softrights

“Persuaded, paraded, inebriated, and down
Still aware of everything life carries on without
‘Cause there’s one too many faces with dollar sign smiles”. Whiskey Bottle, Uncle Tupelo

For decades, parody and trademarks have had a fraught relationship, particularly when it come to the interface between human brands and products for man’s best friend. Back in the 90s, the luxury chocolate maker Godiva sued over a dog treat named Dogiva. And some years later, the luxury clothier and luggage maker Louis Vuitton sued over a brand of dog treats called Chewy Vuitton.

Last week, the latest decision in this line of cases came down, finding that a dog toy shaped like the iconic Jack Daniel’s whisky bottle and bearing both the name Bad Spaniels and the scatological slogan “Old No. 2” did not infringe the venerable bourbon’s trademark rights in the Jack Daniel’s name, the square bottle shape, the black and white labeling, and the slogan “Old No. 7.”

The case turned on whether Bad Spaniels name and bottle were a transformative expressive homage to Black Jack and therefore protected by the First Amendment and its stringent expressly misleading standard, or whether it just was plain old trademark use, in which case the lesser likelihood of confusion standard applies.

The judge came down on the side of parody and free expression. Acknowledging that the Bad Spaniels name, motto, and packaging were a far cry from the Mona Lisa, the judge nonetheless concluded that the canine toy maker had produced an expressive work that did not warrant being relegated to the trademark doghouse. The court explained that “[a] work need not be the expressive equal of Anna Karenina or Citizen Kane” to be considered expressive; nor is a work “rendered non-expressive simply because it sold commercially.”

The decision is sure to add to the ongoing debate on whether punsters deserve punishment when they parody a famous brand not through a cartoon or story but by putting out a product with a humorous twist.

So, when happy hour rolls around Fido, Spot, Snoopy, and Scooby Doo can enjoy their own plastic libation as their best friends break out the Jack and Ginger or have their Tennessee sippin’ whiskey nice and neat. And in these days of Work at Home and sheltering-in-place, it’s always five o’clock somewhere.

The case is VIP Prods. LLC v. Jack Daniel’s Properties, Inc., No. 18-16012(9th Cir. Mar. 31, 2020).

Quote of the day: “Basically, I’m for anything that gets you through the night – be it prayer, tranquilizers or a bottle of Jack Daniels.” Frank Sinatra

“Take a little tip from me. Stay away from my chicken house.” Stay Away From My Chicken House by Gene Autry

Entering our third week of staying at home, we look for connection from any quarter. Yesterday I found it in the form of a new trademark decision from the Fourth Circuit about chicken feeders. The Court of Appeals affirmed a lower court decision that nixed trademark protection for the shapes and color of the chicken feeder shown above on the left. The plaintiff had claimed that the configuration and red color scheme of its bird feeder had acquired trademark significance through years of commercial success. There was no doubt that the plaintiff’s feeder was popular among poultry raisers. And the defendant’s feeder (on the right) looked like a dead ringer for the plaintiff’s.

So why did the plaintiff’s trademark claim flounder and flail like a, well, the proverbial chicken with its head cut off? The problem for the plaintiff was it’s patents. Yes, product configurations and color schemes can theoretically attain trademark status through long use, large sales, and extensive advertising, especially if the advertising verbally or visually highlights the shape, features, or colors without touting their utility. But even if these measures have worked, even if consumers recognize a product’s shape, features, or colors as source indicators, i.e., trademarks, the law won’t extend trademark protection to features or shapes that are essential to the product’s function or purpose.

And here, the features and red color that the plaintiff claimed as trademarks were also covered by the plaintiff’s utility patents—strong evidence of their functionality. Indeed, the patents showed that the product shape allowed birds to feed more easily while the color red attracted them to their meals. As the court recognized, it is fundamentally unfair for a patent owner to convert the limited patent monopoly for useful features into a perpetual trademark monopoly, thereby depriving rivals of useful features needed to compete effectively.

The case is CTB Inc. v. Hog Slat Inc., case number 18-2107, in the U.S. Court of Appeals for the Fourth Circuit.

So, how does a case about chicken feeders provide meaning and connection in these days of isolation? Well, the first case I worked on as a fledgling trademark lawyer was about a chicken feeder. Early in the litigation, my fellow associate and I drafted up a scathing letter to the other side over some perceived deficiency. We loaded the correspondence with all the invective and indignation we could muster. The recipient happened to be the boyfriend of our mentor, and he worked for the rival firm across the street. He was an excellent lawyer and a wonderful guy, and he used his reply to school us neophytes about civility and effective advocacy, characterizing our screed for its “intemperate tone.” Of course, he cc’d our mentor, his girlfriend. From that day on my colleague and I became known throughout the firm as “The Intemperate Tones.” Good band name, bad nickname for young lawyers or lawyers of any age.

Moral of this post, don’t be so impressed with your own heated rhetoric that you lose sight of the ultimate goal, resolving disputes that counsel should be able to resolve cooperatively and failing that persuading not alienating the judge. Resist the urge to strut like a Rooster, lest you end up like the birds scrambling to feast at these feeders–served up on a plate for a judicial rebuke.

Quote of the Day: “I haven’t checked, but I highly suspect that chickens evolved from an egg-laying ancestor, which would mean that there were, in fact, eggs before there were chickens. Genius.” Ta-Nehisi Coates

“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