CEASE AND DESIST LETTERS FROM BEYOND THE GRAVE – CONAN DOYLE REDUX ED.

holmes

When  last we checked in on Sir Arthur Conan Doyle’s posthumous intellectual property enforcement activities (“Conan Doyle Estate  Down for the Count“), his estate’s attempt to enjoin publication of a collection of original Sherlock Holmes stories, A Study in Sherlock, was rejected in an opinion written by Seventh Circuit Judge Richard Posner. In that case Doyle’s literary heirs argued that although only the final 10 Sherlock Holmes stories (first published after 1922) remain under copyright, while the remainder of the canon is in the public domain, any secondary work using characters and story elements that were not fully “rounded out” until those final installments–most notably Holmes and Dr. Watson–infringed the still-extant copyrights.

Judge Posner, however, ruled that the copyrights on the final 10 stories protected only those literary elements that were “original” to those stories, for example, Holmes’s late-life change of attitude toward dogs. Using the road map Judge Posner provided, the Conan Doyle Estate has now filed a complaint against Miramax Films seeking to enjoin release of its forthcoming film, Mr. Holmes, which allegedly uses story elements that were first introduced in the Conan Doyle stories that remain under copyright.

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CEASE & DESIST LETTERS FROM BEYOND THE GRAVE – OLD BLOOD & GUTS EDITION

bgtankHere is a marketing conundrum. How do you brand a $575,000 specialty vehicle, built on a Ford truck chassis, that is designed to look like a tank? If you answered “Name it after General George S. Patton” give yourself a 21-gun salute. But here’s the rub—in one of the most astute tactical moves of his storied military career, Patton died in the State in the California which, as we have seen before, is especially solicitous of the eternal publicity rights of anyone who ever died on its soil. In a lawsuit filed the federal court in Los Angeles, the heirs and assigns of “Old Blood & Guts” have brought this heavy artillery to bear on U.S. Specialty Vehicles.

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THE WASHINGTON PRO FOOTBALL FRANCHISE

As has been widely reported, the Trademark Trial and Appeal Board has ruled that “redskins” is deeply offensive slur and can not be federally registered as a trademark under 15 U.S.C. § 1052(a), which prohibits registration of marks that contain “immoral, deceptive, or scandalous matter or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”  (We last looked at that statute when the TTAB denied registration to “cock sucker” for rooster-shaped lollipops.)

I am pleased to see this ruling and hope it will add further impetus to the drive to rename the Washington pro football franchise. But in my self-appointed role as debunker of popular press reporting on IP law issues, the past 24 hours have been hell, even putting aside the CNBC personality who asked how the team could go on without “patent” protection. So a few facts are in order.

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SPLISH-SPLASH, REMEMBRANCE OF THINGS PAST

ss It has been almost 25 years since Laramie, a small Philadelphia-based purveyor of “rack” (read “knockoff”) toys switched roles and scored an enormous hit with its TV-advertised, patented, and SUPER SOAKER® branded line of air pressure water guns. As Laramie’s chief intellectual property enforcer at the time, I remember well several frenetic years of legal activity as we tried, generally successfully, to protect Laramie’s proprietary position against knockoff artists foreign and domestic, and watching with astonishment as the company established new and ever-higher price points for what was still, after all, a rather cheap piece of plastic. Spring was always the busiest time of year, when both the current year’s retail selling season for water guns and the product cycle for the following year’s lines were ramping up. Like Proust’s madeleine, the U.S. District Court for New Jersey’s opinion last week in Buzz Bee Toys v. Swimways Corp., has brought these memories flooding back.

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ENGLISH LANGUAGE 1, SUBWAY 0

subwayNo, this is not another contribution to the on-going debate over whether Subway’s vaunted “footlong” sandwiches actually measure 12 full inches. I will leave that to the consumer affairs bloggers. Our concern is with Subway’s effort to monopolize the word “footlong” as a registered trademark for 12-inch, give or take, heros/submarines/wedges/hoagies/grinders. Last week the Trademark Trial and Appeal Board, in an EXTRA LARGE™ 61-page opinion, rejected Subway’s application, ruling that “footlong” was a widely and long-used generic term for for sandwiches of a certain length.

 

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OWNING OWN THE POWER

oprahSome of my favorite trademark cases involve “reverse confusion.” Instead of the usual scenario in which a rich and powerful senior trademark user crushes a little start-up for trading on its good name, the essence of a reverse confusion case is that a rich and powerful entity has flooded the market with much more promiscuous use of a mark than a smaller, but senior, user of the mark had ever mustered, with the result that the public comes to  believe wrongly that the poor senior user is the infringer. That is the gravamen of the complaint that Own Your Power Communications, a “motivational services business,” brought against Oprah Winfrey and her media empire for the “Own Your Power!” issue of O Magazine pictured here, together with associated online content and events. In a ruling handed down by the Second Circuit last week, Own Your Power won the first round, surviving Oprah’s motion to dismiss the case which was based on the ground that her use of the mark “Own Your Power” was protected under the doctrine of trademark fair use.

 

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THE EMPIRE STRIKES OUT

mickey-mantle-whitey-ford-signed-autographed-1957-yankees-yearbook-psadna-8-t2333117-170It was some ten years ago, while the Boston Red Sox were still mired in the 86-year championship drought brought on by the Curse of the Bambino, that their president Larry Lucchino hung the moniker “Evil Empire” on the New York Yankees.  The Yankees, as Lucchino should have anticipated, took it as a compliment and good naturedly embraced the honorific, even playing the Darth Vadar musical motif at home games.  The Yanks have not, however, gone so far as to use the term “Evil Empire” on team merchandise or otherwise as a trademark, as they have with their more familiar and flattering nickname “Bronx Bombers.” So what happened when an apparel maker unaffiliated with the team sought to register “BASEBALLS EVIL EMPIRE” as a trademark?  Duuh Duuh da da da Duuh Duuh da da da Duuh Duuh dun-dun-dun-duuuuh . . .

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TRADEMARK IS NOT A VERB

Have I ranted about this lately?  A “trademark” is a word, symbol or other indicator of the source and quality of goods or services, i.e., a noun.  Something can only serve as a trademark if it becomes associated by some segment of the public with a particular source.  When it ceases to do that (perhaps by becoming generic, like aspirin) it is no longer a trademark. One may use such an indicator in the hope that it will become recognized as a trademark, and one may apply to the government to register your claim that it is your trademark, but one cannot trademark (verb, transitive) it.

untitledWhat prompts this admittedly peevish, pedantic post?  A Reuters report this afternoon carries the headline “Apple Trademarks Design of its Retail Stores.”  Not so.  Apple applied to register its claim that the design of its retail stores (their “trade dress”)—including such features as “a clear glass storefront surrounded by a paneled facade” and an “oblong table with stools…set below video screens flush mounted on the back wall”—is sufficiently distinctive to function as a trademark, and the U.S. Patent and Trademark Office, Reuters reports, has granted that registration.  (A copy of which is here.) Registration carries with it significant legal advantages, but it cannot turn that which does not actually function as a trademark in marketplace into a trademark.  Reporters and headline writers, please take note.

AN ®-RATED SUCKER BORN EVERY MINUTE

ImageAgentProxySince 1979, Marsha Fox has sold chocolate, rooster-shaped lollipops — especially popular among fans of the University of South Carolina and Jacksonville State Gamecocks — using the fully intended double entendre COCK SUCKER.  In 2001 she applied to the United States Patent and Trademark Office to register the design shown here as a trademark.   Yesterday the United States Court of Appeals for the Federal Circuit issued a ruling affirming the PTO’s decision to deny registration under 15 U.S.C. § 1052, which prohibits registration of marks that contain “immoral, deceptive, or scandalous matter.”  When the solemnity and majesty of the law meets the ribaldry of the vernacular, unintended hilarity is bound to ensue.  Much more about this seminal case after the jump.

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BOOK REPORT: “THE KNOCKOFF ECONOMY”

The over-arching economic problem that dogs all of American patent and copyright law is one of demarcation—when is the marginal utility of  an incentive provided to one innovator “to promote progress in science and the useful arts” outweighed by the burden it places on the creativity and economic freedom of everyone else and is therefore counterproductive?  In The Knockoff Economy: How Imitation Sparks Innovation (Oxford Univ. Press), Law Professors Kal Raustiala of UCLA and Christopher Sprigman of the University of Virginia attack this problem from a novel angle, examining  fields of creative endeavor that seemingly flourish in the absence of patent or copyright protection and in the face of rampant and easy copying—fields such as couture fashion, haute cuisine, stand-up comedy, high finance, and professional (and big-time college) football.  Their approach, more anecdotal and even dishy than empirically rigorous, results in a study that is timely, enjoyable, original, and informative, though it falls short of forming a rock-solid foundation for the broad generalizations about IP law and its application to other fields that the authors seek to draw.

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