apt to do, and to do so well, Pamela Chestek asks that question in this post, entitled Infringement Without Confusion?, which is about something completely different from what I thought it was going to be about, because I know that, in New York at least, the answer can be yes. That’s not the question Pamela is asking.   But this is a great opportunity, and given the name of this blog and what I say up in the right-hand-corner there, a good place, to unpack a few things about this thing, and address what I thought she meant before proceeding to what she meant, as well as to what’s going on in the comments to her post.   The … confusion on my part is not, in fact, irrelevant. What was I thinking of when I read the question?  New York’s famous, or perhaps infamous, state-law tort of unfair competition by “wrongful misappropriation,” of course.  To wit: In New York, the “essence of unfair competition . . . is the bad faith misappropriation of  the labors and expenditures of another, likely to cause confusion or to deceive purchasers as to the origin of the goods.” Nabisco, Inc. v. PF Brands, Inc., 50 F. Supp. 2d 188, 212 (S.D.N.Y. 1999). To assert an unfair competition claim, a plaintiff must demonstrate (1) a likelihood of confusion, and (2) the defendant’s bad faith. Kraft Gen. Foods, Inc. v. Allied Old English, Inc., 831 F. Supp. 123, 135 (S.D.N.Y. 1993). Unlike a claim for trademark infringement, proof of secondary meaning ,or, indeed, of a protectable mark at all) is not required. Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339, 364 (S.D.N.Y. 1998). Ok, very nice.  But is “infringement without confusion” the same thing as “confusion without secondary meaning”?   Well, how would it be different?  Once you’re dealing with logical dead-ends, after all, they start to look quite similar, and end up in more or less the same place.blivet the devils tuning fork 

After all, the premise of confusion is a baseline of association — in trademark law, we call that secondary meaning, or… a protectable mark.   Same place.   Indeed, pointier heads than that of LIKELIHOOD OF CONFUSION® have long pondered what the heck it means to have a likelihood of confusion without secondary meaning, or without a protectable mark.   As one academic treatment of this odd creature put it,

Some legal theories, like the proverbial vampire, refuse to die. The common law tort of misappropriation is one such legal theory, and the recent Restatement (Third) of Unfair Competition (Restatement) may finally lead to the demise of this outdated cause of action.

Regrettably, the “recent” referred to in that quote was 1993.   Read More…

Best of 2010: Mind bobbling!

Yes man?

First published on March 9, 2010.

I’ve been known to sound the alarm about the rush to register trademarks, and all the more so to register anticipated trademarks.  I argue that — oh, forget it, even I’m tired of saying this over and over again.   Here’s what I said, one of the times I said it:

For well over nine out of ten new businesses, the odds of your idea sinking or swimming on the strength of a trademark are slim indeed, and slim too is the war chest most entrepreneurs bring to the battle of free enterprise. Prove to yourself and the world that you have a business plan, a product or service that people want, the ability to deliver it and to scale it up, the capitalization to fertilize all that and the smile of Providence on your efforts. If in the process you develop something worth protecting as a trademark, that mark has already been storing up goodwill and secondary meaning and is enforceable as against infringers under state law and Section 43(a) of the Lanham Act. If it would be a good, business-justifiable use of what is still early-stage capital to register your trademark at this point, by all means do it.



So there’s that.   On the other hand, what exactly kind of advice is … this?!:

Some lawyers will get all excited and encourage (demand!) that you register your trademark. This involves paying a bunch of money, filing a bunch of forms and earning an ® after your name instead of the ™. While the ® does give you some benefits by the time you get to court, it doesn’t actually increase the value of your trademark. And you can wait. So, when you come up with a great name, just ™ it.

It doesn’t sound so different, does it?  Well, it was written by the icon, human trademark Seth Godin™, famous on the Internet for being famous, whose name I hear all the time and seems to be a guru of some sort though I missed class the day when they taught us why.   Well, I think Seth Godin™ is pretty much just about right there.

But Seth Godin™’s bit of advice comes to me via my very agitated friend Steve Baird at the Duets Blog, who is not at all happy with Godin on Trademark.   Read More…

Best of 2007: That’s a wrap

Published on April 16, 2007.

subway123Forget about the IP rights in those MTA symbols — you can probably use them however you want, now. (Remember to read my disclaimer on the right, though!)



Almost two years ago I expressed my skepticism about the (New York) Metropolitan Transportation Authority’s aggressive IP enforcement program focusing on the iconic train symbols of the New York City subway system.  [That post ended as follows]:

I also had a chance to reconsider the issue, and decided that — absent the establishment by Congress of some sort of “public trust trademark” amendment to the Lanham Act — these symbols are about as good a source indicator for a service as you can ask for. A D train goes on the D route on the D schedule. The E train, the F, the 1 the 2 and the 3 — completely arbitrary, yet packed with trademark goodwill. Very enforceable! That doesn’t mean there can’t be fair use, etc. — but prima facie, these would seem to be very good trademarks that designate very specific services boasting particular qualities.

Not any more: Read More…

The ultimate license

Illustration of the Streisand EffectWe’ve written before about the preposterous concept of asserting that stuff you buy and put into the trunk of your car and stick in a closet at home is really just a “license” to use that stuff.  Well, here‘s something even “better” — and while it may make users fume, it may be completely legal, and it doesn’t require judges, statutory damages or even any kinds of lawyers to work:

Apple apparently can disable App Store software remotely on your iPhone 3G. The iPhone calls home and poof the application is nuked.

Needless to say that this has caused a bit of a blog ruckus (Techmeme). MacRumors notes that Apple has come under fire for removing App Store software without notification and the ability to simply deauthorize apps already installed on an iPhone is worrisome. iPhone Atlas points out that Jonathan Zdziarski found Apple’s blacklist in a forensic analysis of the iPhone 3G.

Yeahbut.  We can understand why zap-ees would find this annoying, though we kind of like the self-help aspect of it.  From a DRM prospective, though, it’s absolutely progressive.  Or, alternatively, intolerably regressive.  One of those things.

The obvious questions, of course, will come up when someone, or more likely a class of someones, sues Apple for the tort of wrongful nuking.  Will that sound in breach of warranty?  Breach of contract?  Some new and exciting cause of action?  Either way, of course, the lawyers win.  That’s what IP is all about, right? (Hat tip to Instapundit.)

“Dear Licensor” — Part II

Dear John Letter

Permission: Casey Berry

Last spring I excerpted from and linked to an article by my friends Richard Bergovoy (of the Licensing Law Blog) and Oliver Herzfeld (of Beanstalk) concerning the dizzying concept of a trademark licensee gone bankrupt.  Now I’m told that Part II is out and about as well.

Here’s a highlight:

Richard Bergovoy

Richard Bergovoy

If Licensee Seeks to Assume and the Licensor Objects

The licensor may believe that the licensee or its proposed assignee are incapable of properly performing the license agreement. One of the fundamental principles of U.S. trademark law is that a licensor must control the quality of the goods and services provided by the licensee under the licensed mark. This rule is designed to fulfill the public policy objective of consumer protection, in that trademark laws help prevent the public from being misled as to the quality of branded products and services. A prohibited “assignment in gross of a mark” or other failure to maintain quality control standards could give rise to a so-called “naked license” claim. The consequences of such a claim can be quite severe. In particular, “a court may find that the trademark owner has abandoned the trademark, in which case the owner would be estopped from asserting rights to the trademark.” To prevent such damage from occurring, the licensor may object to a licensee’s assumption or assumption and assigument of a license agreement on the following four grounds …

The four grounds, and the rest of the article, can be found here.