Tag Archives: Right of Publicity

Turn the other one? Or liberty? Or death?

Originally posted 2009-04-23 11:46:26. Republished by Blog Post Promoter

“Trademark” is not a verb.

Right — we will resolve these all here and now.  Key issues.  Fish or cut bait.  Or we most assuredly will all hang separately!

The Daily Mail reports, ” Cheeky team applies to use ‘Obama’ as a European trademark“:

A group of enterprising Spaniards is set to win the European trademark rights to a word with instant global recognition – OBAMA.

EU trademark rules once stopped opportunists turning the names of heads of state and other prominent figures and celebrities into branding gold.

But now, unless the use of an instantly identifiable name is deemed to be an act of deception, little else prevents the first-comer grabbing the rights.

Trademark is Not a Verb, Mr. Hart

Trademark is Not a Verb, Mr. Hart

This item stands for two key points which we all must know; nay, knit unto our very hearts.  Permit me some down-the-middle pedantry here.

1.  Trademark is NOT a verb.  Why do I refuse to give up my hopelessly-outnumbered position against the use of the word “trademark” as a verb?  This usage is everywhere, even on the INTA discussion list.  The reason is not only because I am a reactionary.  (Not only.)  It is because the whole point of U.S. trademark doctrine — that trademark rights are, and by the grace of God and Senator Lanham ought to be, earned by use.  First comes secondary meaning, then comes “rights.”

As I have said before, just as you cannot be “bar mitzvahed,” you cannot “trademark” something.  The “Trademarking” is not “done” via the filing of some paper or granting of a registration.  And this fact is obscured by the awful neologism “trademarked,” which suggests you can … well, it suggests you can do exactly what we’re reading this “cheeky team” did in the Daily Mail piece, and which a decent respect to the opinions of mankind requires that we all acknowledge they should not be able to ought to be do.  Ing.

Trademark is Not a Verb

Trademark is Not a Verb, or Give me Death!

2.  Speaking of self-evident truths, we solemnly publish and declare that even it had not become necessary for one people — Amur’ca — to dissolve the political bands which had connected it to another — England, of course — the injury imposed on the American language by the latter by the jarring, ugly and sick-making term “cheeky” as in the Daily Mail headline would make it necessary now.

And if I have to live with “trademarked” to never again see “cheeky,” may the Supreme Judge of the world, in recognition of the rectitude of my intentions, so grant me.

Thus endeth the lesson. Trademark is not a verb.

As to “European trademark” — “sheesh!

Oy vey

Originally posted 2009-03-09 12:11:57. Republished by Blog Post Promoter

Consider the other side of the aggrieved vandalism promoter Shepard Fairey, of HOPE poster fame:

Obey the "Hypocrite"'s Lawyers!

Obey the "Hypocrite"'s Lawyers!

Gawker: “Obey” Trademark Law:

Some guy in Pittsburgh sells little baby Steeler mascots with the phrase “Obey Steeler Baby.” Shepard Fairey demands that he stop infringing on his trademark, which he originally made famous by ripping off the image of Andre the Giant!

Well, if that‘s who he ripped off, then he really does have guts, I guess!

UPDATE:  Fairey’s got even bigger trouble than that.

Cover me

Originally posted 2010-05-18 13:02:18. Republished by Blog Post Promoter

Photo Attorney Carolyn Wright writes:

Rebecca Tushnet over at the 43Blog reports on a recent case in New York where the court determined that the use of a woman’s photograph for a fiction book cover required a model release.  This ruling creates an anomaly with other NY cases where the court ruled that a photograph of a person used for a news article does not require a release.  The lesson?  It’s always safest to get a model release when using a photograph of a person.

Good pickup.  Good advice, too.  Although, now that I think about it, the facts in this case and the publishing sector in which it occurred sound eerily familiar to me

Overreaching, Part XXVII — Major League Bozos, confirmed

Originally posted 2006-08-09 10:22:48. Republished by Blog Post Promoter

Sometimes we’re not only right, but a judge agrees with us. The AP reports:

Fantasy baseball leagues are allowed to use player names and statistics without licensing agreements because they are not the intellectual property of Major League Baseball, a federal judge ruled Tuesday.

Baseball and its players have no right to prevent the use of names and playing records, U.S. District Court Judge Mary Ann Medler in St. Louis ruled in a 49-page summary judgment.

Major League Baseball claimed that intellectual property laws and so-called “right of publicity” make it illegal for fantasy leagues to make money off the identities and stats of professional players.

But even if the players could claim the right of publicity against commercial ventures by others, Medler wrote, the First Amendment takes precedent because CBC, which runs CDM Fantasy Sports, is disseminating the same statistical information found in newspapers every day.

Here‘s the decision.

Good Job, Steve

Originally posted 2005-05-13 12:29:00. Republished by Blog Post Promoter

As predicted in this space, Wired News reports that the publicity generated by Apple’s ham-fisted exile of a new book about Steve Jobs from its own stores has resulted in such strong demand for the book that the publisher, John Wiley & Sons, has “doubled the print run and moved publication forward a month to May 16.”

Defacing “The Face”?

Originally posted 2010-05-27 23:50:36. Republished by Blog Post Promoter

Genius!  Plus studliness!

Yes, in one post on his Licensing Law Blog, Richard Bergovoy brings together some of my favorite things:

What do Jimi Hendrix, Elvis Presley, Marilyn Monroe, and Princess Diana all have in common?

If you guessed that all of them are dead celebrities, you are only half right.

More importantly, all of them were subjects of messy postmortem lawsuits against sellers of celebrity-branded goods.

Because of great variations in the laws, as well as “favorite son/daughter” influence on local courts, using the name or image of a dead celebrity to sell products without a license is risky business.

Doing so may put a businessperson in violation of two categories of legal rights, rights of publicity laws and trademark laws.

The more direct threat is the law of rights of publicity. Generally speaking, rights of publicity laws prohibit the commercial use of the name (and usually image and signature) of another person without his permission. But that is about all one can say with certainty — the laws are state-based, not federal, and beyond the basics, there are great variations in the laws of the states that recognize rights of publicity. In fact, it is not even certain how many states do recognize rights of publicity, with estimates ranging from the mid-20’s to close to 50.

One of the biggest variables among state laws is whether the right of publicity survives the celebrity’s death, and if so, for how long. States that characterize the right of publicity as a personal right naturally conclude that it is extinguished on the person’s death. New York is one such state. States that characterize the right of publicity as a property right, like New Jersey, naturally conclude that it survives the person’s death, and is descendible to her survivors.

That seems simple enough. So where is the problem? Read More…

Drink to me only with thine eyes

Originally posted 2007-03-27 14:42:28. Republished by Blog Post Promoter

A week or so ago it was the sad story of Jimi Hendrix on the bottle. Now the TTABlog reports on another famous-dead-guy-as-booze-trademark case:

Applicant Anatoliy Bondarchuk failed to fend off a petition for cancellation of his registration of the mark MARC CHAGALL for vodka. The Board not surprisingly found that the mark creates a false suggestion of a connection with the painter Marc Chagall, in violation of Section 2(a) of the Lanham Act, and it therefore sustained the petition.

The irony is that Chagall’s paintings always struck me as the kind of thing you would, indeed, find at the bottom of a bottle of vodka.  Animals and people getting just a l-i-i-i-ittle too close… fowl showing up in the most inappropriate places … lots of questionable aloofness — flying around in the air, that is.

I always thought these paintings looked as if Chagall had stayed for one l’chaim too many. Or that he had a very odd family, indeed. Maybe so — but it’s not for Anatoliy Bondarchuk to profit from it, and so too says the TTAB.

Icon icon: “I conned”

Originally posted 2012-02-27 11:09:02. Republished by Blog Post Promoter

Hope this is fair use!

Hope this is fair use!

Shepard Fairey, he of the icon con, is about to be the other kind of con — the “vict” kind, as Jim Treacher explains:

By his own admission. If you know anything about the career of this talentless plagiarist, I hope the following news is as satisfying for you as it is for me. NYT:

The street artist Shepard Fairey, whose “Hope” campaign poster of Barack Obama became an enduring symbol of his last presidential campaign, pleaded guilty Friday to a charge stemming from his misconduct in trying to bolster claims in a lawsuit over which photograph had been used as a basis for the poster.

Mr. Fairey, 42, sued The Associated Press in 2009 after it contended he had infringed on the copyright of one of its photographs in creating the poster. Mr. Fairey had claimed in his suit that he had used a different photograph of Mr. Obama, but later admitted that he had been mistaken and had tried to conceal his mistake, by destroying documents and fabricating others…  

Obey the "Hypocrite"'s Lawyers!
Obey the “Hypocrite”‘s Lawyers!

Mr. Fairey, of Los Angeles, pleaded to one count of criminal contempt and could face up to six months in prison. 

Note that this possible jail time isn’t for creating the poster, but for lying to the court in a lawsuit he filed. The Daily Telegraph has more details:

Fairey “went to extreme lengths to obtain an unfair and illegal advantage in his civil litigation, creating fake documents and destroying others in an effort to subvert the civil discovery process,” US Attorney [Preet] Bharara said in a statement…

Says Treacher:  “Fairey’s ego was threatened, and he didn’t think the rules that apply to everybody else should apply to him. So he hit back hard and lied outrageously in the process.”  Sounds like a pretty average day in litigation, only Shepard Fairey’s enemies were high-profile enough for his behavior to get him in big trouble — a condition he brought, quite deservedly, on himself.

(Hat tip to Instapundit.)

Osama Kin Back in Brand Equity Play?

Originally posted 2005-02-27 00:56:00. Republished by Blog Post Promoter

Joe Gandelman reports about a trademark story relating to the protection of the Bin Laden family name in Europe.

No, not that Bin Laden — it’s about his evidently decent half brother, one of the 54 siblings and semi-siblings who didn’t blow anything up. The family operates the Bin Laden Group, which is a construction company, but this half-brother wants to go into something a little less butch: fashion and fragrances.

Nota bene: Under U.S. trademark law, what Mr. Binladin (how he spells his name now) did in Switzerland would not be hardly anything like a trademark, at least the way it has been reported. Put simply, business names are not trademarks in and of themselves. Neither are surnames. And, of course, here trademarks are earned by use and the development of secondary meaning, not registration (which only enhances the protections available to trademarks). You can file what is called an Intent to Use trademark application here, but Binladin is quite clear that he has indeed no intent to use the name.

All of which means that if you want to open the Bin Laden Café, roll out a line of Bin Ladin Dental Floss, or start hawking Bin Laden Beer, this Swiss development in and of itself shouldn’t necessarily scare you off. Other things might, but I just provide the legal advice.

“Yes We Brand!”

Originally posted 2009-01-31 19:56:10. Republished by Blog Post Promoter

Bloomberg News reports that “my generation”‘s President is every bit as thoroughly modern as you’d expect.  In other words, no unauthorized drawing down of his icon-equity will be permitted:

White House lawyers want to control the use of the president’s image, recognizing the worldwide fascination about Obama’s election, First Amendment free-speech rights and easy access to videos and photos on the Web.

“Our lawyers are working on developing a policy that will protect the presidential image while being careful not to squelch the overwhelming enthusiasm that the public has for the president,” White House spokeswoman Jen Psaki said.

Obama’s calls for change and his “Yes We Can” campaign mantra are being evoked to sell assembly-required furniture in Ikea’s “Embrace Change” marketing campaign, bargain airfares during Southwest Airlines Inc.’s “Yes You Can” sale and “Yes Pecan” ice cream at Ben & Jerry’s Homemade Inc. shops.

“I can’t remember this ever happening to an active politician before, as a spokesperson or as an image for a brand,” said Brad Adgate, director of research for Horizon Media Inc., a New York-based advertising agency.

Yes you can, Brad!

Oops, sorry.  The article continues with a decently thorough examination of the issues, quoting IP lawyer Jonathan Band as saying:

“It will be difficult,” Band said. “Because he is the president of the United States and there was this campaign and everyone’s proud, I think the First Amendment will be applied much more broadly with respect to people wanting to use an image of the president than it would be with typical entertainment figures or sports figures.”

Sure hope so.  Band continues:

The use of Obama-related images also may involve copyright issues and various state laws about the ability of individuals to control commercial exploitation of their likenesses, Band said.

Good work, Jonathan!  I also appreciated this grace note — a little perspective:

Appropriation of a president’s face and voice, to a large degree, come with the territory, said Princeton University historian Fred Greenstein.

“It’s par for the course,” he said.

Yes… but then again, these days, “IP management” that infringes on free expression and free enterprise is also “par for the course.”

I sure hope the Obama White House doesn’t get carried away with itself on this — either on its “policy” on the use of President Obama’s brand equity or on appointing judges who could possibly agree with such restrictive and essentially antidemocratic views.” Can we handle any more of those?  No, we can’t.

Oops, sorry!

There must be some kind of way out of here

Originally posted 2008-07-09 00:51:24. Republished by Blog Post Promoter

But mediation isn’t it — in the Jimi Hendrix vodka case, that is, which Mike Atkins has been all over since last year, as we reported back then.

Hendrix Guitar on Fire

Hendrix, in hell

No settlement, says Mike now; back on a litigation track. The hour’s getting late!

UPDATE:  From Mike Atkins:

The maker of HENDRIX ELECTRIC vodka infringes three JIMI HENDRIX trademarks owned by the licensing company that controls the late musician’s marks.

That’s what Western District Judge Thomas Zilly found in his August 7 order on the parties’ cross-motions for summary judgment in Experience Hendrix, LLC v. Electric Hendrix, LLC. STL’s post on the parties’ oral argument here.

An opinion to Di for

Originally posted 2010-05-05 21:28:31. Republished by Blog Post Promoter

I do a lot of bellyaching around here about how there are never any consequences for filing frivolous trademark and copyright lawsuits. What’s the worst thing that can happen to a well-heeled plaintiff that wants to use the expense of defending, even meritoriously, against a “federal case” as a way to effectuate a “business message” (namely, you’re out of business, because we say so)? Usually, nothing. Not just usually. Really pretty much a lot usually.

"Do you have Princess Di in the can?"

Not this time.  This is a little dense if you’re not used to reading judicial opinions, but the payoff is worthwhile.  Emphasis is mine:

The Franklin Mint Company and its principals, Stewart and Lynda Resnick, (collectively, Franklin Mint) appeal from a judgment dismissing their malicious prosecution action against the law firm Manatt Phelps & Phillips LLP and attorney Mark S. Lee (collectively, Manatt). Manatt represented the executors of the estate of Diana, Princess of Wales and the trustees of The Diana, Princess of Wales Memorial Fund (collectively, the Fund) in a lawsuit filed against Franklin Mint alleging claims related to Franklin Mint’s use of Princess Diana‟s name and image in connection with merchandise Franklin Mint advertised and sold. . . .

We conclude that, based on the record before us, no reasonable attorney could find tenable the false advertising claim as it was alleged and litigated in the underlying action. Therefore, we hold there was no probable cause to prosecute that claim. We also hold there was no probable cause to prosecute the trademark dilution claim because no reasonable attorney could conclude that the claim could satisfy two fundamental, long-standing principles of trademark law. First, to be protectable as a trademark, a word, phrase, name, or symbol must be used in commerce to identify goods or services and their source. Although Manatt contends that Princess Diana used her name in connection with her appearances at charitable events, that use does not demonstrate trademark use. Second, a trademark that is descriptive — such as a personal name — must acquire secondary meaning to be protectable in a trademark dilution action. In other words, the primary meaning of the mark (i.e., the descriptive meaning) must in the minds of the public be subordinate to its meaning as the source of goods or services. Because “Diana, Princess of Wales” has such an extraordinarily strong primary meaning as descriptive of Princess Diana as a person, the contention that it had acquired secondary meaning at the time of the underlying lawsuit was, as the district court in the underlying lawsuit observed, “absurd.” (Cairns v. Franklin Mint Co. (C.D. Cal. 2000) 107 F.Supp.2d 1212, 1222 (Cairns III).) Therefore, we conclude that the trademark dilution claim was untenable.

Now this is really interesting on several levels.  One is the obvious one I’ve already alluded to–a court calling attorneys out and saying, “Stop the baloney.  You knew what you were doing here was fallacious, but you just kept doing it.  If malice and damages are proved, that’s actionable.”  It’s astonishing to read that.  Don’t even ask what has happened, in my own experience in the vaunted federal courts facing just such claims, that leaves me so dumbstruck reading this.

But then there’s the substantive legal stuff.  Diana, Princess of Wales, not a “trademark”?  Just because she’s mostly really a person (no longer a living one, granted, but you get the idea)?  But what about all those other celebrity trademark names? Read More…