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

 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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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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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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Not exactly "on the courthouse steps", but close enough -- on the Friday before a scheduled Monday Preliminary Injunction hearing, the North Face and the South Butt settled their often entertaining, sometimes confounding, and always media-driven trademark suit.  Details of the settlement have not been disclosed (which is not surprising), but the Court has entered a permanent injunction against South Butt -- meaning that "Little Jimmy Winkleman" will have to start a new business to pay for college (unless of course the settlement takes care of his tuition bills.) Here is a .PDF copy of the Consent Injunction (courtesy of PACER).

So what to make of this settlement?  The case has always been hard to pin down, because it has been played in the media as a parody case, but the issue has never really been whether someone can tell the difference between a face and a butt.  Many have questioned the North Face's strategy of pursuing litigation--in essence, creating a vastly bigger market for South Butt goods simply from the publicity of the lawsuit.  (I think there are at least two more lengthy blog posts here!) In the end, however, it appears that the North Face got what it wanted -- the end of South Butt.  Hopefully it was worth the attorney's fees and the negative publicity (and whatever it's paying to Little Jimmy, if anything).

As of this writing, the South Butt's website is still up and appears to be still selling product -- apparently in violation of the Consent Injuntion.  This may be a simple delay in follow-through, or it could be that the North Face is permitting South Butt to sell off its remaining inventory as part of the settlement. 

There is one more possibility -- under the terms of the Consent Injunction, South Butt could still sell products under its South Butt marks with "the express written permission" of North Face -- under a license, for example.  Such an arrangement would seem to be quite inconsistent with North Faces' strategy all along, not to mention the quality control issues involved with such a license, but in this case, perhaps it's safer to say "never stop watching."

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Litigators know that from time to time, tempers will flare at a deposition. In the normal case, it's just part of the overall process and the rest of the world never learns about it.

It's becoming increasingly clear, however, that North Face v. South Butt is NOT a normal case. Yesterday's American Lawyer ran a story first reported in St. Louis's Riverfront Times about some craziness at the deposition of Defendant Jimmy Winkleman's father just last Friday. Seems the senior Winkleman alleged that one of North Face's lawfirms, Bryan Cave, had a conflict of interest because it had represented him numerous times in the past. Bryan Cave denies any conflict, claiming it went through its normal conflicts clearance process.

I don't know if there is a conflict or not, but there is no doubt that this case seems to be getting tried on every issue but the one that actually matters -- whether there is likelihood of confusion between the two marks. That will be determined by admissible survey evidence -- not the informal "butt versus face" type of analysis that South Butt's website and attorney are driving in the press.  

The preliminary injunction hearing is scheduled for April 12, so we'll know soon enough. Until then, we'll keep watching this case, which South Butt's attorney Albert Watkins recently described in particularly graphic language.  One thing's for certain -- lots of attorney's fees are being generated. In some circles, that alone would justify Watkins' description!

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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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"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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My home town of St. Louis, Missouri is known for many things: the Arch, the Cardinals, Toasted Ravioli and floods, just to name a few.  Recently it's also become known for some high-profile trademark infringement lawsuits.  In just the last month, two big name cases were filed and a third threatened -- all involving well-known trademarks and well-financed parties (on one side of each case).  Call it a season of giving for local trademark lawyers! (Disclosure -- we're not involved in any of the cases, but we know attorneys in all three).

First it was The North Face v. The South Butt, asking the age-old question: Can you tell the difference between a face and a butt?

Only days later, we saw Bing! Information Design v. Microsoft, filed on December 16.  The Plaintiff is a small local advertising and web marketing agency which has been using the Bing! trademark since 2000.  This is a fairly straight-forward infringement case.  The marks are identical and the local agency is clearly the senior user -- the only issue is whether the marketplace for the respective goods and services (design services vs. a search engine) overlap enough to cause confusion.  Microsoft claims not to be concerned (they rarely are), but we'll have to see.

 Finally, just last week, news broke of a cease and desist letter sent by attorneys for Peabody Energy to an individual operating a website parodying (and mocking) the Consortium for Clean Coal Utilization, of which Peabody is a member.  As I write, the offending website appears to be gone, so perhaps the letter worked. 

Is it our great tasting water? Do we have a new flood, or just a trickle? Stay tuned.

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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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