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

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?

• Email This
• Print
• Comments
• Trackbacks
• Share Link

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.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

"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.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

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.)

• Email This
• Print
• Comments
• Trackbacks
• Share Link

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.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

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."

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

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!

• Email This
• Print
• Comments (4)
• Trackbacks
• Share Link

I learned early on in my "musical career" (I love saying that!) that if I was willing to just play rhythm guitar, I always had a place in the band. That's me in the blue hat, playing with my law school band at the late, lamented King Louie's in St. Louis, before it was the elegant restaurant it later became.

Like many budding rockstars, we thought we sounded way better than we actually did, and we had to have a cool band name. Being dorky law students, we couldn't resist taking a name from Torts class: "Attractive Nuisance." That's right--as a band, we were a swimming pool without a fence.

Those fond memories of coolness came flooding back to me the other day when I saw this article in the ABA Journal about trademark challenges surrounding rock band names. Apparently all the cool band names have been taken by other bands, or else they are trademarks for some other class of goods or services, like Captain America. What's the next great band to do?

• Email This
• Print
• Comments
• Trackbacks
• Share Link

A day late and probably many dollars short, I'm late with the Character of the Week because I've been trying to instill a love of the modern Olympics in my nine-year-old son. Does anybody else notice a difference in interest based on age? That is why my Character of the week is (are) the Olympic Mascots.

And yes, I mean all of the "official" mascots. The 2008 Beijing Summer Olympics has all of the prior mascots collected here, and it has an explanation of its own successful mascots here. From the summer of '72 when "Waldi" the multi-colored dachshund was the mascot chosen to represent the resistance, tenacity, and agility of the athletes and express the gaiety and joy of the Olympic festival in Munich through today, each host-city Olympic organizing committee has used a character or group of characters to represent the brand for their particular games. An extremely difficult task, more often criticized than praised, each mascot must be created, designed, introduced and retired in something less than six years. The mascots are the subject of an immense marketing drive and, if the committees who own them have their way, a proportionately large return on the investment.

A mascot is often developed as a fictional spokes-model to represent a brand. As characters representing brand identity, mascots operate as trademarks. Like other marks, mascots must be protected with a vigilant, enforcement effort or the investment mascot can be easily wiped away. The intense exposure for Olympic mascots means they need to be tough. As the 2010 Vancouver Olympic games progress, they present a case study in mascot creation, enforcement, and protection as the value of the Vancouver mascots is threatened by an Internet meme.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Sunday, I was a guest on The Podge Cast. I'll let you know when that session is up on their site. We talked about a number of things, including how individuals may use right of publicity and trademark to protect their fame. I blurted out that I would start a related, recurring feature on this blog about how fictional characters protect their fame.

That's right. Some fictional characters start to take on a life of their own and there are a number of legal rights that protect intellectual property interests in characters. It is something I have spent a lot of time doing and I enjoy it enough that it makes sense to write about at least once a week. So here goes. My first character of the week: Kermit the Frog.

As with many of the iconic characters in popular culture, Kermit evolved over time. Originally a faintly defined reptile or amphibian sock puppet with ping-pong-ball eyes, Kermit acquired additional traits and greater definition over time. Eventually, he came to be known as an anthropomorphic frog who grew up in a swamp and traveled across the country to make it big in show business, His fame grew from a local D.C. area TV station, to nationwide appearances on public television on Sesame Street for the Children's Television Workshop, to fronting the prime-time broadcast of The Muppet Show on a major broadcast network, to Hollywood stardom in a bio-pic on the silver screen.

We watched his career grow from TV-news correspondent, to variety-show host, to actor, director and producer. At the same time, we learned about his fears, friendships, and loves. He is the shy celebrity, uncomfortable with fame. But, he became so famous that the world has a hard time telling where fiction ends and reality begins. Last fall, he escorted Lady Gaga to the MTV Video Awards and with a kiss, created a scandal that earned him an interview with People magazine.

Just as with any real-life celebrity, the fame associated with Kermit is a valuable, intangible property. Intellectual-property law protects that value in a number of ways.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

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.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

"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.

• Email This
• Print
• Comments (2)
• Trackbacks
• Share Link

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.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

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.

• Email This
• Print
• Comments
• Trackbacks
• Share Link