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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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Hopper to Hopper: No Easy ®ide

Hopper

“Go make it happen.  Take the world in a love embrace.”  “Born To Be Wild” by Steppenwolf

Flipping through Comcast’s program guide last week, I came across a listing I could not resist.  “Easy Rider, ” the 1969 paean to motorcycles, pot, free love, and all the other accoutrements of the Woodstock era.  I was thirteen when the film came out, too young to see it in the theater, and definitely too young to join the tens of millions of slightly older members of my generation who claim to have been among the half a million strong who descended on Yasgur’s Farm that August.  And though I am sure I managed to catch a screening of “Easy Rider” at some point in my film-going career, most likely at a repertory house like DC’s long departed Circle, Key, or Biograph theaters, my relentless march towards the big 6-0 made it hard to remember whether I’d actually seen this counterculture landmark or was just hallucinating.  So, even though the hour was late, and the lure of “Frasier” reruns was nearly gravitational, I pressed OK on my remote and headed out on the highway with Peter Fonda, Dennis Hopper, and Jack Nicholson; it was a great ride for about fifteen minutes, as Fonda and Hopper cavorted with a tie-dyed,  braided clan of commune-dwellers, all  drawn to Fonda’s  character, especially the women-folk.  But as a troupe of itinerant actors begged to sing for their supper, my attention span sputtered, my craving for the two Doctors Crane too great. So I flipped back to the Hallmark Channel where I drifted off to the Kelsey Grammer’s mellifluous Brahmin accent. 

But Easy Rider is hard to forget, especially with the film’s director, the late Dennis Hopper, making today’s trademark news.  Hopper’s estate has applied to register HOPPER as a trademark for clothing and motorcycle related items such as helmets and goggles.  These articles no doubt would appeal to “born-to-be-wild-again” riders and who’ve traded their youthful hobbies for Harleys®. But they don’t appeal to DISH NETWORK, which claims that the estate’s HOPPER mark would create a likelihood of confusion with DISH’s ad-skipping DVR product which it calls THE HOPPER.  It remains to be seen whether consumers or the trademark office will agree with DISH’s beef or conclude that the owner of this HOPPER mark for DVRs jumped the gun.  But the late Mr. Hopper, whose career-defining roles spanned everything from Rebel Without A Cause to Blue Velvet, would no doubt take this turn of events with his trademark mix of enraged bemusement.   Paraphrasing one of his lines from Apocalypse Now, Mr. Hopper might say “The DISH TV man is clear in his mind, but his soul is mad.”

QUOTE OF THE DAY:  “Art at its most significant is a Distant Early Warning System that can always  be relied on to tell the old culture what is beginning to happen to it.”  Marchall McLuhan

 

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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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Facebook Crosses the Timeline–Must Stand Trial For TM Infringement

“I was glad to come, I’ll be sad to go, so while I’m here I’ll have me a real good time.” “Had Me a Real Good Time” by Faces.

In 2011, Facebook, the social network site that changed the way an entire generation communicates and socializes, introduced “Timeline,” a feature that Facebook said would let users “tell your life story.” It’s been described as “a radical new profile page design that . . . changes the default profile from a list of your most recent updates to a complete summary of your entire life since birth.”

From the start, Facebook’s Timeline faced controversy, mostly from Internetizens worried that it was just another way for Facebook to sell their personal data to advertisers. Others feared that Timeline could encourage identity theft.

Now, however, Facebook finds itself accused of identity theft of a different sort–trademark infringement.

Facebook is no stranger to litigation, as dramatized in The Social Network, the film recounting Facebook founder Mark Zuckerberg’s legal skirmish with Connect U and its founders, the Winklevoss twins.

This time, the plaintiff is not the Winklevii, but a company named Timelines, Inc. Timelines claims that Facebook’s use of the similar name “Timeline” infringes Timelines’s prior trademark rights.

In The Social Network, Zuckerberg fought against the Harvard elite. Now his company is fighting against the notion of anyone owning exclusive rights in the word Timeline. Attempting to avoid a trial, Facebook asked the court to rule that “Timeline” is generic for a service that displays events about a person or history in chronological order. Generic terms can never be trademarks and must remain free for everyone to use.

Timelines countered that its name is not generic at all, but rather, is a distinctive trademark for its business, which it describes as “the first web site that enables people . . . to collaboratively record, discover and share history.” Today, for example, the Timelines website mentions that “The Great Gatsby” was published on this date in 1925.

On April 1, a federal judge sided with Timelines, at least for the time being:
“At this stage in the proceedings, it is not unreasonable to conclude that as to this group of users, ‘timeline(s)’ has acquired a specific meaning associated with plaintiff.”

The case now heads to a trial, where a jury will decide whether Facebook has crossed the line–Timeline that is.

The case is Timelines Inc. v. Facebook Inc., 11-cv-06867, U.S. District Court, Northern District of Illinois (Chicago).

QUOTE OF THE DAY: “So we beat on, boats against the current, borne back ceaselessly into the past.”
― F. Scott Fitzgerald, The Great Gatsby

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All You Need Is Love? Beach Boy “Boss” Fires Band’s Heart and Soul

“God only knows what I’d be without you” God Only Knows, The Beach Boys

As every Gen X hipster with a turntable and vinyl collection knows, Pet Sounds by the Beach Boys is one of Rock and Roll’s seminal recordings. And it’s equally gospel that the genius behind Pet Sounds and the entire Beach Boys oeuvre was and remains Brian Wilson. Brian, along with brothers Dennis and Carl, their cousin Mike Love, and pal Al Jardeen, were the surfer dudes in the red and white striped shirts that wowed us on Ed Sullivan and on A.M. radio with hits such as “Fun, Fun, Fun,” “I Get Around,” Help Me Rhonda,” “Good Vibrations,” and other legendary tunes celebrating sports cars, racing, surfing, and adolescence.

But after sailing through the ‘6o’s on their golden harmonies, the “Boys” hit some shoals. Brian Wilson battled demons and retreated to his room, eventually inspiring the Barenaked Ladies song “Lying In Bed Like Brian Wilson Did.” Brian’s breakdown was followed by the tragic and untimely deaths of brothers Dennis and Carl. With Brian on “injured reserve” and two other Wilson Boys gone to Rock and Roll Heaven, Mike Love was left to carry the Beach Boys mantel. That he did for several decades, leading makeshift or ramshackle assortments of journeymen in incarnations that were mere shadows of Beach Boy glory. (I once saw the Love- led Beach Boys performing as the opening act for a pro soccer game in D.C back in 1982–it wasn’t a pretty sight.) Also not pretty were the legal wranglings and machinations that accompanied the Brian Wilson/Mike Love schism. After years of internecine infighting, Love apparently wrested control of the “Beach Boys” trademark. The question then loomed: Would Mike share the love and be a benign and beneficient steward of the Beach Boys legacy?

This summer, five decades after the Beach Boys caught their first wave of hits, the answer seemed to be yes. Since last spring, Love, Brian Wilson, and Al Jardeen, launched the Beach Boys 50th Anniversary tour. With all the surviving members on hand and in fine form, and backed by a tour de force collection of singers and players (even including one of the Cowsills), the Beach Boys anniversary show transcended nostalgia and kitsch. It featured robust, muscular, and pitch perfect versions of virtually every Beach Boy classic, as well as a number of credible songs from their new album “That’s Why God Made The Radio.”

All was well in Beach Boy land, or so it seemed until yesterday. In a press release either intentionally or unwittingly timed to coincide with Yom Kippur, the Jewish day of atonement, Mike Love revealed that his reign as keeper of the Beach Boy name would be benign no longer. He announced the firing of Brian Wilson and Al Jardeen from the band. See the full report at:

http://livemusicblog.com/2012/09/26/mike-love-kicks-beach-boys-out-of-the-beach-boys/

What this move portends for the Beach Boys remains to be seen. Will the newly reduced ensemble return to playing Vegas lounges and state fairs? Will the shadows return over the Beach Boys legacy?

One thing is certain. After such a glorious restoration of the Beach Boys to their much-deserved glory this past summer, and after rekindling so much of the goodwill attached to the Beach Boys name, this jaw-dropping and demoralizing move by Love will give him and his management team enough to atone for on subsequent Yom Kippurs for years to come.

QUOTE OF THE DAY: “Love is whatever you can still betray. Betrayal can only happen if you love.” John le Carre

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Send In The Clown Questions, Bro’

“Making my entrance again with my usual flair,” Send In The Clowns, Stephen Sondheim

Over the past half-year or so, four athletes have entered the mainstream with exceptional flair indeed. Quarterback Tim Tebow–maligned as much for excessive displays of piety as for his awkward throwing mechanics–came off the bench in Denver to lead heroic comebacks and spark a playoff run for his Broncos. His habit of celebrating big plays by genuflecting to his Lord came to be known as “Tebowing.”

Unheralded New York Knick point guard Jeremy Lin was similarly pressed into a starting role when superstar Carmello Anthony limped off the court. Never before considered an elite player in either college or the pros, Lin nonetheless stunned the sportispshere by turning into an offensive machine and sparking a Knicks winning streak. A performance so improbable that it was absolutely mind-blowing. “Linsanity” was born. New York hadn’t seen such a classy “knickname” since Walt Frazier became “Clyde.”

Speaking of insanity, during March Madness, Kentucky Wildcat Anthony Davis drove to the basket and to an NCAA Championship on the strength of his outstanding play and the sweat of his distinctive brow–unibrow that is. Called “the most distinctive unibrow since Bert on Sesame Street,” Davis’s glowering above the eye coif became almost as feared as his on-court tenacity. Naturally, the slogan “Fear The Brow” emerged.

And on a Field of Dreams, teenage Washington Nationals baseball phenom Bryce Harper made the highlight reels not only for his dazzling slugging and fielding prowess, but for his knack for public relations. When a reporter asked him a question he preferred to dodge like a head-high fastball, Harper responded with the snappy repartee we all wish we could summon on demand–“That’s a clown question, bro.” It’s become his catchphrase–naturally.

And all four stars have more in common than just having their own slogans. They also are taking steps to protect, enforce, and commercialize their catchphrases by getting Federal trademark protection. Smart move. Those registrations will help Tebow, Lin, Davis and Harper cash in on their considerable cache.

Even in the best of circumstances, a pro athlete’s career harkens back to the Hobbesian state of nature–nasty, brutish and short. But not so for a trademarked slogan, name, or phrase. Like a diamond, a trademark is forever.

For more on sports trademarks, read this article from the Christian Science Monitor: http://www.csmonitor.com/Business/2012/0627/Anthony-Davis-eyebrows-licensed-5-strange-pro-sports-trademarks?cmpid=addthis_email#.T-yomWTUuI8.email

Quote of the Day: “In the state of nature profit is the measure of right. ” Thomas Hobbes

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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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