The Anchor Plate : Intellectual Property Lawyers & Attorneys : BrickHouse Law Group : Open-Price Lawyering, Hourly Billing : St. Louis, Missouri

I was in college when the rock band Dr. Hook and the Medicine Show released a hit song about a fantasy many of us shared--a fantasy neatly captured in the song's title: "On the Cover of the Rolling Stone." For the band, it actually came true later that year. For me, alas, not yet.

However, if some band should ever write a song with the catchy title,"On the Cover of the St. Louis University Law Journal," I'd qualify. Sort of. My name is there on the cover of Volume 55, along with 8 others who wrote articles for that issue, all of us on some aspect of the topic of "the headline trial." Mine focused on the headline trial in great literature, from Shakespeare's Shylock to Melville's Billy Budd.

Thanks to St. Louis University School of Law for allowing me to share the article with those of you who might be interested. Here it is.

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 To your left is Exhibit A in Cariou v. Prince, one of the most significant and troubling copyright "fair use" cases in recent years. The plaintiff, Patrick Cariou, is a professional photographer who published a book of his Jamaican works entitled YES, RASTA. The book includes striking portraits of Rastafarians he met during his years in Jamaica. The main defendant is Richard Prince, a well-known "appropriation artist."

Exhibit A is entitled "Inquisition." It is one of 29 works in Prince's Canal Zone series, 28 of which include photographs from Cariou's book that Prince copied, arranged in collages, and added tints or paints. Cariou sued for copyright infringement, and Prince defended on "fair use" grounds. Earlier this year U.S. District Judge Deborah Batts entered judgment in Cariou's favor, rejecting Prince's defense in a carefully reasoned opinion. To put it mildly, the world of art law sat up and took notice.

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In January of 2011, Facebook launched its "Sponsored Stories" ad program. As Ad Age magazine explained back then: if Starbucks, for example, buys a Sponsored Story ad, then the next time you check in or "like" a Starbucks, your updated status will run twice for all your Facebook friends: once in your news feed and again as a paid ad for Starbucks. That second time will be on the right side of each of your friends' news feeds, complete with your name and photo, and marked with the words 'Sponsored Story.' (The image on the right is the example from the Ad Age story.)

In other words, you will have become an unpaid spokesperson in a Starbucks ad. And you will have also become a potential plaintiff in Fraley, et al. v. Facebook, Inc. one of the most fascinating right-of-publicity class actions in America.

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By the time the St. Louis Cardinals reached the World Series, the little gray squirrel that had dashed across home plate during Skip Schumaker's at-bat early in the playoffs had been transformed into The Rally Squirrel, complete with Rally Squirrel towels, Rally Squirrel t-shirts and Rally Squirrel stuffed animals.

And by the time Alan Craig caught the final out in the 9th inning of Game 7, the first application to register RALLY SQUIRREL was on file with the U.S. Trademark Office, to be followed ten days later with an application to register RALLY SQUIRRELS. Both were filed by businesses unaffiliated with Major League Baseball. And both raise the same question: should a company be able to claim trademark rights in a name that originated in the public domain?

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I've started podcasting.

I've thought about doing this ever since a commenter on the blog found us after listening to a podcast on which I was a guest. The hospitable crew over at The Podgecast had let me guest ramble about IP law related to comics, movies, role-playing games, and pretty much any thing else. We even talked bout this blog and alternative ways to approach IP litigation.

I thought it would be a good idea to dig up some good resources for IP law podcasts and post them here.

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Okay, copyright fans, time to unpack our lamest finger cliches. Earlier this month down in San Antonio federal court, #1 Fan Company and Spirit Industries commenced the ultimate case of finger-pointing in their copyright infringement complaint in #1 Fan Company et al. v Pangea Direct. The creation at the center of the lawsuit is that over-sized foam hand with upraised forefinger familiar to sports fans everywhere.

The issue, at least as framed in the complaint, is whether Pangea's version of the foam hand (shown to the right) infringes the plaintiff's prior version (shown to the left).Ah, but keep your fingers crossed.The more intriguing issue is lurking just behind those fingers, and it will likely turn into a copyright dispute that is, well, finger-lickin' good.

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One of my favorite clients has just won a courtroom battle with ramifications far beyond the trading cards at issue in the lawsuit. Indeed, its victory is literally historical, since the case addresses the issue of who owns great moments in history: the participants or the public?

Here, that great moment in history took place on July 21, 1969.  That's when astronauts Neil Armstrong and Edwin "Buzz" Aldrin, Jr. climbed down from their Apollo 11 lunar module and  became the first humans to walk on the Moon.

Armstrong captured that moment with his camera, pointing it toward Aldrin and snapping what has since become the most famous space-related photograph of all time, the iconic Visor Shot. This year, however, that same image was the focus of Aldrin v. The Topps Company, Inc.., Case No, CV 10-09939 (C.D. Cal. 9/27/2011)., where the issue was whether Buzz Aldrin's right of publicity trumped Topps' right to portray his historical moment on a trading card. 

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Indiana officially became the Zombieland of the Right of Publicity in 1994. That was the year it enacted Chapter 36 of Section 32 of the Indiana Code, which, among other things, provides that a personality's right of publicity lasts for 100 years after that person's death. Moreover, it didn't matter if the dead celebrity's "home" State--such as New York--had rejected a post-mortem right of publicity. That's because Indiana's statute "applies to an act or event that occurs within Indiana, regardless of a personality's domicile, residence, or citizenship." (Ind. Code 32-36-1-1(a) (emphasis added).) Since commerce tends to be national, a product bearing a dead celebrity's name would find its way into Indiana.

Welcome to Hoosier Zombieland, where Thomas Edison, Henry Ford and millions of others could rise from the dead to sue you for violating their right of publicity. Indeed, potential plaintiffs include Frankenstein (Boris Karloff, died 1969), Dracula (Bela Lugosi, died 1956), and the Phantom of the Opera (Lon Chaney, Sr., died 1930).

Ironically, though, it took a courtroom battle between the Godfather and Indiana's own John Dillinger to slap some restraints onto the Indiana statute.

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Geoff and I had a great opportunity to be speakers last week at the Missouri Bar Solo and Small Firm Conference.  For those who don't know, this is one of the biggest conferences of its kind in the country--over 1000 lawyers from all walks of the practice.  We learned a lot and made some new friends and contacts, too.

There are so many legal issues--both risks and opportunities--presented by the ever-growing world of Social Media. We didn't have all day to speak (and would have bored the audience to tears if we had), so we focused on Discovery and Evidentiary Issues with Social Media in Litigation.

I won't repeat the whole presentation here, but I will some it up: Social Media presents many new SOURCES of evidence, but it is still just evidence--all of the old evidence rules apply.

As promised, here is a .PDF copy of our Power Point presentation.

Looking forward to next year!

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"In the end, it's the beginning that counts."

Isn't that so true?  It applies in so many settings.  For example, it's a wonderful trademark tag line for the elementary school my kids attend.  It just resonates with parents making that all-important choice of a first school for their children.

It applies in the business world, too.  My friend Julie Taylor had a great blog post the other day about enjoying the "start" of your start-up.  She's a terrific business writer who regularly works with start-up companies, and she's absolutely right. 

And it really, really applies when you're dealing with Intellectual Property.  If you don't concentrate on the beginning, you're not going to like the end.

For example, when two or three people begin talking about their next great idea, if they don't start with a good Nondisclosure Agreement and an agreement assigning ownership of any intellectual property they create, their greatest potential is for very expensive litigation down the road.

It's very important in the entertainment industry, too.  Check out any CD -- you'll notice a copyright claim by the record company.  But before the record company can claim that copyright, it has to get everyone else's rights along the way up.  And if those rights aren't correctly captured when the songs are first recorded, the musician just might have a good lawsuit and the record company may find itself doling out profits it never thought it would have to share.

So if  you're thinking about starting a company, producing a CD, or releasing a movie, make sure you've done your due dilligence at the start--or you may not like the ending.

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"Two guys walk into a law office . . . "

One of the most frequent scenarios these days at BrickHouse Law involves some version of the following: Somebody comes in with a great idea for a new business, filled with excitement about how they are going to replace Facebook, or eliminate the need for shoes, etc.  You get the picture.

Some of the ideas sound great -- others, well, lets just say they need a little more time on the proverbial drawing board. No matter how varied the ideas, though -- one thing is true about all of them: they cannot be protected (not in their "idea only" form).

This is one of the most important lessons all entrepreneurs need to learn (and learning it can sometimes be very expensive).

You cannot copyright an idea -- only the original expression of that idea.

You cannot patent an idea -- only the invention that embodies that idea.

You cannot trademark an idea -- only the names of the businesses and products and services embodying the idea.

So what do you do when you have the NEXT GREAT IDEA but you haven't developed it yet?  You need investors, perhaps manufacturers, distributors, etc., all of whom are going to need to know what your idea is.  That's where confidentiality and nondisclosure agreements ("NDA's") come in. Most entrepreneurs have heard of NDA's -- but many do not use them as early in the process as they should. 

When should you use an NDA?  At the moment you start talking seriously with your future business partners. That's right -- many times the most important contract you will sign is the first one with your business partner.  In addition to confidentiality, that first contract should identify any ideas, concepts, treatments, designs, etc. that have already been created by you and your business partner and include language assigning ownership of this IP to your new company. 

This is really only the beginning of the entreprenurial process, of course, and is not meant to cover everything that should be in your first agreement. In fact, my friend Diana Kander has a very helpful post entitled "10 Things You Must Answer Before Signing a Non-Disclosure Agreement." Check it out.  My point is simply this -- the best time for you and your business partner to agree on the important stuff is before anyone has made any money!

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When you think porn, I bet the first thing that pops up isn't the Federal Antidilution Act. It does, however, over here at the Anchor Plate. And that intersection of porn, parody, and the First Amendment has inspired a contest to see who can coin the best porn parody title for any movie nominated for an Oscar at this year's Academy Awards.  But first, some background:

We intellectual property lawyers have our own set of favorite quirky cases, the sexy ones you'd hesitate to bring home to Mom, the goofy ones that tap into that special brand of humor most commonly associated with junior high school boys. (Yes, as many women will readily attest, there is a 7th-grade boy lurking within every adult male, including ones who can't resist use of the phrase "pops up" in the first sentence of this post.)

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Worried about protecting your brands and creations on the Internet? Worried that your own website might draw a blood-curdling demand letter from a pitbull lawyer for a Fortune 500 company? You aren't alone.

A pair of intellectual property decisions by the influential U.S. Court of Appeals for the Second Circuit—one recently handed down, the other soon on its way—will reverberate throughout the business community, especially as companies struggle to protect their intellectual property in the ever expanding flea market known as the Internet.

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Only a few months ago we were bragging around here about our good fortune to welcome David Groce as a principal of our entrepreneurial law firm.  David's addition greatly enhanced our ability to provide a full range of business services counseling to our clients.

Now we get to brag again -- this time about our newest partner, Michael A. Kahn.  Some of you may know Mike from our past blogging efforts together on the old Fair Use Blog, and more recently Mike has been a contributor to Bryan Cave's Art Law Blog.  Others may know Mike as the successful author of many novels, including Trophy Widow.  Still others may know him from his long career as a nationally-known First Amendment, media and intellectual property trial lawyer. 

We know him all of those ways, too, but mostly as a good friend, great guy and exceptional attorney.  Truth be told, we've been stalking Mike for a while.  We've always thought he was a perfect fit for our entrepreneurial, client-centered approach to practicing -- he doesn't like the billable hour any more than we do!

Mike is joining the BrickHouse Law Group after more than 25 years of large law firm practice, and he'll be joining the AnchorPlate blog as an author.  I hope you enjoy hearing from him as much as we're going to enjoy practicing law with him.

Welcome to the BrickHouse, Mike!

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Sometimes you're smart.  Sometimes you're good.  Sometimes you just get lucky.  I'd like to think that here at The BrickHouse Law Group we are fairly smart, and often good.  But I know that right now we are very lucky.

We are lucky that for much of the past year, unbeknownst to us, a friend and one-time client, David B. Groce, was thinking many of the same things we've been thinking.  Such as, how to practice law in a more efficient, value-driven way and how to leverage years of experience and expertise with large corporations and law firms into teachable components of value to small and medium-sized businesses.  In short, how to be a legal entreprenuer for entreprenurial clients.  You know, stuff we've been learning from Patrick Lamb, Jay Shepherd, and others.

We are even luckier that David agreed to join The BrickHouse Law Group as a principal.  He brings 25 years of experience as a general counsel and corporate executive at Fortune 500 companies.  He has seen--from the client's perspective--all of the good and bad that goes along with the traditional law firm model, and he has been a tremendous asset to us already. 

In addition to joining the firm, David will be joining The AnchorPlate blog as an author.  You'll get to here from him directly, and I think you'll find that he has a lot to say.

Welcome to The BrickHouse, David!

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Have you ever driven by a construction site and wondered "Who actually knows what's going on here?" Somebody must. Even the Empire State Building was completed ahead of schedule.  But what does this have to do with a law practice? 

The other day we had a very productive meeting with a client for whom we had just completed a fixed-fee engagement. That engagement had been short in duration, limited by a date-certain event, and we were able to meet the client's needs at a price all agreed was reasonable and appropriate.

We were very happy, then, when the client engaged us again. At first, however, this new project appeared to be more open-ended, with less clearly defined parameters, and we grappled a bit with how to price it. Nevertheless, by the end of our meeting, we all felt fairly comfortable that we had defined what was in the engagement and what was not. 

When we got back to the office, we started to identify the specific tasks needed to achieve the client's goals, how much time they would take, who would do what, and--most importantly--how we would keep ourselves on task to make sure we could deliver the quality the client expected in an efficient manner. In short--how were we going to manage this project?

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Sometimes you get lucky and get to work on something that you just feel good about. 

That's the case right now.  We're helping some good friends with an amazing project that's all about turning horrible grief into something lasting and uplifting.  Please check out The Angel Band Project -- a very special project and a cool blog, too.

This is a great example of talented, compassionate people coming together to create something bigger than themselves, and bigger than the tragedy that first devastated -- then motivated -- them.  It is a powerfully moving tribute to a brave lost friend, to be sure, but it has also grown into much more than that.  In part that's because of the fantastic mix of music being created, but also because of the charitable cause it will support. 

Geoff and I are proud to be doing a small part, but many others are donating their time and talent as well -- just check out this latest post about last weekend's recording session in Chicago and all of the really cool people involved. 

Want more information?  You can read the Angel Band Project's blog, follow them on Twitter, or become a fan of their Facebook page.  It's their story, not ours.  Suffice to say that if you or someone you know has been a victim of sexual violence, this project will be especially meaningful. 

If you just love good music made well, then I bet you'll dig it, too.

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"Our competitor is infringing our trademark and killing our business! You've got to make them stop, whatever it takes!  (pause . . . wait for it . . . )  But we can't afford an expensive lawsuit, especially when we have no idea what it will cost.  Which way do we go?"

So say many of today's clients.

It's 2010 and the client revolution is in full swing -- lawyers are finding that they may just have to justify their bills based on the value received by their clients, not just the amount of time the lawyers devoted to a matter. If you think about it, this shouldn't come as much of a surprise, but somehow it seems like virgin territory for many lawyers.

Of course, certain types of transactional practices have been offering so-called "alternative fee arrangements" for years -- billing by the document or deal, for example -- but it's much less common in a litigation practice.  Most lawyers will tell you this is because litigation is, by definition, an exercise in managing uncertainty.  With apologies to Heisenberg's Quantum Mechanics, many litigators seem to have their own "Uncertainty Principle," which goes something like: "If you don't know what the other side will do, or what the court will do, how can you predict what the case will cost?"

Jay Shepherd disagrees.

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Can you tell the difference between a face and a butt? Sounds like a fairly simple question, right? I suspect most people would say that, yes, as a matter of fact, they can tell the difference between a face and a butt. That's certainly what Jimmy Winkleman and his small St. Louis company The South Butt hope. The folks at The North Face, on the other hand, are praying that you're confused.

The North Face filed a trademark infringement suit against The South Butt in mid-December in the Eastern District of Missouri. The defendant is a local kid who started his line of South Butt clothing to pay for college, selling it out of his parents' pharmacy. Claiming to be a parody of the famous North Face line, South Butt has taken a very aggressive media stance, clearly trying to win the case (read: drive a good settlement) via public opinion. In fact, the disclaimer on the media page on the South Butt website says that if you can't tell the difference between a face and a butt, buy North Face!  

The Eighth Circuit rules here, however, and that so-called parody defense (which doesn't really exist under trademark law) isn't going to mean a whole lot if survey evidence shows a likelihood of confusion. For this reason, it will be interesting to see what kinds of survey's are ultimately admitted -- North Face has a much stronger case if it can show the two marks as they are used on virtually identical lines of clothing, whereas South Butt surely wants the marks to simply be viewed side-by-side. 

One thing is for sure -- sales of South Butt clothing have gone through the roof since news of the lawsuit hit.  It remains to be seen who will get to keep the profits from those sales.

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Anchor Plate: a metal plate fastened to the exterior of a brick building with a washer or tie rod to reinforce structural support, usually decorative.

The Anchor Plate: a virtual gathering place for dialogue about the nature of practicing intellectual property law, to increase knowledge and to amuse.

Well. It's great to be back in the blogosphere again.  When you last heard from us, we were biglaw IP litigation partners and co-authors of Owners, Borrowers & Thieves 2.0, a fine blog (if we do say so ourselves) about IP litigation in the 21st Century.  (Our good friend, the great Dave Rein, now steers that ship more ably than we ever did -- and he was nice enough to leave our old posts up, too!)

Things change, however.  If you've followed the legal industry at all in the last 18 months, you know that some things have changed dramatically.  Last fall, Geoff Gerber and I left our long-time jobs as partners in a large St. Louis law firm to start our own boutique intellectual property, media and entertainment law firm.  We did it for a lot of reasons, most of them good (we think).  Ultimately, we just wanted to practice law differently (much more on that later).  So now you can find us at The BrickHouse Law Group.  And you can find us here, at The Anchor Plate. 

We hope to be valued participants in the dialogue -- good listeners as well as good contributors -- and we expect to have guest authors from time to time as well.  We'll cover some familiar territory (fair use, copyright and parody, IP litigation, comic books, for example), but we'll also reach out into some dynamic new areas, such as open-price lawyering, cloud computing and social media, to name a few. 

As with any new venture, we expect some twists and turns in the road ahead -- that's half the fun of driving.  We hope you'll find it worthwhile to join us on the journey.

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