Monthly Archives: March 2020

“I acquired a weakness over the weekend for a guy with a gold tattoo.” “New Tattoo” music and lyrics by Ana Egge and Maryann Kranis

It’s a generational thing, I know, but I just don’t get tattoos. Back in the day, they were associated with grifters, carnies, and drunken sailors. Popeye had one on his forearm. Mighty Mouse did not.

Recently, however, I got an anthropology lesson on tattoos and their cultural significance. I learned that “tattoos have been part of human expression for thousands of years,” and that “modern tattoos reflect the personal expression of the person bearing the tattoo and are intended for that purpose.”

That lesson came not from a book or article, but from expert testimony in a court decision involving the tattoos of none other than LeBron James. The issue was whether the maker of the video game NBA 2K infringed the copyrights in the tattoos of Mr. James and two other NBA stars when the the trio were included as video game figures, in NBA 2K, tattoos and all.

First, some basics. Yes, tattoos are pictorial works subject to copyright. And yes, absent a written agreement between the tattoo artist and the client, the artist owns the tattoo copyright, which gives the artist the right to control when and how the tattoo is reproduced. So in theory, including Mr. James’s likeness with his tattoos could implicate the tattoo artist’s copyright.

In this case, the artist had granted an exclusive license to the copyright to the plaintiff, a company formed primarily to enforce the copyright against the video game company and others who similarly included likenesses of tattooed stars in commercial products such as video games.

The court of law in this case took a very dim view of the plaintiff’s efforts to profit from the tattoos’ presence in a virtual court of basketball. In fact, the judge agreed with all of defenses:

First, U.S. District Judge Laura Taylor Swain ruled that there was no copyright infringement because the tattoos in question were not “substantially similar” to the copyrighted tattoos. The virtual tattoos were a fraction of the actual tattoos in size and were barely visible, appearing only fleetingly on moving figures who themselves were part of a larger group of moving figures in the video game as its being played.

Second, the court ruled that the artists had granted LeBron and the others implied licenses to allow the tattoos to be publicly displayed, including in video games. “The tattooists necessarily granted the players nonexclusive licenses to use the tattoos as part of their likenesses,” Judge Swain wrote. “The players, who were neither requested nor agreed to limit the display or depiction of the images tattooed onto their bodies, had implied licenses to use the tattoos as elements of their likenesses.”

Finally, Judge Swain concluded that including the tattoos in the virtual likenesses of LeBron and others was “fair use.” She concluded the company had made a “transformative use” of the tattoos, noting: “The tattoos were originally created as a means for the players to express themselves through body art,” Judge Swain wrote. “Defendants reproduced the tattoos in the video game in order to most accurately depict the players.”

Judge Swain was also swayed by a survey conducted by Dr. Deborah Jay that showed that consumers do not buy NBA 2K for the tattoos on LeBron James’s likeness.

The full court press of defenses thus produced a blowout win for NBA 2K and a stinging loss for the plaintiff.

As for me, I still may not totally get cultural phenomenon that is the modern tattoo. But guided by the expert testimony in this case about the history and significance of tattoos across the millennia, I can finally accept that my aversion and skepticism were narrow-minded, misguided, and worthy of an OK BOOMER retort.

The case is Solid Oak Sketches LLC v. Visual Concepts LLC et al., case number 1:16-cv-00724, in the U.S. District Court for the Southern District of New York.

QOUTE OF THE DAY: “Show me a man with a tattoo and I’ll show you a man with an interesting past.”
― Jack London

“Black clouds overhead, old man says looks like rain. Thieves’ Road winds to the Black Hills sign.” Pale Sun, Cowboy Junkies

Every day these days feels like it has a black could overhead. New revelations, new worries. But even with so much uncertainty in the air, we trademark junkies can find something to write about other than panic and pandemic.

I was out for a brief dose of sun and fresh air, walking along deserted streets with my rambunctious dog, when I came across two bright orange road signs. Both were broken, crumpled, bent over to the ground. Could the Covid-19 be so potent as to level even these rugged devices built to withstand heavy winds and other physical adversities?

As my dog began dragging me to the nearest shrub for some satisfying sniffing (by him, not me), I noticed that the crippled road signs each had twin plastic orange springs at the base. And instantly, I recognized the source. These were signs made by TrafFix, the company that years ago had famously sued to protect its orange dual-spring design as a trademark. The case was TrafFix Devices, Inc. v. Marketing Displays, Inc. It made it all the way to the U.S. Supreme Court, where TrafFix’s trademark hopes were dashed by the Court’s unanimous decision. The Court held that no matter how recognizable those dual-springs might be, (as they were to me) trademark law can’t protect them because they are functional features whose main purpose was bolstering street signs against the wind and elements, not serving as a brand. The Achilles Heel for TrafFix;s trademark claim was another form of intellectual property–a utility patent. The patent covered the very characteristic that TrafFix sought to protect by trademark, leading the Supreme Court to conclude that giving TrafFix trademark rights on top of its patent would unfairly give TrafFix a perpetual monopoly on a useful feature and put other companies at a competitive disadvantage.

The TrafFix case thus joined a body of famous trademark cases that, like modern celebrities such as Kanye, Madonna, J-Lo, and Shakira, are known simply by one name. (I’ll cover others in future posts.)

Pulling my dog away from the felled road signs, their “Caution” warnings flattened by some mysterious force, I glanced up and saw a trio of mature cherry trees in full bloom across the street. That they had been planted in front of a funeral home did not dim the thrill of seeing the delicate, ephemeral pale pink blossoms. We may not be able to go to see the annual wonder of cherry blossoms draping the tidal basin and Jefferson Memorial like a gauze tapestry, we know that Spring is here, even if a few TrafFix springs, and ourselves, have seen better days.

Quote of the day: “I don’t think people are going to talk in the future. They’re going to communicate through eye contact, body language, emojis, signs.” Kanye

“If I cross your path again, who knows where, who knows when, on some morning without number, on some highway without end.” Keep Your Distance, music and lyrics by Richard Thompson

In what feels like the blink of an eye, our world has been turned upside down, inside out. Phrases we never before heard or uttered–coronavirus, social distancing–became part of our shared lexicon overnight. Many of us who can’t remember the last time we missed a day of work have seen our offices closed. So we’ve converted dining room tables and spare rooms into satellite offices for our companies and firms. In a matter of days, we’ve begun to suspect that these strange days may become our new normal.  Sure, this enforced proximity to spouses, children, and pets has its joys. But let’s face it, there are only so many times you can read that book, stream that show, walk to the park, and have that conversation before you begin to miss the solitude of the daily commute and anticipation of lunch at Chipotle.

With the very core and fabric of our economy and way of life facing this existential threat, those of us who practice trademark law can be forgiven for beginning to question whether our vocation has anything to add for the safety and welfare of our communities and our nation.

Turns out, its an easy question to answer. Yes! Now, when facing or experiencing shortages of vital supplies and products, we need trademarks more than ever. The U.S. has long been a leader in protecting all forms of intellectual property. We’ve been on the front lines of enacting laws to combat counterfeit products, aka low-quality fakes and knock-offs, to tackle cybersquatting, i.e., hijacking trademarks in phony email addresses, and to beat back grey market goods, i.e., goods intended for foreign markets that differ materially from genuine goods in quality, performance, or warranties. These laws that have protected us so well so far now are more vital than ever.  If unscrupulous profiteers prey on fear and panic with ersatz merchandise, the  Federal Lanham Act allows counterfeit products to be seized from store shelves and ports of entry.  And if online pirates try to deceive consumers with fake websites selling fake products online, those fraudulent sites and products can be taken down. 

Simply put, the ®, the symbol that signifies a registered trademark, has long served business and and consumers well in ordinary times.  In these extraordinary times when nothing seems certain and everything feels surreal, there’s comfort in knowing that ® is up to the task.

QUOTE OF THE DAY: ‘Never Have Your Dog Stuffed’ is really advice to myself, a reminder to myself not to avoid change or uncertainty, but to go with it, to surf into change. Alan Alda
Read more at https://www.brainyquote.com/topics/uncertainty-quotes