Category Archives: copyright

Free Samples? Or Risky Riffs?

 

“I need a unit to sample and hold. But not the angry one. A new design.” Sample and Hold, music and lyrics by Neil Young

free sampleDigital sampling has become a staple of the recording industry. What’s sampling? It’s taking a snippet from one recording and splicing it into a new one. Typically, the sample is just a few bars, even a few notes. And it’s likewise typical for the producers and artists to digitally tweak those few bars or notes to alter their pitch or key and adding additional embellishments. As often or not, the listener is unaware that the “new” recording includes a “re-purposed” sample.

But is it kosher to lift a fragment from one copyrighted recording and implant into a new one?  That question has produced judicial sparring that rivals the most thorny of Talmudic conundrums.

Until last week, only one U.S. Circuit Court of Appeals, the Sixth Circuit, whose territory includes Nashville, aka “Music City,” had weighed in on this issue. It did so with Draconian precision, laying down a bright-line test. The case was Bridgeport Music Inc,. v. Dimension Films. The sample in question consisted of a chunk of guitar funk plucked from a recording of “Get Off Your Ass and Jam” by George Clinton. Specifically, a two-second sample from a four-second guitar solo was copied, the pitch was lowered, and the copied piece was looped and extended to 16 beats. Neither the brevity of the sample nor the transformation it underwent was enough to avoid a finding of copyright infringement.In the Sixth Circuits view: “[a] sound recording owner [and only a sound recording owner] has the exclusive right to ‘sample’ his own recording.”  And while a “de minimis” exception applies to other types of works (that, is, you likely can copy a phrase or two from a 400 page book without infringing the author’s copyright), the Sixth Circuit held that sound recordings are different. Samplers hoping to invoke the de minimis exception need not apply. In other words, if you want to sample, get a license and pay the piper.

But doesn’t that rule stifle creativity, which is what copyright law’s supposed to encourage? Not according to the Sixth Circuit. Leaning towards protecting the commercial interests of record labels and artists, the Court rejected a free-ride philosophy in favor of a market-driven approach. The Court identified two main reasons why musicians sample–either the sample adds value to a new recording because listeners recognize its original source, or it adds value by saving the cost or recording the same riff a second time. In either case, the sampler gets something of value, and should be willing to pay for it. Let the market decide the price.

But just last week, the Ninth Circuit Federal Court of Appeals, which includes L.A. within its jurisdiction, took the Sixth Circuit and its bright line approach to task. That case, VMS Salsous v. Ciccone (aka Madonna) also involved mining a prior recording for a musical sliver and then sliding it into a new track. In this case, the sliver was a .23 second “horn hit”–four trumpet notes forming a single chord, that originally appeared in the mega-hit dance track Ooh, I Love It (Love Break), recorded by producer Shep Pettibone in the early 1980s. In 1990, working with Madonna, Pettibone reached back to Love Breaks to salvage that same horn hit, doctoring it up in the process, transposing it to a new key, truncating it, and even adding other sounds to the chord itself.

If Pettibone and Madonna had worked this musical alchemy in Nashville and had been sued for copyright infringement there,  they would have been found guilty under the Sixth Circuit’s Bridgeport decision.  The Ninth Circuit, however, concluded that its sister court’s logic was badly flawed and that its refusal to apply the de minimis exception was dead wrong. The panel of three West Coast judges saw no basis in the Copyright Law or its legislative history to treat sound recordings any different from other works, such as books. That’s good news for recording artists who happen to be sued in L.A. or other places within the Ninth Circuit. But the Ninth Circuit’s ruling doesn’t change the Sixth Circuit’s decision, and it leaves artists in New York, Austin, Chicago, St.Louis, and other music towns on uncertain ground.

Such a  spat between two Courts of Appeal, however, may be the overture for the Supreme Court to step in and call the tune on digital sampling. Should music sampling be free, as the Ninth Circuit found? Or should producers have to pay to play, as the Sixth Circuit concluded? The answer may not be blowin’ in the wind, but its not exactly clear either. In other words, don’t be surprised if the Supremes refuse to decide whether digital samplers must “stop in the name of law” and leave the issue for Congress to sort out. And that could prove to be a “long and winding road.”

QUOTE OF THE DAY:  “People go back to the stuff that doesn’t cost a lot of money and the stuff that you don’t have to hand money to over and over again. Stuff that you get for free, stuff that your older brother gives you, stuff that you can get out of the local library.” Frank Black aka Black Francis.

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Turtles to Satellite Radio: Get Sirius About Pre 72 Public Performance Royalties

“Got a idea tell you what let’s do
Let’s go out to that place on the Turtle Bayou
We’ll maybe get lucky, maybe get shot
It couldn’t be half of the trouble I got” Turtle Bayou by James McMurtry

You remember the Turtles? The mid ’60s group best known for the hit song “Happy Together?” The semi-parody love song that ended with the line “So Happy Together. How is the weather?” Not exactly the type of sheer profundity that propelled Lennon, McCartney, Dylan, and Paul Simon into Rock and Roll immortality. And yet, when it comes to the music of pre ’72 AM radio, the cornucopia of rock, soul, pop, psychedelic, country, and easy listening that all managed to coexist on stations such as WABC in New York and WFIL in Philly, the Turtles just may go down in history–not for their music, per se, but for their persistence in pursuing their legal rights.

It all has to do with the interplay between Federal Copyright law and state protection. In general, where Copyright is concerned, Federal law trumps state law under a doctrine called “preemption.” Simply but, when Congress passes a law to implement a constitutional right, like copyright or patents, the states generally can’t step in with laws of their own–otherwise, there could be overlap, inconsistencies, and confusion. But what about areas where Congress has chosen not to act? One of those areas concerns so-called “public performance rights” for songs recorded before 1972. Under current Federal Copyright law, when a satellite radio station plays a song recorded after 1972, the station pays royalties to the composer and to the performer. The latter royalty is called the “public performance right.” But this performance right applies only to songs recorded after 1972. Essentially, satellite radio gets to play pre-72 recording for free, according to Federal Law.

Many musicians with hit songs from before MTV object to this free-pass for old recordings. They claim that it robs them of income if not livelihoods. Facing the music, several states have passed laws to “correct” the situation. Not coincidentally, the biggest states to do this–New York, California, FLorida–are where many disgruntled makers of Golden Oldies live and work today.

Sirius satellite radio has been fighting these state laws; and the band that has been their defender is not the Beatles, the Rolling Stones, The Who, or any other giants of the Woodstock era. No, it’s the Turtles who have come out of music history’s shell to press the case for pre ’72 royalties under state law.

And like that mythical contest that pit a speedy and cocky frontrunner against a slow but steady underdog, the Turtles have been winning the race. Just last week a Federal Court in New York affirmed a ruling that the satellite radio must pay the tab for pre ’72 public performance royalties. Judges in California have reached the same conclusion, and a Florida court is expected to rule on the issue soon.

So when it comes to listing the most influential animal-themed bands of the 20th Century, the Turtles may be an afterthought after BYRDS, ANIMALS, EAGLES, CRICKETS, and BEATLES; but all of these groups have either disbanded, been decimated by the ravages of time, or are infamously acrimonious. With their legal legacy, however, the TURTLES appear to be still Happy Together.

QUOTE OF THE DAY: “One of the nice things about a favorite pop song is that it’s an unconditional truce on judgment and musical snobbery. You like the song because you just do, and there need not be any further criticism.” Henry Rollins

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Legal Eagle or Fairly Mocked Bird? Don Henley Wings Into Court

“He’s a tortured artist. Used to be in the Eagles. Now he whines. Like a wounded beagle. Poet of despair! Pumped up with hot air!’ Don Henley Must Die, by Mojo Nixon

Ask a serious music fan about Eagles and their singer Don Henley, and you’re likely to hear sentiments not so different from Mojo Nixon’s satiric verses in “Don Henley Must Die.” Sure, Mr. Henley has been outspoken in support of artists’ rights, testifying before Congress on a symphony of issues relating to recording industry practices. And his positions on environmental issues, reflected in his stewardship of the Waldon Woods Project, have been pristine.
So why do music fans like me–whose tastes swing between the Eagle’s forerunners and many of the band’s progeny–cringe at the thought of Don Henley–the man and his music? Why, when we hear him crooning on “The Boys of Summer,” do we immediately pray for an early frost; for the top to go up and wipers turned on in old Don’s California idyll? Could it be that the maitre d’ at the Hotel California, the head honcho in that band of Desperadoes, has seen one too many Tequila Sunrises and simply lost his sense of humor?
Judging from Mr. Henley’s latest legal foray, it does not take a 12-part podcast from NPR to conclude that when it comes to his “Right of Publicity” Don Henley has checked his funnybone at the courthouse door.
Here’s the story. For years, menswear companies from J. Crew to Joe A. Bank have sold long-sleeved, cotton shirts with crew collars and three or four button fronts. These casual shirts are called Henleys–taking their name from the rarefied world of rowing and regattas on the Thames near Oxford. And for decades, if not centuries, “to don” has meant the act of pulling on a uniform–such as a jersey and, yes, a Henley tee. So Englishmen may have been donning Henleys since Henry VIII serenaded Ann Boleyn with “Welcome to the Hotel Tower of London, such a lonely place.”
Henry, being king of court, could dispense bad tunes and swift justice however he wished when spurned by a wife or rival.
Don Henley, however, must resort to the U.S. courts to protect his name. And that’s what he did when he took offense at an advertisement by U.S. clothier Duluth Trading, a company known for edgy, sometimes cheeky ads for traditional clothing geared to tradesman and outdoor enthusiasts featuring Giant Angry Beavers, Groping Grizzlies, and Unruly Bushes. One ad, for Duluth’s “Long-Tail Tee,” even proposes a “Cure for Plumbers’ Butt.” Cheeky indeed.
But when, in advertising its long-sleeve button pullover shirt, Duluth urged customers to “don a Henley, take it easy,” the Eagles singer/drummer didn’t appreciate the humor. Instead of laughing with Duluth he sued Duluth–in California, where else? Henley alleges in his complaint that Duluth’s ad for Henley shirts deliberately invokes Mr. Henley’s name and his association with the Eagles, and are aimed at “exploiting the celebrity of Mr. Henley and the Eagles’ hit record.” Mr. Henley’s complaint also alleges that consumers, not Henley, are the real victims: “Large numbers of consumers . . . will unquestionably believe that Mr. Henley is associated with and/or has endorsed {Duluth]and its products . . .”
Duluth, for its part, seems to be taking things in stride, as its whimsical ads might suggest. “The advertisement is obviously a joke (something we presume not even Mr. Henley disputes),” Duluth wrote in asking the court to toss Henley’s suit. “It is self-evident that the use that was made of Mr. Henley’s name was a joke intended to highlight the coincidence that [he] shares his last name with a ubiquitous casual shirt and that his first name means ‘to wear.'”
So we have Duluth’s claims of Freedom of Speech and Expression lined up against Mr. Henley’s right to protect his name and image from being used to confuse or deceive consumers and his further right to control who may or may not exploit his name for commercial gain. There’s just enough traction on both sides that the court may have less than a peaceful, easy feeling in deciding who’s right. The outcome likely will turn on whether the court finds Duluth’s ad “transformative”–that is, did the parodist or satirist infuse the work with enough creativity and original expression to merit the First Amendment’s protection. In other words, will the judge or jury get the joke, and think the joke is clever enough to side with Duluth? Or will they find that the joke is just a tepid excuse for identity theft. Cases like this usually settle, so we won’t likely know how and where the California court would draw the line. But we can safely say, whatever the outcome, that Duluth Trading is a far cry from all those “Desperadoes” Henley and his compadres glorified through their music. Perhaps the irony is lost on Henley; the man who entreated notorious thieves and killers Frank and Jesse James to “keep on riding, riding, riding,” has a short fuse when it comes to Duluth using a clever pun to sell Henley tees. But after living in the fast lane so long, Henley apparently know only one way to react when provoked–take it to the limit–one more time.

UPDATE: On January 22, the Judge denied Duluth’s request to throw the case out based on its so-called obviously-a-joke-defense. In a terse ruling, the Judge wrote: “Even assuming for the sake of argument that the transformative use test of Comedy III Prods., Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387 (2001) applies, Defendant has not established that its use of Plaintiff’s name – and the name of one of his band’s most famous songs – in its advertisement was sufficiently transformative on its face that a motion to dismiss should be granted.” Tranlation from legalese to plain-speak: Just because “Take it easy-don a henly” may be funny, doesn’t automatically mean Duluth is off the hook. To paraphraase “Take It Easy,” the Court did what Duluth didn’t want it to do: it said “maybe.”

QUOTE OF THE DAY: “It is the ability to take a joke, not make one, that proves you have a sense of humor.”
Max Eastman

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To Thy Selfie Be True: One Small Click For A Monkey, One Giant Leap For Copyright?

“You got yourself framed on the wall. And people come by and they look at your face. And they say it’s the fairest of all,” Your Picture by Camera Obscura

Monkeys, apes, and chimpanzees have had a long history in front of the camera on the silver screen and television. What would Tarzan have been without Cheeta? Reagan without Bonzo? Clint without Clyde? Charlton without his planet of them? And when it comes to TV, who can forget Peggy Cass, Jack Weston and their trio of adopted chimps on the 1961-62 series “The Hathaways?” Well, almost everyone. (Even I had a hard time remembering the premise of that show, which aired when I was 5. But it goes to show you–casting a non-human hominid in even a mediocre sitcom leaves a lasting impression.)

But a monkey behind the camera? Calling the shots, so to speak? Hard to imagine, despite the “infinite monkey theorem that posits “Give a thousand monkeys typewriters and infinite time and they will almost surely type Shakespeare’s plays.” But it’s actually happened, and it’s caused a copyright tussle that could be dubbed “Rumble in The Jungle II.”

Here’s the story: British wildlife photographer David Slater set off for a jungle shoot in Indonesia with thousands of dollars of equipment in tow. After setting up his gear, Slater walked away from his tripodded camera. As if on cue, a crested black macaque entered stage left and began snapping away. As described by Jay Caspian Kang in The New Yorker, “the result was hundreds of macaque selfies.” Most of the haphazard snaps were blurred. But the infinite monkey theorem prevailed, and one particularly affecting image–a headshot of a macaque sporting a goofy grin–went viral, to the delight of millions of viewers around the world looking for a respite from the grim news cycle and the fiasco of Bruce Jenner’s new hairstyle (which one pundit likened to Donald Trump’s morning pre-comb over mane.)

Everyone had a good laugh at the notion of a monkey selfie and the strangely compelling image it produced. Everyone, that is, except Slater.

He demanded that Wikimedia, which had posted to chimparrazzi’s handiwork, take down the offending snapshot, arguing that he, not, the monkey, owned the copyright. To Slater, a monkey pressing the shutter on cameras Slater lugged into the jungle is no different from an assistant pressing the button after Slater set everything up. But here, Slater had not held the camera or even composed the shot. The intermeddling monkey did.

Still, Slater has reason to be miffed. His plane ticket set him back a small fortune, not to mention the cost of his gear. Without his presence, the macaque would have been foraging for berries, not aping Richard Avedon. Yet as the images produced from his camera sweep the planet, Slater hasn’t earned a dime. In fact, this episode is costing him in legal fees to vindicate his position.

There’s one big problem for Slater, however. The U.S. copyright office backs the monkey! In a recent draft policy statement, the U.S. Copyright Office has clarified that it will not register works produced by plants, animals or “divine or supernatural beings.” Specifically tackling the flap between Slater and his meddlesome sidekick, the Copyright Office noted that it will refuse to register a claim if a human being did not create the work, and listed “a photograph taken by a monkey” and “a mural painted by an elephant” as examples of works that will not receive registration. And that policy jibes with the basic copyright principle that “she who presses the shutter owns the copyright.”

So it seems that, as so often has been captured on film for the movies and tv, a monkey and his hijinks have gotten the best of yet another homo sapien sap, once again proving the wisdom behind W.C. Field’s second most famous line “never work with children or animals.”

QUOTE OF THE DAY: “In the long history of humankind (and animal kind, too) those who learned to collaborate and improvise most effectively have prevailed.”
Charles Darwin

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Owner With His Head In the Sand?: Redskins Name Controversy Returns

“Old enough now to change your name.  When so many love you is it the same?”  Cowgirl In The Sand by Neil Young

Dan Snyder, owner of the Washington Redskins, (the capital’s storied NFL franchise), is no trademark neophyte.  An entrepreneur since his college days, Snyder has lifted the Redskins franchise to become one of the most valuable teams in sports.  Snyder reaps a fortune selling jerseys and other merchandise emblazoned with the REDSKINS name and logo–a profile of a Native American man. 

So with these invaluable trademarks fueling the engine of his success, it’s no surprise that Snyder waited until  all of Washington’s trademark professionals  flocked to arch rival Dallas before opening the latest chapter in the ongoing controversy over the REDSKINS name.  While lawyers from private practice and the USPTO were convening convivially in the shadow of Jerry’s Jones’ opulent new Texas stadium, Snyder defiantly declared to USA TODAY–“We will NEVER change the Redskins name.” 

Long simmering charges that the name is racist and disparaging to Native Americans bounce off Snyder like raindrops beading off a freshly waxed car.   He insists that the name only refers to his football team, and has lost any disparaging or barbaric connotations it once may have had.  And public opinion polls are like the buffet table at the Club Level of Fed EX Field–there is something for everyone, with surveys supporting each sides’ take on the name.

So Snyder would rather fight than switch. 

And the fight over the federal trademark registration for REDSKINS, once thought to be over, has returned.  Back in 1992, Native American groups and individuals petitioned the USPTO to cancel the REDSKINS trademark, alleging that the name is disparaging.  The Lanham Act, the federal trademark statute, forbids registration for disparaging marks.  The petitioners won round one, but ultimately lost on a procedural issue; the reviewing courts ruled that they had waited too long to bring their challenges. The Supreme Court declined to take up the issue.  Now, however, there’s a fresh case. This time the petitioners are younger and claim that they could not have acted sooner. 

The new case is again pending before the Trademark Trial and Appeal Board (TTAB).  The TTAB, however, only has the power to cancel the REDSKINS federal trademark registration, not stop the team from using the name.  Losing the TTAB case would be a setback, and could affect the team’s rights in dealing with counterfeit merchandise, especially imports. But is wouldn’t be a mortal blow; it would not force the REDSKINS to change their name. 

For the petitioners and their supporter, the real issue goes beyond whether Snyder gets to keep his certificate of registration.  One can easily think of  several antiquated and pejorative  nicknames for ethnic or racial groups that would be offensive if used as the name of a sports franchise.  How is REDSKINS any different, opponents of the name ask?

Abe Pollin, the beloved civic leader and owner of city’s basketball franchise had no qualms about changing its name from the Bullets to the Wizards when he felt that naming a team after a lethal projective sent the wrong message in a city then plagued by gun violence.  And surely, measures could be taken to honor tradition and preserve the essence of the football team’s  brand while eliminating a term that some, perhaps even many, find offensive.   Who remembers that the KNICKS are really the Knickerbockers and the METS really the Metropolitans? What would be lost in the long run by similarly calling Snyder’s team simply the SKINS? 

Snyder, however, insists his conscience is clear and that the name will “NEVER” change.  It may be good business.  But whether it’s right is a question that trademark law can’t answer.

QUOTE OF THE DAY:  “People who work together will win, whether it be against complex football defenses, or the problems of modern society.”  Vince Lombardi

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INTA The Great Wide Open

“Have you ever seen Dallas from a DC-9 at night?” Dallas by The Flatlanders

When you think of Dallas, many images snap to mind. The grainy, jarring frames of Abraham Zapruder’s home movie, Lee Harvey Oswald doubled over from the blast from Jack Ruby’s pistol, Tom Landry stalking the sidelines of the Cotton Bowl in his suit, tie, and hat, the portrait of Jock Ewing hanging over Miss Ellie’s mantle at Southfork, Tony Romo’s smirk, Larry Hagman’s devilish grin as JR Ewing over two generations of Dallas, the soap opera.

Trademarks, however, are not top of mind when you land at DFW or Love Field, not even as you make your way to the flagship Nieman Marcus in downtown Big D.

But here in Dallas this week in May, almost 10,000 trademark professionals–in-house corporate lawyers, outside counsel, Internet and domain name specialists, and flocks of experts and service providers–have descended on Dallas for the 135th International Trademark Association Annual Meeting.

Trademarks and Texas have come a long way since 1888 when the first annual meeting took place. Then, a “brand” in Texas literally meant a symbol seared into the hide of a cow. And justice was meted out by Judge Roy Bean, whose “Law West of the Pecos” entailed more hangings than injunctions for trademark infringement. (We shudder to think of how Judge Bean would have dealt with such devious hombres as counterfeiters and cyber squatters).

And those first INTA attendees back in 1888 would marvel at the range of topics swirling around INTA 2013–social media, fluid trademarks, gtdls, and the “food explosion” and other trendy subjects speak to the complexities and challenges of our brand-centric modern era.

Dallas has been hospitable and impressive. And steeped in history, from the life size sculpture of a long horn cattle drive that speaks to Texas’ Lonesome Dove days to the Texas Book Depository that reminds us of a dark day in November fifty years ago.

Having grown up in Lawrence NJ, I naturally gravitated to the Hotel Lawrence, a venerable establishment that makes up in friendly staff what it lacks in luxury. It’s just a block from Dealey Plaza, and sleeping in the vicinity of JFK’s final ride has conjured up some fitful dreams while rekindling interest in the “single bullet theory” and other conspiracies that seldom haunt my thoughts back home.

Yes, as those Texas troubadours The Flatlanders sing, Dallas is a beautiful sight, and a haunting one too.

QUOTE OF THE DAY: “Hang ’em first and try ’em later.” Judge Roy Bean.

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Like Water For Trademarks: “Fluid” Marks Take Shape

valentines_day_and_george_ferris_154th_birthday-1032005-hp

“So, if you’re tired of the same old story, oh, turn some pages.
I will be here when you are ready to roll with the changes.”  Roll With The Changes,” REO Speedwagon.

A few weeks ago, a colleague asked me if I could take her place speaking on a panel about “Fluid Trademarks.”  My first reaction, expressed  silently to myself–“What in the world is a “fluid trademark?”  My second reaction, expressed out loud and with utmost confidence–“Fluid Trademarks? Sure, I’d be happy to fill in for you.”   I figured, “I’m an experienced trademark guy.  I’ve  been an adjunct professor of trademarks at two Washington DC law schools. How hard could it be?”  And, my colleague and I, along with three other trademark lawyers, were about to start our own boutique law firm specializing in trademark law.  So accepting a speaking gig would be good exposure for the new firm–Kelly IP, LLP–which we launched on April 29.  [Check us out at www.kelly-ip.com

I began to tap into my brain’s logic center, hoping that I could solve the “fluid trademark” conundrum through sheer force of mental exertion.  I knew that trademark law protected far more than just names like “Amazon,” logos like Ford’s “Blue Oval,”  and symbols like McDonald’s  “Golden Arches.”  Protectible marks include color, like Owens Corning’s  pink for fiberglass insulation, sounds, like the roar of MGM’s lion, product shapes, like that of the iPod, and even the decor of restaurants, such as Fuddrucker’s.  Did “fluid trademark” refer to protection for clear, viscous substances, like motor oil or the irradiated, pulsating  ectoplasm of a lava lamp?

Fortunately, before my mental gymnastics led to a brain sprain, I summoned a Google web browser.  And the answer was staring me in the face.  The conventional multi-colored GOOGLE logo had morphed into a whimsical design, like the one above commemorating Valentine’s Day and the birthday of George Ferris, inventor of the Ferris Wheel.  A quick web search on Google itself confirmed what quickly had become self-evident.  GOOGLE is the quintessential  “fluid trademark.”  Without abandoning its primary mark and logo, from time to time–and for one day only– Google swaps its conventional, static mark for a colorful, whimsical, and often dynamic alter-ego.  As described on Google’s website, these  “Doodles are the fun, surprising, and sometimes spontaneous changes that are made to the Google logo to celebrate holidays, anniversaries, and the lives of famous artists, pioneers, and scientists.”

 Google began tinkering with its logo in 1998, even before the company incorporated.  According to Google lore, “founders Larry [Page] and Sergey [Brin] played with the corporate logo to indicate their attendance at the Burning Man festival in the Nevada desert. They placed a stick figure drawing behind the 2nd “o” in the word, Google, and the revised logo was intended as a comical message to Google users that the founders were “out of office.” While the first doodle was relatively simple, the idea of decorating the company logo to celebrate notable events was born.” 

The public’s appetite for and delight in Doodles grew, leading Google to assign a team of designers to come up with events and achievements to commemorate by adapting Google’s trademark in what has now become a “trademark” style of innovative variation.  So far, over 1,000 Doodles have graced Google’s homepage since Larry and Sergey created their first “out-of-office” graphic message.

From that somewhat random origin, the so-called “fluid” trademark has become not merely a fad; they are the wave of the future.  As one commentator, Lisa Pearson of Kilpatrick Stockton LLP,  puts it, “the most innovative companies are adopting fluid trademarks.”  That’s no doubt because fluid trademarks are eye-catching, flashy, fresh, and interactive.  They clearly are a marketers delight–building consumer interest and brand loyalty.

But is “fluid” necessarily good from a trademark law perspective?  Fluid marks certainly buck conventional wisdom, which holds that trademarks should remain the same, consistent, and dependable.  Although they may evolve to fit the times, as did Betty Crocker and Colonel Sanders, those evolutionary changes unfold gradually, and stay in place for decades.  But a mark that can change overnight on a designers whim?  Ask a trademark lawyer 20 years ago whether fluid trademarks make a brand stronger or weaker and she’d almost certainly blanche at even the thought of tinkering with a brand’s image as bravely and brazenly as Google and other companies have been doing.  (Other notable fluid marks include, well, a couple of fluids–Absolut Vodka, whose variations on its bottle theme helped define a new era in liquor branding; and Perrier, which temporarily replaced its name with provocative words “Sexier, Crazier, Flirtier, and Sassier,” all in Perrier’s signature script:

But the trend towards “fluid” trademarks has been inexorable, even as it might give trademark purists heartburn.

So what are brand managers and the trademark lawyers who love them supposed to do?  Work together.  Make sure that fluid marks conjure up the original mark–that they are, as Lisa Pearson puts it, “recognizable riffs” on the underlying mark.  Make sure the original mark also remains in use, and is not discontinued for any appreciable amount of time. (Dropping a mark for an extended period can give rise to claims that it has been abandoned). 

Reserve “fluidity” for strong brands with strong recognition–brands that, like Timex, can take a lickin’ and keep on tickin’. ( It does little good to tinker with lesser known brands if consumers might not recognize their “fluid” cousins) 

Don’t throw out the baby with the bath water–keep what works, and make sure the variation play off the mark’s basic characteristics. 

Consider protecting the variation through copyright registration, when appropriate. Besides serving as trademarks du jour, Google’s Doodles are works of art and subject to copyright.  Google, in fact, has an online store where it sells posters and other articles featuring its various Doodle designs. 

And last, be gentle with the public if, as may be inevitable, fluid marks inspire imitation and parody as sincere forms of flattery.  Nothing can tarnish a brand faster than a heavy- handed enforcement campaign directed against loyal customers.  If there is no alternative to litigation, be sensitive to the public relations angles, and choose the defendant carefully. 

My education on fluid trademarks is hardly complete.  There are nuances and subtleties to rolling out and protecting a succesful “fluid” trademark campaign that remain to be discovered.  But so far, innovative brands like Google, Absolut, Perrier, and others who have dared to defy conventional wisdom, have energized their trademarks while captivating the public’s imagination.  Any guess about what Google’s next Doodle wil be?

QUOTE OF THE DAY: “If we don’t change, we don’t grow.  If we don’t grow, we aren’t really living.”  Gail Sheehy

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