Monthly Archives: May 2012

DTOM: Nike Conquers in TM Scuffle

“Don’t tread on me.  Say don’t tread on me.” Don’t Tread On Me, Metallica

In 1754, Ben Franklin created this woodcut image, urging the 13 American colonies to join together in opposing British rule.  Before long, the colonies heeded Ben’s warning, came together to form a potent nation that declared independence, trounced the British, wrote a nifty and resilient constitution, struggled and stumbled (most violently over slavery and states’ rights leading to civil war), preserved freedom and democracy in two world wars, and then emerged as the  most dominant power the world has ever known.  Franklin’s political cartoon, of course, cannot take all the credit for America’s success.  But his image, and the slogan it spawned–“Don’t Tread On Me”–endure as powerful symbols of the nation’s resolve.

“Don’t Tread On Me” also happens to be a pretty popular slogan for T-shirts.  A couple of brothers from California sell a line of “Don’t Tread On Me” tees that seem to have caught on with the heavy metal set–most notably with the band Metallica.

Not exactly what Ben Franklin had in mind when he was trying to inspire a great republic, but a clever marketing gimmick nonetheless.

The brothers applied for and obtained a trademark registration for the slogan, and its abbreviation, the acronym DTOM.   They probably thought that their Federal registration would keep their company as free from competing uses as Franklin and the Founding Fathers must have thought the Atlantic Ocean would keep the United States free from invasion.

While Franklin et. al. were right (the War of 1812 being but a minor nuisance), the DTOM boys were dead wrong.  Because when they applied for their trademark, they broke a fundamental rule.  They claimed that they were using the mark for a laundry list of items they didn’t sell and have never sold.  And,  worse, although they did use their slogan and acronym on t-shirts, they couldn’t substantiate their claimed date of first use.

So when the brothers sued to stop another great power, Nike, from using the same slogan and acronym, Nike had ammunition to fight back.   Nike convinced the court that the brothers’ claimed date of first use was bogus, and that Nike’s first uses of “Don’t Tread On Me” and “DTOM”–fittingly, on clothing for the U.S. National Soccer Team–were first.  The decision by a federal judge can be appealed.  But for now, Nike remains free to sell its line of “Don’t Tread On Me” and DTOM clothing, while the brothers face the prospect of losing their trademark for falsely claiming to use their marks on  a host of products they’ve never sold.

When the 13 colonies bravely joined together under Franklin’s banner and rallied around the words “Don’t Tread On Me,”  their hopes, dreams, and courage made history.  Unfortunately, for the two brothers from California and their heavy metal t-shirt empire, that slogan has not yielded the same inspirational ending.

QUOTE OF THE DAY:  “Being ignorant is not so much a shame, as being unwilling to learn.”  Benjamin Franklin

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Ford Had A Better Idea: Bet Its Blue Oval Logo, Save the Company


“Blue, blue, my love is blue.” Love Is Blue, recorded by Paul Mauriat

When you’re one of the Big Three auto makers, and looking to avert financial Armageddon, who you gonna call?  When Ford faced that decision, it called on its most valuable asset–its trademark.  A few years back, Ford pledged everything it owned, including its Blue Oval  Logo, as collateral for a multi-billion dollar loan that kept the company out of bankruptcy.  And that was no easy thing to put at risk.   As reported in Business Week, when Bill Ford, great-grandson of Henry, signed the loan papers that pledged the Blue Logo, he felt like he was signing away the Company’s heritage.  And to a large extent, he was.  Trademarks, especially ones like Ford’s Blue Oval, do more than simply distinguish one brand from another.  They embody a company’s history, its reputation, its bond with consumers, and all the other intangible but vital values that go into the crucible for forging goodwill.  Factories can be rebuilt, new tools can be bought, new cars can be designed.  But a famous brand can never be duplicated or replaced–it is priceless.  Imagine McDonald’s without the Golden Arches.

Since Ford took the fateful and potentially fatal step of putting its logo in hock, the automotive gods have smiled on the American legend founded by Henry Ford in the early days of the 20th Century.  It’s fortunes have soared, so much so that this past week, two ratings firms upgraded its bonds to investment grade.  And with that favorable turn of events, Ford was able to reclaim the Blue Logo it put up for collateral.

So now, Bill Ford is breathing sighs of relief.  And great granddad can return to resting in peace.

QUOTE OF THE DAY: “Coming together is a beginning; keeping together is progress; working together is success.”  Henry Ford

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Boone To Consumers: Pat Boone First To Fess Up To False Celeb Endorsement

“You can’t hide your lying eyes.”  Lying Eyes, Eagles

I rarely think about Pat Boone.  Sure, as a kid, I may have found him mildly appealing, just as I perversely liked watching Myron Florin navigate the accordion on Lawrence Welk even as I devoured every Beatles record I could lay hands on.  Wholesome entertainment has its time and place.  And for Mr. Boone, I assumed that place today was Branson, Mo., that Mecca of middle of the road.

So it came as quite a surprise, if not shock, to discover that Pat Boone wrote a key chapter in legal history.  On last week’s installment of NPR’s unfailingly clever “Wait, Wait, Don’t Tell Me!,”  hosts Peter Sagal and Carl Kassel devoted an entire segment to Mr. Boone.  They quizzed their guests, the comedy/music duo Tenacious D (featuring actor Jack Black)  about obscure factoids relating to a performer they called Tenacious B, none other than Pat Boone.

And among the revealed trivia was this gem:  In 1978, Pat Boone became the first celebrity to accept responsibility for endorsing a product that failed to deliver as advertised.  He’d appeared in an ad for an acne medication, telling consumers that the salve was a “real help” in keeping his four daughters blemish free.  Turned out, that statement wasn’t true.  Chastened when challenged by the FTC, Mr. Boone accepted personal responsibility and agreed to pay restitution.

So while he may have been willing to bend the truth for a paycheck, he at least had the integrity to make amends.

Boone not only set a precedent for decency in the face of culpability, he also helped set the standards for future celebrity endorsements.  When an actor, athlete, or other entertainer  endorses a product, they must make “reasonable enquiries” that claims are legitimate, and cannot say make claims that contradict what they’ve seen or know.

So it seems we have more to thank Pat Boone for than we thought.  Not only did he popularize white bucks, he set the standard for not passing the buck.

QUOTE OF THE DAY: “Whoever is careless with the truth in small matters cannot be trusted with important matters”  ―    Albert Einstein

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Skechey Claims–Sneakers That Make You Fit Legit?

“Maybe if we think and wish and hope and pray it might come true.”  Wouldn’t It Be Nice?, The Beach Boys

Wouldn’t it be nice to ditch the long runs, the grueling spin classes, the brutal abs workouts and shape up just by walking around?  Skechers, a maker of athletic footwear, promised just that with several lines of sneaks guaranteed to tone muscle and shed pounds.  Sounds too good to be true. But Skechers backed it claims up with scientific studies.  Conducted by medical professionals!  And the pubic, spurred on by celebrity endorsements,  snapped at the chance to get svelte by doing little more  than bending over to tie their shoelaces.  Sales of Skechers and similar excershoes exploded, reaching more than $1 billion last year.

Trouble was, as Skechers’ coffers grew fat, waistlines and butts didn’t recede as advertised.  And when the FTC reviewed the situation, it found gaping holes in the shoemaker’s science.  As reported by CBS news, :, one study involved a lone subject, another had no comparison with ordinary shoes, and a third was filled with errors and sketchy analysis.

So the FTC sued to stop Skechers from claiming that its shoes deliver no-sweat fitness.  Wishing to side-step a protracted legal battle, Skechers has settled with the FTC to the tune of $40 million.  So now, consumers who shelled out upwards of $100 for the dream of effortless fitness can now apply for a sliver of the settlement money.

And Skechers?  The company marches on.  Announcing the settlement in an official statement, it said: “The Company fully stands behind its toning shoe products and technology and is permitted under the settlement to continue to advertise that wearing rocker-bottom shoes like Shape-ups can lead to increased leg muscle activation, increased calorie burn, improved posture and reduced back pain.”

So once again, its Couch Potato emptor.


“A lie can travel half way around the world while the truth is putting on its shoes.” Charles Spurgeon

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Y Not MCA? Village People Singer Reclaims Copyrights

“Macho, macho man.  I’ve got to be a macho man.”  The Village People

Mention the Village People, and thoughts turn to jam-packed stadium crowds lifting their arms above their heads to spell out Y-M-C-A.  And invariably, those of us of a certain age recall the eclectic archetypes who comprised the Village People and made them so iconic–the sailor, the police man, the Indian Chief, the biker.   With songs like “YMCA,” “In The Navy,” and of course, “Macho Man,”  the “People” left their indelible mark on American culture.  Their music has joined “Shout,” “The Macarena,” “The Electric Slide,” and “The Hokey-Pokey,” in the Pantheon of wedding and bar-mitzvah music.

Now, one Village Person is trying to get his due, financially speaking, and he’s cleared the first hurdle.   Long ago, the People signed away their copyrights.  But as reported in the New York Times, , a long-dormant provision of the Copyright Act let’s musicians such as Bruce Springsteen, Tom Petty, and Eagles, have a do-over.  The law says that after 35 years, an artist who signed away rights as a youngster, often on unfavorable terms, can “recapture” those rights by following procedures set out in the Act.

And that’s what Victor Willis, the YMCA’s “cop,” has done.  He’s won the first stage of a legal battle, with a Federal court ruling that he is entitled to terminate his portion of the YMCA’s publishing deal for “YMCA” and 3o-plus other songs.

An appeal could follow.  Or, Willis can try to strike a new and better bargain.  But whatever the outcome, one thing’s for certain:  when it comes to dealing with similar efforts by musicians to terminate their deals and reclaim their rights, record labels can no longer afford to brush them off.

On the TV show “Different Strokes,” diminutive Gary Coleman famously was prone to exclaiming “What you talkin’ about Willis.”  Now when the YMCA’s Willis and others talk, the record industry will listen.

QUOTE OF THE DAY:  “You’re a local band until you get a record contract, then all of a sudden Bruce Springsteen is your competition.”  Sammy Llana, The Bodeans

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David’s In The Kitchen With Finnegan: INTA In DC

“Well this is my back yard – my back gate I hate to start my parties late.”  My Party, Dire Straits

This blog is dedicated to chronicling the intersection of music, art, culture, politics, and IP law.  All of those forces came together spectacularly last night as my law firm, Finnegan, hosted its 16th concert reception at the International Trademark Association’s Annual Meeting here in Washington D.C.   Back in ’97, we at Finnegan hit upon a recipe for party success–combine an inspiring setting, superb cuisine and convivial beverages, first rate music, and a few thousand of your best clients, colleagues, and friends, mix cleverly, and voila–you have an event to remember.  From San Francisco’s legendary Fillmore West to the House of Blues, Boston, these soirees have become the marquee event on Tuesday night at INTA.  Last night was no exception.  We took over the Newseum–a stunning architectural gem situated between the Capitol and the White House, and dedicated to news and journalism.  As soon as the doors opened at 9:00 p.m., a stream of IP professionals from around the world wound throughout the building, exploring provocative exhibits ranging from 18th century newspapers to portions of the Berlin Wall and the Twin Towers.

Providing the soundtrack for the evening was DC favorite David Kitchen and his crack band.  Combining the verve, energy, and harmonies of the Beatles with the soul and grit of Roots music,  Kitchen and the band captivated an audience of thousands, inspiring several revelers to kick up their heels in the Newseum’s main atrium.  A masterful cover of Todd Rundgren’s “In Your Eyes,” brought the vibe to crescendo level.  Moments later, the clock struck 11:00, and like IP Cinderellas, our crowd was ushered out the Newseum doors into the misty Washington night.  There, with the rotunda gleaming to the left and 1600 Pennsylvania Avenue beckoning to the right, all thoughts of contentious legal and political issues melted away.  We were aglow.

Music has a way of doing that.

QUOTE OF THE DAY: “There was music from my neighbor’s house through those summer nights. In his enchanted gardens, men and girls came and went like moths, among the whispering and the champagne and the stars. I believe that few people were actually invited to these parties. They just went.”  Nick Caraway, The Great Gatsby, F. Scott Fitzgerald.


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Once You’re Gone, You Can Never Come Back? Golan v. Holder Takes Copyright to New Heights

“Out of the blue and into the black.  They give you this but you pay for that.  And once you’re gone, you can never come back.”  Neil Young

In “Hey Hey, My My,”  Neil Young lamented the fates of Elvis and Johnny Rotten.  But his lyrics could have applied as well to the fates of  many songs, books, and other creative works that originated outside the United States, were protected by foreign copyright, but had entered the public domain in the United States.  Those works  free for anyone to perform, reproduce, or use in this country.  That situation was a boon for orchestras, singers, publishers and others, who had a trove of material to use for free.  At least that was the case until the U.S. Congress stepped in.  In 1994, Congress passes a law to implement treaty obligations imposed by a global agreement–the so-called Uruguay Round.  The law essentially rescued a large volume of foreign based works from the public domain and put them back under copyright.

The law threatened to impose a hefty toll on users who had become accustomed to using those works on the public domain’s “freeway.”  So a coalition of orchestra conductors, educators, performers, motion picture distributors, and others challenged the law.  They argued that the law violated the Constitution, challenging Congress’s right to resurrect works whose copyrights had died.  They also complained  that the law trammelled their freedom of speech.  The case is known as Golan v. Holder.

The U.S. Supreme Court, in a 2012 opinion by Justice Ginsburg, rejected the challenge across the board.   The Court confirmed Congress’s power to restore copyrights, just as the Court had previously affirmed Congress’s power to lengthen their term.    The Golan v. Holder decision confirms that works protected by foreign copyright also enjoy the protections of the U.S. Copyright law for the rest of their term in their home country, even if those works had entered the public domain in this country.  And the Court showed no sympathy for the challengers’ claims that plucking works from the public domain would put free-riding performers on the sidelines or in the poorhouse.

So now, orchestras will have to pay to play Prokofiev’s Russian-born Peter and The Wolf,  just as they pay to perform Aaron Copeland’s quintessentially American “Fanfare For The Common Man.”  But the United States will be able to honor its Uruguay Round obligations, U.S. copyright law will be harmonized with international standards, and, to paraphrase Neil Young, everyone can “Keep on Rockin ‘In the Free World,” just not for free.

Quote of The Day:  “If music be the food of love, play on. ”   William Shakespeare

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Strange Pair: Mismatched “Sox” Team Up In Pitched TM Battle

“Put me in coach, I’m ready to play today!”  John Fogerty, Centerfield

The Boston Red Sox and Chicago White Sox have little love for each other on the field.  But when it comes to protecting their names, they are natural allies.  The two Sox of different colors have paired together to block a shoe company from registering the brand name “SOXX”  for running shoes.  As reported by IP360,, Boston and Chicago both use “SOXX” as their nicknames.  Both use those nicknames as brand names for athletic wear.

And both want to make sure that they’re the only ones that do so.  Hence, the ball clubs’ decision to take the mound to pitch their cases to the Trademark Trial and Appeal Board.  But the shoe company, INC International, won’t back away from the round-ball Sox’s high hard one.  INC has stepped up to the plate to deny Boston and Chicago’s claims that INC’s use of SOXX creates confusion with the name as used by the Boys of Summer.

Legal analysts predict that the diamond based Sox will easily send INC to the dugout.  But in litigation as in baseball, Yogi Berra’s observation “It ain’t over till it’s over”  rings as loudly as a line drive off the foul poll.   For starters, the two rival clubs will need to explain how they each can use SOXX without confusing their respective fans and customers, while contending that any other use of SOXX, such as INC’s for running shoes, should be off limits.  As Pete Rose once said:  “Never bet on baseball.”

QUOTE OF THE DAY:  “You may glory in a team triumphant, but you fall in love with a team in defeat. ”  ―    Roger Kahn, The Boys of Summer

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View From The Bridge: Munch’s “Scream”

“Yaaaaaaaaaaaaaaaaaay!! ”  We Won’t Get Fooled Again, The Who.

Edvard Munch painted it over a century ago.  Even then, he must have anticipated The Scream’s  potential to become an icon for the ages.  He painted at least four versions.  Three hang in museums.  And as reported on NPR this morning, the fourth, in private hands, goes on the auction block today.  It could fetch upwards of $80 million.

The primal image of a figure on a bridge, standing under the swirl of a blood-red sky, hands clutched over the ears, mouth agape in a silent wail of terror,  is perhaps the purest and most succinct expression of humanity’s panicked premonition of the horrific events about to unfold as the 20th century loomed.

It also makes for a great satire and advertising fodder.  The Scream has been employed, adapted, reworked, and reimagined so many times that it has entered into the realm of cliché.   Warhol gave it his Factory treatment, M & M’s used it in an ad campaign, and John Hughes paid homage to it in “Home Alone,” having young Macauley Culkin mimic the “Screamer’s” pose when his character, Kevin, splashes himself with astringent after shave.

So today, as Southeby prepares to collect a hefty commission for hawking The Scream, art critics and art lovers can pay homage to Munch and his tortured genius.  Advertisers and merchandisers, on the other hand, can give thanks to the public domain, which makes iconic images such as The Scream and The Mona Lisa, fair game for commercial use.

QUOTE OF THE DAY: “Nature is not only all that is visible to the eye… it also includes the inner pictures of the soul.”   Edvard Munch

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Don Draper Sees Orange: Ho Jo’s On Mad Men

“Said Simple Simon to the pie man, let me taste your wares.”  Nursery Rhyme

Howard Johnson’s had it good.  In the 50’s and 60’s, when Americans hit the road, the place they likely stopped was a Ho Jo. Before McDonald’s, Burger King, and later Starbucks made quick, dependable, consistency the norm in highway dining, motorists could count on Howard Johnson’s to deliver quality food at affordable prices.

Indeed, time was that if your stomach grumbled as you rumbled  down the turnpikes of New Jersey, Pennsylvania, or Ohio, your only choice was  Ho Jo’s.  Still, travellers came to crave Ho Jo’s signature fried clam strips and its famous 28 flavors of ice cream.

A trip to Howard Johnson’s was an event.  So much so that the writers of TV’s Emmy magnet, Mad Men, worked Ho Jo’s into this year’s story arc, with  head Mad Man Don Draper leaping  at the chance for a long weekend with his bride at an upstate Ho Jo restaurant/motor lodge.

The chain’s signature look– the orange steepled roof–was an architectural icon that stood out and helped attract patrons.  No surprise that Ho Jo’s roof design earned one of the first Federal trademark registrations for the appearance of a building.

As a boy on trips from central New Jersey to Manhattan, I’d delight when my dad would break up the interminable hour and a half trip with a stop at Howard’s, which inevitably included a plump hot dog on a split white bread bun.  Later, when we moved to the ‘burbs, I couldn’t believe my good fortune when I discovered a Howard Johnson’s restaurant just blocks from our new split-level.  That Ho Jo commanded a corner on Route 1, staring down the dilapidated cabins of the Sleepy Hollow Motel across the way, both holdovers from the pre–I 95 era, when a trip through Jersey to points south entailed traffic lights, jug-handles for left turns, and Howard Johnson’s.

So what happened to Ho Jo?  Tastes changed.  On Mad Men, Draper’s idyllic weekend escape unravels when the insouciant Mrs. Draper-the-second rejects a heaping dish of neon orange sherbet that Don eagerly wants her to enjoy.   To Draper, a child of the Depression reared in rural economic and emotional poverty, the Day-Glo Ho Jo orange meant progress.  To his young, sophisticated wife, it  was garish, passe.  In the late ’60s, there was, to quote Buffalo Springfield, “something happening here,” and that “something” in the turbulent Vietnam era didn’t include Howard Johnson’s.

Howard Johnson’s gradually faded away, the orange roofs supplanted by Golden Arches and barrista bars.  As of last year, only three Ho Jo restaurants remained.  Two are in upstate New York.  Are any of today’s Mad Men chomping at the bit to escape their Madison Avenue pressure-cookers for a weekend of clam strips and orange sherbet?  We can dream, can’t we?

QUOTE OF THE DAY: “The most important thing in life is style. . . . It is style that gives content the capacity to absorb us to move us it is style that makes us care.”  ―  Tom Robbins, Another Roadside Attraction. 

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