Businesses - Branding and Trademarks

There are at least a couple of different schools of thought regarding branding, much of it divorced from the question of trademark protection.  For example, there are several sources that advise business owners to consider naming or labeling a product with a descriptive title (e.g., "Discount Furniture"), but this ignores the trouble lurking for the business down-the-road. In the hierarchy of trademark protection, fanciful (coined/invented) marks enjoy the greatest strength and protection against conflicting use(s) and/or attack, followed by arbitrary (no connection between term and product), and suggestive (suggestive of a characteristic without overtly describing the product).  Any term/phrase falling within these three categories are considered strong marks.

On the opposite end of the hierarchy are generic terms - words/phrases that defines the good (or service), such as escalator or elevator.

And then there is the category of descriptive marks.  Not quite generic and not quite suggestive.  Descriptive marks are not inherently distinctive and require extensive use for some period of time before acquired distinctiveness (secondary meaning) builds that allows the former descriptive mark to be eligible for federal registration.

While the temptation is strong to label a product or service in a descriptive way, since most consumers would understand the use of the term with the product in this way, this approach is wrong-headed and a bit reckless with a business that one is using to generate profit.  Failing to devise a word/term/phrase that is at least suggestive runs the risk of being unable to federally register the mark, making enforcement of such a mark problematic, along with not realizing the full-breadth of protections and advantages that registration allows under federal law.

Alternatively, with sufficient time, thought, and consideration, a mark that is at least suggestive will open up all the doors to the entrepreneur: utilizing an identifiable and memorable brand;  using a mark that is capable of federal registration; and possessing a mark that is poised to grow and obtain increasing goodwill from consumers that adds value to the business as an on-going venture and as a potential target for sell, acquisition, or strategic alliance.

Get It In Writing - Owning The House That Ruth Built

George Herman Ruth, Jr. was better known as "The Babe" (or the Italian equivalent "The Bambino").  At the time of Ruth's trade from the Boston Red Sox to the New York Yankees for the 1920 season, the Bronx Bombers were playing home games in the Polo Grounds - a facility it shared with its owners - the New York Giants (oddly, the Giants organization owned the facility but not the land).  Ruth's career (and the Yankees success) soared immediately, to the consternation of the Giants' leadership.  After a little more than a season of seeing Ruth's popularity result in astronomical Yankee ticket sales, the Giants organization informed the Yankees that the team needed its own home.  The seed for what would become Yankee Stadium was planted. On opening day in 1923, Ruth fittingly hit a home run to christen the new stadium, inspiring New York Evening Telegram sportswriter Fred Lieb to affectionately name the facility "The House That Ruth Built".  Because Ruth's power hitting prowess, the consistent winning of the Yankees, the jealousy of the Giants organization, and Ruth's opening day bomb, Lieb's coined nickname for the new stadium was certainly rooted in accuracy.

On June 13, 1948, the Yankees were celebrating the 25th anniversary of Yankee Stadium and invited a sick and frail Babe for a curtain call.  Ruth stood just inside the left-field line near the infield circle and infield grass.  Facing fair territory, with his cap in his left-hand and a bat in his right-hand, a gaggle of photographers gathered along the right-field base line to snap a photo of the legendary Yankee.  One photographer - Nat Fien (New York Herald Tribune) - positioned himself behind the left-field base line and forever immortalized The Bambino in the stadium he helped facilitate.  This photo:

As has recently come to light, there was apparently a dispute (of sorts) between the estate of the photographer (Nat Fein) and the New York Times, Inc. regarding the ownership of this very famous photograph.  Because Fein was working for a newspaper company that eventually became part of the NTY corporation, the newspaper company believed it was the owner of this photograph (Fein as an employee would have no ownership interest in works he created as part of his employment).  However, the oft-invoked wrinkle rears its head here:  before the NY Herald Tribune ceased operation, the photo editor physically transferred possession of the negative of this photo (and many others) to Fein.

However, the parties deprived a gawking-public of a potentially interesting bit of litigation in determining which group has the rightful claim to the photo (and the copyrights associated with the photo).  Of several key pieces of missing (or omitted) information, it would be critical to know whether the NY Herald Tribune ceased operation prior to being acquired by the NYT (or alternatively, if the NYT acquired the Herald Tribune as it was closing shop, whether the acquisition agreement prohibited any transfer(s) of property without prior authorization, and if so, whether such authorization was secured).

Although the Herald-Tribune editor purportedly transferred the physical property (in the form of negatives) to Fein at some date in the past, the 1909 Copyright Act (as amended) would have controlled at whatever date this transfer occurred; and although less explicit than the language used in the 1976 Copyright Act, the 1909 Act does require a writing (with signature from the owner) to properly transfer ownership (under former section 28, and now embodied more explicitly in section 204 of the 1976 Act).

Another interesting aspect (that has a better chance of discovery, despite the oft-difficult search interface of the Copyright office's webpage and archives, is whether Fein, the NYT, or another entity renewed the copyright registration.  Under the 1909 Act, copyright was registered for an initial term of 28-years and subject to a second (and final) renewal of an additional 28-years.  Since the Fein photo was taken in 1948, the first 28-year  term would have expired in 1976 and would have been subject to the renewal rules of the 1909 Act (as the 1976 Act would not become effective until Jan. 1, 1978).  IF the renewal was not properly filed and/or granted, then the copyright in the photo would have expired and the photo would have become part of the public domain.

Perhaps this information was lost to history and necessitated the parties compromise and agree to this arrangement (with the NYT claiming ownership but with Fein's estate sharing in the revenue generated from sales of the famous photo).

Thus the advice:  get everything in writing to avoid such ambiguities and disputes.

MORE Right of Publicity News - Ellen DeGeneres

Based on the subject line, I'm guessing that a reader would think that Ellen has had her likeness misappropriated and is suing for damage(s).  Rather, the tables are turned and the celebrity talk show host and comedienne is in the hot-seat. Several news sources reporting that a Georgia real estate agent (Titi Pierce) has filed suit against Ellen DeGeneres (and probably all the entities related to the show, as well as other individuals involved with production, etc.), alleging defamation, false light invasion of privacy, misappropriation of likeness and intentional infliction of emotional distress for mispronouncing the agent's name ("titty" instead of "tee-tee") and publicizing the agent's telephone number in connection with the telecast.

The episode originally aired on February 22.  Had that been the lone instance (or had the producers engaged in some sensible editing), then it is unlikely this would have progressed to this stage.  However, the show re-aired on April 15 with no changes.  A clip of the segment posted to Facebook was edited to blur the agent's phone number.

That's not to suggest that I necessarily agree that the agent has a cognizable harm with recoverable damages; without more it is difficult to make such a determination.  Some of that will be determined by how much harm can result from mispronouncing a name to invoke one of the anatomical parts of our bodies that distinguishes the genders/sexes.  IF the agent has proof of the resulting phone calls (allegedly numbering in the 100s) and there are messages that are arguably harassing then a judge/jury is going to have a difficult time allowing Ellen et al. off the hook for liability; measuring the monetary value of such harassment may prove more difficult, esp. for essentially a non-public figure.

The Earnhardt Squabble - Family Names & Trademark Usage

One of the more interesting aspects of observing trademark disputes is the sometimes thorny issues that arise regarding the use of the family name (surname) as a trademark and the bad feelings that tend to ensue from one member of the family trying to exclude use(s) by other family members.  Equally as fascinating is the public's reaction to such action(s) and the often misunderstood nature of trademarks and trademark usage, esp. of surnames.  Take for example the most recent case involving a well-known surname - the surviving family of former NASCAR champion Dale Earnhardt (Sr.). Dale Earnhardt's widow (Teresa) is the CEO of Dale Earnhardt, Inc. (aka "DEI"), formerly a motor racing company, and as of now the owner of all name, image, likeness, and general trademarks (registered and unregistered) of Dale Earnhardt.  This includes six federal registrations for variants of "DALE EARNHARDT", "E", and "THE DALE EARNHARDT FOUNDATION". 

Teresa Earnhardt is the step-mother to:  oldest Earnhardt son, Kerry and younger Earnhardt son, Dale, Jr. (with Kerry and Dale, Jr. being half-brothers).  As former and current members of the NASCAR racing profession, both Kerry and Dale, Jr. have separately registered trademarks on their names ("KERRY EARNHARDT" and "DALE EARNHARDT, JR.").  Each set of marks are separately owned by the respective businesses that each half-brother owns.

But in his post-racing ventures,  Kerry has upset the apple-cart.  First, Kerry filed an intent-to-use (ITU) application for the mark "EARNHARDT OUTDOORS" in connection with his appearances on outdoor related television and video-recorded programming.  This mark successfully cleared opposition, and was converted to an in-use application for registration about two years after filing.  Next, Kerry filed an ITU application for "EARNHARDT COLLECTION" related to home building and home decor.  This mark did not clear opposition - Teresa Earnhardt and DEI filed a notice of opposition to prevent the registration of this mark primarily on the grounds that it was likely to cause confusion with the several registered and unregistered marks related to Dale Earnhardt and owned/used by DEI.  Thereafter, T.E. and DEI filed a notice of cancellation against "EARNHARDT OUTDOORS" on similar grounds.  The separate opposition and cancellation proceedings were consolidated.

The Trademark Trial and Appeal Board (TTAB) determined that although the marks are clearly similar in sight, sound, and connotation, there is no likelihood of confusion because the primary goods/services of the respective sets of marks were directed to (a) racing memorabilia (for DEI's marks) and (b) custom home construction and home decor (for Kerry Earnhardt's marks), with no likelihood of overlap or bridging the gap.

As often happens, T.E. and DEI have appealed the administrative (TTAB) ruling to the federal courts for review.  THIS is the action that caught the attention of journos, racing fans, and lay-people.  DEI is well-within its right to appeal the decision, esp. if there is a good-faith basis for believing that the TTAB committed an error on the evidence or on the law.  Based on the paper-record available, DEI is unlikely to win on appeal largely based on the dissimilarity in the goods/services provided.  Stated more to the lay-person's understanding:  it is unlikely that the consuming public is going to confuse Dale Earnhardt racing memorabilia with home decor and home construction of the "Earnhardt Collection".

However, it is interesting to note the reporting, the public reaction, and today's reported on-record reaction from Dale, Jr (in support of half-brother Kerry).  The reports have generally come within the vein of:  Teresa is trying to stop Kerry from using his (last) name.  

That's only somewhat true - DEI is trying to stop the federal registration of someone incorporating "Earnhardt" into a different mark.  Preventing the registration is only part of the process in stopping the actual trademark use.  Much like the misconception that if the Washington Redskins ultimately lose their federal registrations then the organization will lose the right to use the marks in commerce, even if Kerry Earnhardt's registration is blocked by the USPTO, DEI will have to sue for infringement and/or dilution and get injunctive relief to stop Kerry's usage of "EARNHARDT COLLECTION".

This "family" squabble is one of several over the years.  A relatively recent family squabble arose between members of the rock-band "Van Halen" and one of the ex-wives of drummer Alex Van Halen (Kelly).

ELVH, Inc. is the band-owned company that owns the intellectual property related to the rock band "Van Halen" (ELVH is the initials of guitarist Edward (Lodewijk) Van Halen), including the registered and unregistered marks for the name "VAN HALEN".  After Alex and Kelly Van Halen divorced in 1996, the former Mrs. Van Halen retained her married name and started an interior design and construction company under her former married name "Kelly Van Halen".   As one might expect, litigation ensued.

In Oct. 2013, ELVH, Inc. sued Kelly Van Halen for trademark infringement.  In Jan. 2015, the parties settled their dispute, with Kelly Van Halen able to continue using this name along with additional qualification (e.g., "Design Originals by Kelly Van Halen").  Had that matter continued to trial, it was destined for a similar result as the opposition/cancellation pursued by DEI - no likelihood of confusion based on entirely different goods/services offered.  Fortunately, cooler heads finally prevailed.  We'll see if the same ultimately holds for the Earnhardt's squabble.

Lots of Pub on the "Right of Publicity"

An oft-overlooked discipline of intellectual property is the nebulously titled "right of publicity" that each individual enjoys (and likely doesn't realize/know).  Thanks to a number of high-profile cases in various stages of litigation, as well as the unexpected death of musician/recording artist Prince, the "right of publicity" has been the focus of much discussion. Simply stated: the right of publicity is the right of each individual to profit from the commercial exploitation of one's own name, image, or likeness (NIL) and to prevent others from profiting off of the unauthorized use of one's NIL.

Over the last several years, the two major cases getting most of the attention in connection to the "right of publicity" are/were the Sam Keller (former Arizona St. quarterback) and Ed O'Bannon (former UCLA basketball star) class actions.  Both Keller and O'Bannon sued the NCAA, EA Sports, and the Collegiate Licensing Company (CLC), but on slightly different (but related) grounds.  

Keller sued the three entities for violating NCAA athletes' right of publicity, and eventually secured settlement, first from EA Sports and the CLC for $40 million, and then from the NCAA for an additional $20 million.

O'Bannon sued the three entities for allegedly violating the Sherman Anti-Trust Act, in that the NCAA's rules on amateurism prohibited NCAA athletes from individually or collectively negotiating licenses with third-parties to exploit the athletes' NIL rights.  The district court judge ruled in-favor of the O'Bannon plaintiffs (that the NCAA/EAS/CLC) violated the anti-trust act, and further-ruled that athletes should be paid but that the NCAA could place a cap but not less than the cost of attendance.  The 9th Circuit affirmed the anti-trust violation, but reversed the payment scheme.  The O'Bannon plaintiffs have filed a petition for a writ of certiorari to the US Supreme Court - essentially a request of the SCOTUS to consider an appeal for one or more reasons.

At nearly the same-time that the O'Bannon plaintiffs were crafting and filing the writ of certiorari, recording artist/musician Prince (Rogers Nelson) suddenly and unexpectedly died (on April 21) at his home in Paisley Park, Chanhassen, Minnesota.  Like many states, Minnesota has a general right of publicity law that protects an individual from the misappropriation of one's NIL.  However, Minnesota does not have a specific provision that protects the right of publicity interest beyond the death of the individual.  In the grand majority of cases (and not just in Minnesota), the right of publicity effectively dies with the individual since the commercial viability  of anyone's NIL is non-exist post-mortem.  And then there is the exception:  the native celebrity.

Prince was an unusual person in many (many) ways.  Notably, and unlike so many that find stardom, Prince elected to maintain home-base in his native Minnesota.  While some states (such as California - think Michael Jackson - or Tennessee - think Elvis Presley) have post-mortem rights that benefits the estates, and allows the estates to thwart all unauthorized uses of the NIL of dead-celebrities, Minnesota is not so clearly aligned, and to date, no court has ruled that Minnesota's right of publicity laws survive one's death.  This uncertainty has lead to the Minnesota state legislature to propose a bill to allow dead-celebrities (and more accurately - the estates of dead-celebrities) to control the use(s) of the celebrity's NIL.

A more recent development concerns another group of NCAA athletes and the unauthorized use of their NIL by the fantasy sports sites DraftKings and FanDuel (Daniels et al. v. FanDuel Inc. et al. - Southern District of Indiana: 1:16-cv-01230).  In that federal case, former Norther Illinois football players Akeem Daniels and Cameron Stingily filed suit against the two sites alleging that the fantasy sports companies used the NIL of many NCAA athletes without authorization (and owe damages from the unauthorized use).  This case had been originally filed in Illinois, but was voluntarily dropped and re-filed in Indiana.

Why Indiana (and not Illinois)?  Well, one of the quirks of the right of publicity is that the uniformity from state-to-state is not as harmonized as one might think.  In fact, one state is considered to have the most-favorable right of publicity laws for celebrities:  Indiana.

In Indiana, the right of publicity continues for 100 years beyond the person's death.  Moreover, the Indiana statute provides for statutory damages (in lieu of proving actual damages) of $1000 per instance of misappropriation.  The statute applies to non-domiciled (non-resident) persons, and merely requires that the "use" of the NIL (and other enumerated categories) have occurred within Indiana.

A similar case by NFL players (spear-headed by Washington Redskins WR Pierre Garcon) was filed in October 2015 in federal court in Maryland.  The NFL players' union and the two sites settled that case in Jan. 2016.  The fact that the professional sports organizations include a players' union that is heavily involved in right of publicity questions with the players (generally as a collective) assists companies like FanDuel and DraftKings with one-stop-shopping negotiations and settlement of such claims, including future licensing for authorized use.  Conversely, the lack of such an organization on behalf of NCAA athletes creates challenges in creating such one-stop-shop actions.

The pub that the right of publicity has received of late shows no signs of slowing - even if these rights are generally not well-understood or even recognized by most.  Because these type of rights are most often exercised (or protected) by celebrities that have much to protect in terms of image and perception, the lay person probably does not think much about such rights.  However, as the estates of Elvis Presley and Michael Jackson have taught, the revenue that can be generated after the celebrity's death can be as much if not more than when the celebrity was alive.

Washington Redskins Legal Position Bolstered

As many readers have noticed, this blog has taken several opportunities to provide commentary on the continuing sage of the registered trademarks of the Washington Redskins professional football organization.  Just last month, this blog noted a similar alleged-disparagement case ("THE SLANTS") winding its way through the appeals process with a pending writ of certiorari filed with SCOTUS.  Today, the Washington Post published a new poll it conducted revealing that a significant majority of self-identifying Native Americans do not find the use of "Washington Redskins" or "Redskins" disparaging to the group.  Although this is an internally-commissioned poll by WaPo, the significance of the results could signal the final tolls of the bell for this decades-long trademark challenge. Recall, in 1992, Susan Harjo filed a petition with the USPTO to cancel six registered trademarks owned by the Washington Redskins football organization.  After multiple appeals within and without the administrative agency, the original challenge was nixed based on the legal theory that laches (waiting too long) prohibited the challengers from continuing with the cancellation proceeding in 2005, and mercifully buried by SCOTUS denying to hear the appeal in 2009.  Yet, as the Harjo petition was pending before SCOTUS, a new round of challenges to the same six registrations (on behalf of Amanda Blackhorse and five other individuals).  The Blackhorse challenge will reach its first-decade if it lasts until August 2016.

What threatens the viability of the Blackhorse challenge is the newly published WaPo poll, which reveals that of the 504 respondents self-identifying as Native Americans, 90% are not bothered by the use of "Redskins" by the Washington football organization, 1% offered no opinion, while the remaining 9% find the usage "offensive".  Recall the standard for appropriately holding that a term is "disparaging" is that it is deemed disparaging of a "substantial composite" of the identified group.  While there are no bright-line formulas for determining what is or is not a "substantial composite", a total of 9% finding the term(s) and/or uses "offensive" hardly seems to rise to the level of "substantial composite".

Something that gets a bit lost in the noise of these challenges is that this is the same problem that Harjo had.  Neither Harjo (nor apparently Blackhorse) can marshal the evidence that demonstrates a "substantial composite" of the group find the term offensive.  As noted in an ESPN article, it seems the average person finds the terms more offensive than members of the targeted-group - which is probably a bigger comment on the psychological/sociological issues within our progressively PC society.  Yet, even that evidence has historically favored the Washington organization, as the vast majority of people associate "Washington Redskins" and "Redskins" as identifying the NFL team, with hardly any data indicating such uses are of actual people/persons.

Between the publication of the WaPo poll, the trend in "THE SLANTS" case, as well as general first amendment and trademark examination principles, it appears the "Redskins" matter may reach a finality in favor of the club and its registrations.  Although I never underestimate the federal judiciary to surprise (esp. the intellectual property challenged members of SCOTUS).

CNN Money Botches Redskins' TM Case

After a promising headline ("Redskins ask Supreme Court to hear trademark case"), CNNMoney's description of the legal status and issues in that matter leave a lot to be desired.  While I don't expect laser-like precision from lay reporters, this particular article is light on accuracy. For example, the article states:

The Redskins were told by the U.S. Patent and Trademark Office in June 2014 that the team could not trademark its name because federal law prohibits the registration of anything "scandalous, immoral, or disparaging."

I get what the writer is trying to say - and I'm not one to pick nits with lay reporters - but this is really misleading.  The USPTO canceled six registered trademarks based on the (federal trademark law) Lanham Act's section 2(a) provision against registering a mark or marks that may "disparage" others.  While the federal trademark law does empower the USPTO to prevent registration of such marks, that does not mean that the team cannot "trademark" the "name".  The posture of the Washington Redskins' case is that six registrations of the many marks that the organization possess (either registered or unregistered) have been cancelled from the federal principal register; legally, the organization may (and still does) use the six marks as it has before, since the cancellation of the registered marks has no impact on the usage of the marks in commerce.

As egregious is this sentence:

Revoking its trademark does not mean the Redskins won't be able to keep its name, but losing trademark protection would allow anyone to sell goods with the Redskins name or logo without paying the league as they now must do.

Despite the cancellation of the six registered marks (pending the likely consolidation of appeals / writ for certiorari of the "REDSKINS" and "THE SLANTS" cases), the organization has NOT lost trademark protection.  In fact, the value derived from a trademark springs from the use of the trademark, not the registration.  And registration is not a requirement (unlike copyright) for adopting, using, and enforcing trademark rights. Accordingly, the organization has not lost any of its substantive trademark rights and protections, and any would-be business thinking that it can pilfer these marks for t-shirt or apparel applications would quickly find itself in the cross-hairs of a trademark infringement suit.

In particular, the Lanham Act specifically sets out that unregistered trademarks are protected from the likelihood of source confusion (section 43(a)) in a manner very similar to the protections extended to registered marks.  Although the procedure and proof required to demonstrate to a court/jury that a mark enjoys such protection is slightly higher than if the mark was registered, for lack of a government issued certificate that carries some weight, if adoption, usage, maintenance, and overall-ownership is so demonstrated, the analysis for the likelihood of source confusion is nearly identical whether the mark is registered or unregistered (with some variants between circuits on the number of factors considered in a likelihood of confusion analysis).

Kudos to CNNMoney for revealing that the football organization is seeking a consolidation of its case with "THE SLANTS"; the impact on the organization's appeal to the Fourth Circuit Court of Appeals (pending) is unclear, though.

Prince - More Than a Symbol (Coda)

As the founder and main creative engine of Paisley Park Enterprises, Prince was in the possession of approximately 10 registered trademarks still active and maintained at the time of death (the total exceeds 50 when including formerly used but now "dead" or inactive marks).  While "PRINCE" and "NPG" (or New Power Generation) are well known monikers, the "symbol" may be the most well-known of Prince's many marks, which is an interesting juxtaposition given that he later adopted the symbol as his persona as a means to divorce the artist formerly known as "Prince" from the legal and business stranglehold of Warner Bros. records. One of the first uses of this icon was in the body shape of a Prince guitar.  Later, this symbol was the subject of several trademark applications that matured into federally registered trademarks for a variety of goods and services.  Those four registered marks continue in use.

Despite the extremely symbolic nature that this icon came to represent, a symbol that was used to publicly draw attention to the IP ownership and control issues faced by many recording artists, it is rather coincidental that a musician driven to haggle with his record company for a decade-plus over his creations was later pitted against his fans with the same control issues over his work.  In the advent of the world wide web and the ability to electronically save and share data, at first it was the Napsters, Gnutellas, Kazaas, Aimsters, and the various peer-to-peer file-sharing platforms and then the multi-media platform of YouTube (and other lesser platforms) that surely gave the artist and his team headaches - a digital version of the carnival game "Whack-a-Mole".

Although many of the p-2-p platforms have diminished in popularity, YouTube is a different animal - and Prince was no shrinking violet when it came to the Digital Millennium Copyright Act's "take down notice" procedure.  If popular press is to be believed, at the least, it seemed as though Prince was the main musical bully scouring YouTube for his content popping up in whatever video-based work, regardless of how imaginative or trans-formative.  Before his death, scant-little Prince content was available on YouTube; as soon as someone was brave enough to post any back-catalog work, a DMCA take down notice quickly turned that video link into a snowy-video.

Even more noticeable and interesting in the days since his death - YouTube is now littered with Prince material.  Whether those with monetary interests in the Prince catalog allow this unauthorized usage to continue unabated will be interesting to observe.  It is rather ironic that the very platform that the artist resisted in using for sharing his back-catalog is now being used to shower the artist with admiration.  However, it would hardly be surprising to learn that Prince envisioned this very thing.

Let's also hope that the man engaged in the appropriate forms of estate planning - and that those left with the responsibility of handling his estate for the foreseeable future prevent unauthorized exploitation of his name, image, and likeness.  As so many estates of celebrities have learned, there is no shortage of free-riders willing to use the image of Elvis, Sinatra, and so many others to peddle sketchy merchandise.

RIP.  Thank you for the music.

Group Disparagement Redux - The Slants & The Skins

Last year, this author discussed the decades-long battle that the NFL's Washington Redskins has waged against opposition to the continuing (and future) registration of several trademarks in its possession (here and here).  In those posts, this author high-lighted the ill-founded logic used in the Federal District Court judge's opinion (as overlapping with the TTAB decision at the USPTO).  In particular, when viewed in context, as is required of trademark usage in most-all litigation settings, the six trademarks at issue cannot reasonably be said to refer to a race or ethnicity of people, much less in a disparaging way that warrants cancellation of the marks under section 2(a) of the Lanham Act. In more recent months, the Court of Appeals for the Federal Circuit (CAFC) reversed the Trademark Trial and Appeal Board (TTAB) and its refusal to register the term "THE SLANTS" as used in association with the music services of an Asian-American band of the same name from Portland, OR.  In essence, the en banc panel of the CAFC (9 of 12 judges) determined that section 2(a) was an unconstitutional content restriction on free-speech. As a reminder, section 2(a) is the provision relied upon by challengers (over the years) to the Washington Redskins' various registrations.  Not surprisingly, the USPTO has appealed the decision in "THE SLANTS" case and awaits word whether the US Supreme Court will grant certiorari and attempt to resolve this matter.

Notably, in its petition for writ of certiorari, the USPTO essentially argues that section 2(a) of the Lanham Act does not restrict free speech by refusing to register marks that "disparage" people or groups but instead is a lawful criteria for eligibility on the federal trademark register within Congress' power.  The petition is well organized and argued, and references several seemingly favorable federal court cases in support of a very nuanced argument.

Whether the US Supreme Court will grant cert (and render a meaningful decision) is subject to considerable conjecture.  Despite the fine pedigree of the Supreme Court justices, many practicing intellectual property attorneys will bemoan the decisions of the Supreme Court on patent, copyright, and trademark cases.  Since this is being presented as a First Amendment challenge within a trademark context, there is a good likelihood that the Court will grant cert - but the ideological divide of the court will likely rear its head and result in a 4-4 split and the CAFC's en banc decision will stand until the next opportunity.

Whether the CAFC's decision should stand is a matter I will have to address in a future post.

Prince - More Than a Symbol (Pt. 5)

In previous entries, the focus was predominantly on the legal and business obstacles Prince encountered or raised during his fruitful but tumultuous tenure at Warner Brothers Records (1978-1996 - spanning 18 studio records).  In this part, the focus will shift slightly to Prince's writings and publishing.  Although prolific in his own right for writing and recording much of his own material, Prince was also a bit generous with his writings, offering these songs to others when appropriate. In the past several days, there have been a handful of articles published identifying songs that many folks may not have known were penned (at least in part) by Prince.  One of the more famous examples is The Bangles' hit single "Manic Monday" that is officially credited to Christopher (one of Prince's many pseudonyms).  "Manic Monday" peaked at #2 on the Billboard Hot 100 Singles Chart, and denied the top spot by (wait for it) - Prince's "Kiss" (from the album Parade).  However, two other Prince-penned songs achieved similar chart success and acclaim: Chaka Khan's re-recording of "I Feel For You" (originally recorded by Prince in 1979); and Sinead O'Connor's "Nothing Compares 2 U" (originally recorded by Prince-produced funk band The Family, and later recorded live by Prince with Rosie Gaines).  O'Connor's "Nothing" topped the Billboard Hot 100 for four weeks ("I Feel For You" peaked at #3).

Other notably successful songs/singles written in whole or in part by Prince include a song recorded by The Kid's nemesis from the film "Purple Rain" - Morris Day and the Time's "Jungle Love" (and the memorable dance from the video), as well as Sheila E.'s "The Glamorous Life" and "A Love Bizarre" (and keeping with the Prince-influenced alternate spelling).  In fact, Prince provided vocals to "A Love Bizarre" though the song was not officially pressed or marketed as a true duet between the two.  Prince also wrote "Sugar Walls" (recorded by Sheena Easton), someone he would later join for a duet on "Arms of Orion" from the "Batman Soundtrack".  Prince also wrote "Love . . . They Will Be Done" that was recorded by former child-actor Martika.  And, Prince contributed a synth part to Stevie Nicks' "Stand Back" (which was inspired by Prince's "Little Red Corvette".

Because Prince owned publishing rights in these songs, many of them he owned out-right as the sole writer, he also reaped additional financial reward through the publishing royalties monitored by the performing rights organizations (PROs - such as ASCAP or BMI).  Quite often, publishing royalties form a lucrative part of the musicians arsenal, esp. as hit songs continue to resonate with future generations and become subject to reuse in advertising and film.

Prince - More Than a Symbol (Pt. 4)

Although Prince was annoyed (if not frustrated) by Warner Bros. controlling the throttle on his musical output, further exacerbated by Warner Bros. shutting-down Prince's "independent" Paisley Park Records (based in Minneapolis), the real frustration and anger bubbled from the control that Warner Bros. had over the artist's back catalog.  For certain, this was the standard in the industry, but it did not subdue to feelings that artists had little control over their works, and worse - they had no ownership stake in the sound recordings. As he recalled during a lengthy interview with CNN's Larry King in Dec. 1999, Prince explained this chief complaint about the industry (and Warner Bros. in particular), manifesting as an issue of monetization and control.   As noted in the interview, Prince said he would have to re-record individual titles to gain control over back catalog songs, and that he had re-recorded "1999" (a new master recording) for this purpose.  This is a practice that has become more common-place (esp. in light of the sec. 203 termination provision); on the extreme end of the scale, in 2012, Def Leppard began re-recording their classic hits as a way to bypass their label's (Universal Music Group) accounting methodology for digital downloads.

Against this backdrop, and unable to shake WBs bonds over his works, Prince began to implement a rather interesting series of tactics to leverage some control away from the company.  At first, Prince scrawled the word "Slave" onto the side of his face - an intentionally bombastic and inflammatory visual cue.  On the legal side, the artist adopted a symbol as his recording and performing persona, an amalgamation of the male and female symbols - while dropping all reference to "Prince" and eventually referenced as "The Artist Formerly Known As Prince", "TAFKAP", or simply "The Artist".

By disassociating himself from his stage name "Prince" and adopting a wholly different symbol as a reference point, in a somewhat humorously coincidental turnabout, Warner Bros. was forced to promote "Prince" material without much cooperation from the artist himself.  For example, the single "The Most Beautiful Girl in the World" is Prince's only no. 1 hit in the UK - it was recorded and released approx. 18-months before it appeared on a "Prince" album (The Gold Experience - released Sept. 1995), a move that was mostly unthinkable in that era.  Even more astonishing is that Warner Bros. allowed The Symbol to release and distribute the single through a series of independent labels and distributors - something that Warner Bros. probably regretted as the single ascended the charts (esp. in the UK), but was conceded as a means to appease the musical star.

The tensions between The Symbol and Warner Bros. were somewhat resolved by the artist gaining his release from the Warner Bros. label in 1996 - an event celebrated by the artist in naming his first release on his new label "Emancipation" - and not surprisingly, a triple-length album at that.  Ironically, this was the third release by Prince/The Symbol in 1996, with Warner Bros. having released the other two albums before EMI released "Emancipation".

Despite the difficulties between the parties, this would not be the last time the artist would work with Warner Bros.  As part of a significant (and unusual business deal in the music industry), in 2014, Warner Bros. agreed to assign the ownership of his master recordings back to Prince in exchange for a business deal that brought Prince back to Warner Bros. (though it is not clear whether the masters are returned in one large package or piece-meal according to the Copyright Act's termination provision in sec. 203).

This deal also led to the release of two full-length albums (see 2014's double release of "Plectrumelectrum" and "Art Official Age") on the same day.   The deal seemed to place Prince in control of his work, but with the understanding that Warner Bros. would be the go-to distributor on his Warner Bros. back catalog and on any new material produced through Prince's "independent" NPG Records label.  The impending opportunity for Prince to recapture the sound recording copyrights (originally assigned to Warner Bros.) certainly shifted the leverage in his favor and cleared the deck for Prince to finally wrest control over his WB works from the company.

(Part 5 will take a look at other aspects of intellectual property that Prince utilized to his favor)

Prince - More Than a Symbol (Pt. 3)

In part 2, I made note of the Sec. 203 of the Copyright Act and the provision that allows recording artists to recapture copyrights originally assigned to the recording companies, (usually the master recordings).  Otherwise, recording companies have generally held on to the assigned copyrights in the recordings to squeeze out all the sales conceivably available from a full-length album until sec. 203 rights manifest. By the time Prince was signed with Warner Bros. (1978), the recording industry was utilizing a fairly tried-and-tested method of utilizing new artists.  This included recording, mixing, and mastering new material, mass producing the material, and promoting the record (and the artist) through touring.  For new artists, a new batch of material for release was expected on a fairly steady twelve-month cycle.

For many artists, this proved to be a grueling process - especially the incessant touring.  Moreover, as artists became established, and their contracts were re-negotiated, the time-crunch eased somewhat, thereby allowing artists to move to a two-year cycle.  For most.

Prince proved to be the exception - an artist ill-fit for contemporaneous business standards and a throw-back to the days of James Brown and Elvis Presley recording and releasing a new single every 8-10 weeks for months/years on-end.  Not content to write and record a single full-length album once per year, Prince proved rather prodigious in both the volume of his writing and the quality in the volume.

From 1984's "Purple Rain" soundtrack through 1992's "Love Symbol Album", Warner Bros. released one Prince album per calendar year.  On paper, there is hardly anything unusual or extraordinary about that fact.  Yet, the musical genius was constantly writing and recording and pushing the boundaries of the industry's business model.

For example, 1987's "Sign O' the Times" was a double-length album.  "Sign" was an outgrowth from a double-album conceived and recorded in 1985-86 with Revolution band-mates Wendy & Lisa that fizzled as those relationships fizzled.  After the release of "Parade" in 1986, Prince started work on what would become a triple-length album performed by an alter-ego of sorts (an "eponymous" title "Camille") that was also shelved.  All the while, Prince was also recording material to meet his contract obligations and also churning out excess material for artists like the Bangles, Sheila E., and other minor musical acts.

From Warner Bros. perspective, the company had a bit of a paradox on its hands.  In the newly established MTV generation, the public could not get enough of Prince (or so it seemed).  Yet, the fear of over-exposure is ever-present.  Moreover, in the post-Thriller music world, the life-cycle of albums and singles had changed, and the window for maximizing marketing opportunities for albums had lengthened considerably.   With Prince, Warner Bros. was not yet even phasing down its marketing for the current release when Prince was handing the company new material for distribution and promotion.  As is oft-said of basketball great Michael Jordan:  the only person that could hold MJ below 20 points was (college coach) Dean Smith; for Prince, the only party that could hold him back was the Warner Bros. machine.

Because of the leverage it possessed, Warner Bros. typically won these content-volume battles.  While certainly proud of the work he had recently wrote and recorded, Prince did not sit-back in admiration, but rather was always moving forward and living in the now.  His motto or creed seemed to be:  that [the past] is great, but what's next?  As Variety recently recalled in an interview with a former WBs executive, Prince had a lot to say and wanted to say it now (rather than later), and was unconcerned by the marketing and promotion perils caused by his high-volume approach.

(Part 4 explores the rising tensions between Prince and Warner Bros. that came to a head in the early 90s)

Prince - More Than a Symbol (Pt. 2)

As noted in the previous post, the unexpected death of Prince has generally dominated the news cycle since the news first broke late last week.  Because Prince was still a relatively young man (57 years old), and thought to be in generally good health, the news was obviously surprising and evoked strong reactions from friends and fans (and detractors, as well).  As a fan, I am disappointed that there will be fewer opportunities to watch Prince in the live arena - an aspect of his entertainment persona that was virtually unparalleled in skill and aplomb, even as he approached his 60th birthday. As a practicing attorney, and general observer of pop culture and the music industry, I am deeply interested in the trails that Prince blazed in defying conventional wisdom on several fronts, despite considerable resistance from the industry writ large and from the business partner he originally joined (Warner Bros.).  Because of (and in some cases, despite) his musical genius, the music that Prince wrote became both the backbone of his eventual empire and a threat to his partnership with Warner Bros.

Up until the Internet began to lower the barrier to entry for recording, reproducing, and distributing music, the record companies (a seemingly archaic label held-over from the golden-age or vinyl records) held virtually all the leverage by comparison to unsigned and unknown musicians.  A by-product of this imbalance was take-it-or-leave-it recording contracts that assigned the copyrights to the recordings to the company in exchange for money advances to live and record/duplicate/market a full-length album and a few points royalty on the sales of each record.

Prior to the comprehensive revision to the Copyright Act in 1976, it was extremely difficult for a recording artist to recapture the copyright ownership in the master recordings used by the record company to duplicate the work for mass production.  Even with the 1976 Act (at 17 U.S.C. sec. 203), the recapture of these copyrights requires the recording artist to wait a considerable period of time (approx. 35 years) to fully recapture the rights through termination of the original assignment of the master recording's copyright.  Because the 1976 Act did not become effective until Jan. 1, 1978, the full-effect of this provision of the Copyright Act has not become evident until the last few years (2013).  Short of this statutorily enforceable provision, recording companies have had very little motivation or incentive to voluntarily terminate these assigned rights.  Save for a persistent artist or two.

(Part 3 will continue this look at Prince and Warner Bros.)

Prince - More Than a Symbol

As a fan of Prince, and in particular the eclectic run of funk/rock/r&b/dance with Warner Bros. records from 1978 through the early 1990s, I could write at length regarding the genius of his writings, recordings, and performances, the depth of his reach and appeal, and the reflection of his influences that pour from this catalog.  While tempting, much of what I could say has likely been said in the many tributes that have emerged in the wake of the artist's death. Instead, over the next several days, I will examine the influence the man had on the music industry - legal and cultural.  Without question, Prince the artist became well-versed in the legal constructs of the music industry, growing to appreciate the legal and commercial heft of intellectual property ownership wields, whether it was to his personal detriment or benefit.  Although Prince Rogers Nelson briefly adopted an unpronounceable symbol as a means to fight Warner Bros. and its stranglehold on the performing artist known as "Prince", the musician and performer transcended categorization and the businessman merely used a symbol to achieve greater freedom than he previously enjoyed with his early catalog.

Accordingly, I will be reviewing the various aspects of Prince's career that touch-on intellectual property ownership and issues of ownership and control of exploitation, as well as how technology was both embraced and shunned.

As a true "child" of the 1980s - 7 to 18 years old bookend-to-bookend - it is undeniable that Prince (along with an impressive roster of other superstars) were the soundtrack to my young life.  Like the generation of my parents, this generation is starting to experience the deaths of their pop culture icons - a reminder that we grow older by the day and that life is (to pilfer Elton John) like a candle in the wind and that all the fame, wealth, and adoration of millions cannot stop the march of time.

225 Years Ago - U.S. Issues First Patent

On July 31, 1790, the United States government (well before the establishment of the U.S. Patent and Trademark Office) issued the first patent to Samuel Hopkins for the making of potash (and pearl ash) by a new apparatus and method. The Hopkins patent was the first issued under the newly enacted patent statute (April 1790).  Several noteworthy items to note about the Hopkins patent, mostly distinguishing then-from-now. Unlike today's evaluation by a patent examiner (with a technical degree in the field of invention), the first statute required the Secretary of State, the Secretary of War, and the Attorney General to act as a three-person committee to evaluate a petition for patent by an inventor(s).  Moreover, unlike the claiming system of today, the committee provided the written description describing the metes and bounds of the invention.

Despite the specified three-person committee set-up, the Secretary of War (Henry Knox) was occupied with the details of the many battles taking place in the Northwest Territory in retaliation for Indian raids on settlers in present-day Kentucky.  In his stead, President George Washington consulted with Secretary of State Thomas Jefferson and Attorney General Edmond Rudolph in approving Hopkins' petition for patent for the improvement in potash production.  For the improvement, Mr. Hopkins is currently memorialized as possessing U.S. Patent No. x000001.

Also notable is the patent number.  As originally issued, the patent number was 000001.  However, in 1836, a fire destroyed the patent office and all the contents/records, including approximately 10,000 patents issued by the government.  What is now available are recovered/restored records, and obviously not the originals, have been annotated with the designation "x" preceding the patent number.  These restored patent records are labeled the "X-Patents".

As for the invention, potash is the residue (ash) after wood is burned in a pot - thus "pot" and ash".  Chemically, potash is the nickname for calcium carbonate (CaCO3).  Calcium carbonate is found in rock, esp. as limescale, and in the shell of aquatic and terrestrial animals, and has been used for a variety of things, including as a calcium supplement, stomach ant-acid, and in vivo pH neutralizers.

In fact, I owned a miniature schnauzer that frequently developed bladder stones; as a preventative course of treatment, his diet included a special dog food mixed with crushed egg-shells -- the calcium carbonate in the egg-shells providing a pH-raising effect (to neutralize his normally acidic urine).

Potash (and pearl ash) became significant precursor material in the processes of making soap, glass, and gunpowder.  Thus, Hopkins' improvement on previously-known processes was an important contribution to the early economy of the new republic.  And finally, it is notable that Hopkins' invention was an improvement and not a pioneering sea-change.  This characteristic is a predominant feature of most U.S. patents.

If you have an invention, esp. any improvements on existing technology, you should consider the appropriateness of patent protection.  York Law LLC can assist all inventors in determining the appropriate course.  Feel free to send an email (info@olenyork.com) for more information.

The Washington Redskins Trademark Controversy - Part II

In part I, this author briefly discussed the recent decision by District Court Judge Gerald Lee (E.D. Va.) that independently agreed (under the statute's de novo review required by a district court) with the USPTO's Trademark Trial and Appeal Board's (TTAB) decision to cancel six registered trademarks for the NFL's Washington Redskin franchise.  In that entry, this author stated disagreement with both recent opinions, but without much analysis, saving the beginning of that discussion for this and future entries. As mentioned in the previous post, and although pilfered from John Adams and the Massachusetts Constitution (1780) and oft-applied to the Union that soon followed (1787), if this republic is a government of laws and not of men, and if the consent of the governed demands clearly written and applied laws and not the unpredictable will of the few, then these recent trademark decisions are but two of a growing list of decisions (and laws) violating these bedrock principles. 

To be clear, Judge Lee clarified certain issues that have been incorrectly conflated with the issues in this case (and the legacy case of Harjo).  For example, Judge Lee made it clear that it is the trademark registrations and not the trademarks that are at issue.  Rather, the statutory provision asserted (15 USC Sect. 1052(a) - "Sect. 2(a)") only allows for cancellation of the registration, not prohibition of use in commerce.  Neither the TTAB nor the District Court (in this instance) can prohibit the use of the marks despite any cancellation that may transpire.

Moreover, Judge Lee correctly pointed out (to anyone understanding and paying attention) that not only can the NFL franchise continue to use the marks in commerce despite any cancellation(s), the Lanham (trademark) Act allows a party to sue for infringement of its unregistered trademarks (15 USC Sect. 1125(a) - "Sect. 43(a)").  Therefore, despite the political and legal hand-wringing that continues over this matter, any speculated termination of the Washington Redskins trademarks is premature and highly exaggerated.

Now for the substance of Judge Lee's decision; as a preliminary matter, I am reserving comment on the constitutional questions for a future time.  IMO, the constitutional arguments are nuanced and deserving of considerable thought before comment.  Nor will I address the laches (unreasonable delay in pursuing suit) issue at this time.

Judge Lee's order was based on motions for (and opposing) summary judgment, which requires that there be no genuine issue of material fact and the movant is entitled to judgment as a matter of law (e.g., Fed. R. Civ. Pro. 56(a)).  IMO, this is problematic for several reasons.  First, to the question of whether a particular trademark has disparaging capabilities to a group of individuals, the USPTO asks: (1) is the mark understood as referring to an identifiable group of people? and (2) may that reference be perceived as disparaging to a substantial representation of that group?  Judge Lee answers:

[. . .] the record evidence shows that the term "redskin" in the context of Native Americans and during the relevant time period, was offensive and one that "may disparage" a substantial composite of Native Americans, "no matter what the goods or services with which the mark is used." [citation omitted]  p. 63

Despite their respective decisions, neither the TTAB nor Judge Lee seem to properly analyze question (1), both relying heavily on dictionary definitions to define "redskin" as an offensive term used in connection to Native Americans to skip ahead to question (2).  Yet question (1) is a threshold question - and if the mark is not understood as referring to an identifiable group of people, a tribunal does not reach question (2).

This is where the marks are of considerable importance.  While each of the six marks uses "redskins" in some manner, the usage is critical to answering question (1).  The six marks include:  a stylized (script) "The Redskins", the stylized "The Redskins" + arrow + Indian profile, non-stylized "Redskins", "Redskinettes", the word mark "Washington Redskins", and the word mark "Washington Redskins" + Indian profile.

It is highly arguable that any of the marks are understood to identify a group of people, since all of these marks are predominantly (if not exclusively) used in association with the NFL franchise and not as a pejorative against Native Americans.  "Redskinettes" and the two marks using "Washington Redskins" are particularly difficult to associate with a group/race of people when considered in context of commercial use.

As used, "Redskinettes" is a mark associated with the female cheerleaders of the football franchise, a term presumptively coined by the franchise and used only by the franchise in this association.  There does not appear to be any evidence that the term "Redskinette" is plausibly understood to refer to Native Americans.  It is doubtful that anything above a statistically insignificant number of Americans would understand this term to mean anything other than in connection with an athletic team nickname (although not necessarily the nickname itself).

Likewise, when used, the two marks utilizing "Washington Redskins" are clearly referring to the NFL franchise located near Washington, D.C., and not a group of Native Americans.  These marks are so identifiable with the NFL franchise that the experts used by the complainants could find scant-little instances of recorded usage of the term "redskin" as a pejorative after 1969 (with 143,000+ articles making at least one "redskin" reference, with the overwhelming majority of these references to the Washington D.C. pro football franchise).

Illogically, the TTAB majority noted that the extreme drop-off in usage of "redskin" as a derogatory term was evidence of the derogatory and disparaging nature of the term; in many circles, this is considered a logical fallacy (as evidence of absence and a false dichotomy).  One could more plausibly conclude that the drop-off in the use of "redskins" in a derogatory manner (compared to the number of actual media uses) is evidence of the strong association between the term and the NFL franchise.

Accordingly, it is reasonable to suggest that Judge Lee put the cart before the horse by divorcing the actual context of the marks as used and labeling the "context" of these marks as being understood to refer to Native Americans.  In part III, additional aspects of this decision will be examined.

30 Years Ago - Coca-Cola's New Coke "Fail"

Yesterday marked the 30th anniversary of Coca-Cola's public admission that "New" Coke was a commercial failure.  As the linked article reminds, in April 1985, Coca-Cola, Inc. announced that it would abandon the original Coca-Cola formula and switch to a "new" formula that resulted in a slightly sweeter taste similar to Pepsi.  Yet, a mere 79 days after its launch, Coca-Cola announced on July 11, 1985 that it would resurrect the original formula in the re-branded "Coca-Cola Classic" (or "Coke Classic") while maintaining the "New" Coke product as well. Whether this was a massive failure in understanding one's product and it's market, or a cleverly designed scheme to shelve the original formula for a short-time to drive up publicity and demand for that product, the return of the original formula ("Classic") to shelves resulted in improved sales and better competitive footing with Pepsi (which would later endure a similar "misstep" with Crystal Pepsi in 1992 - coincidentally, also set for a revival soon).

While the public tends to have a basic understanding of trade secret protection, many know that the original Coca-Cola formula is perhaps the most famous trade secret in business history.  It is one of the great examples of the value of a trade secret.  It also represents the leading alternative to the patent process.

With any new/improved technology, process, or technique, the innovator(s) is faced with the dilemma of whether to patent the improvement or protect the innovation by trade secret.  While there are instances where both forms of protection may be utilized to protect different aspects of the overall improvement, each separate aspect of the new/improved innovation must be held in secrecy (trade secret) or disclosed (patent).  The two (different) forms of protection compel the different approaches, since these forms of protection are the opposite sides of the same innovation coin, in several legal and practical ways.

Trade secret laws are based in common law, and have since been codified at the state level and/or through interstate compacts (e.g., UTSA, the  Uniform Trade Secret Act).  Despite adoption in all states and in uniform acts, most versions are virtually identical in form.  Something of value must be held in secrecy and protected using reasonable means to guard against public accessibility.

Notably, one does not "apply" for a trade secret or await "approval" from a governmental agency.  Thus, there is no governmental cost to obtaining a trade secret; the only costs are business and legal.  One simply holds the technology, process, technique, information, or data in secret (well, more simply stated than simply accomplished).  If the tech/info is pilfered by another, then "misappropriation" of a trade secret has occurred and is actionable.  And unlike patent law, trade secret law has both a civil penalty and a criminal penalty aspect (exemplified by the unlikely team of Coca-Cola and Pepsico assisting the FBI in prosecuting three individuals for the theft and attempted sale of Coca-Cola info to Pepsico).

Conversely, patent laws are based in the U.S. Constitution (as are copyright laws).  To obtain a patent, one must file an application with the U.S. Patent and Trademark Office (USPTO or PTO).  The application must include at least one written claim defining the scope (the metes and bounds like the written description of a property deed), as well as an inventor's declaration, and the appropriate filing fees.

The application will often endure a 2-4 year road through examination, hopefully with issuance of at least one claim and a patent resulting thereafter.  In exchange for the limited monopoly of the granted patent, measured as a 20-year term from the filing date, the inventor/applicant must disclose all information necessary to practice the invention.

Thus, the flip-sides of the coin:  secrecy and potential protection into perpetuity (trade secret), or public disclosure and limited monopoly (patent).  Sometimes the dilemma is easy to resolve; other times, it is the decision that determines the livelihood of the business going forward.  If you have such a dilemma, do not hesitate to contact York Law LLC to determine which path is the best for your business.

The Washington Redskins Trademark Controversy - Part I

Given the recent controversies over the Confederate Flag in South Carolina, as well as the recent SCOTUS decision regarding Confederate Veterans and license plates in Texas, and the alleged implications of these outcomes on the Washington Redskins trademark controversy, I've been building toward a post on the subject.  However, before I could get there, Federal District Court Judge Gerald Lee affirmed the decision of the US Patent and Trademark Office (USPTO) and its Trademark Trial and Appeal Board's (TTAB) decision to cancel six of the trademark registrations the franchise possesses for "Washington Redskins".  So, the time is right for some analysis and critical comment on this very recent decision and the related decision(s) and commentary that have come before. As one might expect, this will be a multi-part post, as one entry will simply not be sufficient to cover all the ground necessary to explain why, in the opinion this author, the USPTO and the Federal Courts have got it wrong so far.  If this is a nation of laws (as is said), then both the TTAB and the Federal Court for the Eastern District of Virginia (E.D. Va.) (and Judge Lee) have ignored that principle because trademark law and judicial precedent say one thing on the standard to apply while these tribunals have misstated, misapplied, and wrongly analyzed the law and doctrine at issue.

Moreover, and as a threshold gripe, the reporting on this matter continues to miss the mark.  Like the TTAB and federal court(s), the news agencies misstate or simply miss the real, relevant issues in analyzing a cancellation proceeding for alleged disparaging marks.  Rather than focus on the appropriate legal standard, the news (and the tribunals), have focused on the term "Redskins" completely devoid of the use of the term in commerce, which is required.  Moreover, to cancel such a mark, significant evidence must be marshaled that shows a substantial composite of the group allegedly disparaged finds the term disparaging.  As was the case in the original Washington Redskins trademark row (Harjo), which took more than 13 years to resolve (in favor of the NFL franchise), there simply is not significant evidence of such disparagement.  Yet, the tribunals have lurched and groped to find "evidence" deemed sufficient to cancel the marks.

In addition, the news reports have been inadequate in describing what will result even in the unlikely event Washington's marks are cancelled.  For example, the Washington Post asserts that the franchise would still have state law rights in the trademarks - but that is not only an incomplete answer, but an answer/option that if far less valuable for the franchise.  Although state law may provide some protection(s), the franchise will still have very valuable rights under the federal trademark statute - the Lanham Act.

Unlike patents and copyrights, trademarks do not derive value and become a legally protectable asset until the mark(s) is/are used in commerce.  For federal protection via the Lanham Act, that use must be in interstate commerce.  However, federal protection is not contingent upon registration; rather, the Lanham Act protects unregistered trademarks as well (under Sect. 43(a) of the act - 15 USC Sect. 1125).

Some commentators have questioned whether a mark previously registered and then cancelled because of offensiveness or disparagement would then enjoy trademark protection under the unregistered provision of the Lanham Act.  It is an interesting question, and there is no substantive precedent in this area, so it would be a case of first impression with any court that is forced to set over this matter.  This, and other issues, will be reserved for subsequent parts to follow.

In part 2, the next entry will explore my reason and rationale for finding the TTAB and federal court decisions in error.

McCartney's Second Bite at the (Recording Co.) Apple

In a previous post, discussing Paul McCartney's decades-long gripe regarding songwriting order attribution (to make-up a phrase), I made note of McCartney's net worth ($660 million) to anchor the essay in reality:  the world's most famous living songwriter (and the second wealthiest) still nursing a long-held grievance over when his name should lead and follow when referenced as a tandem with deceased Beatle John Lennon that is more ego and PR-driven than money-driven. Notably, from the source estimating McCartney's estimated net worth, the CNN Money author speculated that McCartney's new worth will climb higher than otherwise normal because we are entering a time-window where many performing artists are (attempting) to reclaim the copyright in the original sound recordings used on the Beatles, Wings, and McCartney solo albums.  The termination and reversion provisions in the 1976 Copyright Act have been subject to quality academic scholarship, and at the least, is worth noting here for (presumably) a predominantly lay audience.

As Congress and the various committee members worked for well-over a decade on what eventually became the 1976 Copyright Act, replacing the 1909 Copyright Act, the contractual sins committed in the popular music industry came home to roost (to a degree) - sins too numerous to recount.  Motivated in part by the inadvertent loss of copyright protection through renewal failure,^[1] and the arguably unconscionable recording contracts utilized by record companies (many of which forced assignment of copyrights and the subsequent sound recordings resulting from studio session work), Congress inserted two termination and reversion provisions in the 1976 Copyright Act in an attempt to (partially) ameliorate these problems that often economically prejudiced the authors/creators of the original work(s).

The first termination/reversion provision appears at 17 USC Sect. 203, which allows an author to terminate grants of copyright assignments and licenses that were made on or after January 1, 1978, the termination being effective no sooner than 35 years measured from the date of grant (or publication). As is clear, that section of the Act addresses works created after Jan. 1, 1978, the effective date of the 1976 Copyright Act that carried with it changes in the term of the copyright (life of author + 50 years -- and which is now life + 70 years) and the removal of the renewal provision.

The second termination provision appears at 17 USC Sect. 304, setting forth the timing of a termination of a work so long as the underlying copyright was in its initial 28-year period or its renewal (final) 28-year period existing on the effective date of the 1976 Copyright Act (Jan. 1, 1978), so long as the work was not a "work made for hire" (WMFH).  The end-point of the assignment/licensing term is measured as 56 years from the original from the day copyright was secured (or Jan. 1, 1978, whichever is the latest in sequence.

The enforceability of either provision is subject to a pre-condition that the author meet several specified requirements in the request for termination.

For McCartney, and assuming proper notification is perfected, the likely sequence for McCartney's termination and re-capture rights under Sect. 203 (35 years) appears to be:

• 2013 - songs from the 1978 studio LP London Town
• 2013 - songs from the 1978 compilation LP Wings Greatest (including four new/previously unreleased tracks + "Live and Let Die" which had appeared only on the Bond film soundtrack of the same name)
• 2014 - songs from the 1979 studio LP Back to the Egg
• 2017 - songs from the 1982 studio LP Tug of War (featuring hit single duet with Stevie Wonder, "Ebony and Ivory")
• 2018 - songs from the 1983 studio LP Pipes of Peace (featuring hit single duet with Michael Jackson "Say, Say, Say")

More importantly, if history is any indication, McCartney's termination and re-capture rights under Sect. 304 (56 years from original) for the original Beatles catalog (owned by Apple Records) begins in 2019, and continues sequentially thereafter for the next seven years into 2026.  Given the unprecedented singles-chart ubiquity that The Beatles enjoyed upon their early arrival in the U.S.,^[2] corresponding to the enormous popularity of The Fab Four, when McCartney is able to get his paws on The Beatles catalog, I fully anticipate several packaging options (without the original album artwork, which is itself separately copyrighted, most likely by the record companies).  Thus, the firmly-rooted speculation by CNN that soon (very soon), McCartney will become even wealthier through the additional exploitation of the The Beatles back-catalog (subject to the accounting owed by McCartney to the other Beatles and/or their estates).

Footnotes

1. Under the 1909 Copyright Act (immediately prior to implementation of the 1976 Copyright Act), a copyright was initially registered for a 28-year term and subject to a final 28-year renewal term. However, more often than should have happened, the original registrant (not the creator) would allow the original term to expire without renewing the term and without notifying the creator of that decision, thereby effectively preventing the creator from capturing the final 28-year term for further exploitation. This problem became particularly acute with the development of home video market as a channel for sales of feature films and syndicated television shows and the media-technology-format changes in the music industry (from LP to cassette and 8-track and then CD). Without securing the final 28-year term, both the company and the artist lost out on revenue, and opportunistic media companies could capitalize by re-packaging material no longer blocked by copyright protection. 2. In the Billboard Magazine Hot 100 singles chart issued for April 4, 1964, The Beatles held all five positions atop the Hot 100 chart: No. 1 - "Can't Buy Me Love"; No. 2 - "Twist and Shout"; No. 3 - "She Loves You"; No. 4 - "I Want to Hold Your Hand"; and No. 5 - "Please Please Me".

Squabbles: Lennon/McCartney or McCartney/Lennon - And Does It Matter?

In the most recent edition of Esquire magazine, Sir Paul McCartney reflects on a long and storied career as a singer-songwriter and performer for The Beatles, with Wings, and as a solo artist.  Although McCartney is reportedly the second richest recording artist (and richest male), having a net worth estimated at $660 million, many may find it surprising that McCartney cares about the songwriting credit order attributed to The Beatles songs McCartney co-wrote with fellow Beatle John Lennon. In the two creative-creator centric intellectual property disciplines (copyrights and patents), the listed order of copyright owners or patentees is legally irrelevant concerning the separate rights of the owners/patentees.

For a copyright, the co-writers/co-owners individually enjoy all the rights set forth in 17 U.S.C. § 106, so that any, all, or a subset of all co-writers/co-owners may exploit the work by further reproductions, etc. Likewise, for a patent, each co-inventor may "practice" the invention (e.g., manufacture) or license the subject matter to another party.

However, the differences lie in what is owed to the co-creators upon successful exploitation.  For a copyright, each co-writer/co-owner owes the other co-writers/co-owners an accounting of the profits generated through the right(s) exploited (or be subject to litigation).  Conversely, for a patent, each co-inventor may separately make or license the subject matter without accounting for any profits to the other co-inventor(s).

So why the fuss from McCartney concerning whether a song is identified as a Lennon-McCartney work or a McCartney-Lennon work?  In the grand scheme, the publishing royalties will be no different - every penny will still be divided between McCartney and Lennon's estate.

As with many similar issues, there are multiple considerations at issue.  Ego is rather obvious - upon Lennon's murder, the other co-writer was no longer in the picture.  Yet, Lennon's estate (via Yoko Ono), and a rather divisive ego at that, blocked several attempts by McCartney to correct a perceived error in the attribution order.

As McCartney recalls, early on, The Beatles and management agreed that any song predominantly written by one and brought to the other for "polishing" or "completion" would be specifically attributed in the album liner notes as [predominant writer] hyphen [polisher].  However, this preferred nomenclature convention did not materialize, and rather the alphabetical Lennon-McCartney label was the go-to form of songwriting attribution.

Upon Lennon's death, and in subsequent years (e.g., The Beatles Anthology Series), McCartney tried to reclaim this preferred naming convention, only to be obstructed by Ono.  McCartney identified the hit single "Yesterday" as a good example, noting that Lennon had absolutely nothing to do with writing the song, yet, the song is attributed to Lennon-McCartney and not to (McCartney's preference) McCartney-Lennon.

Related to issues of ego is perception, such as the public's perception that attribution order has significance.  It is likely that is the reason the individual Beatles agreed to the songwriting naming convention identified above is because of their own naive (mis)conception of the significance of naming attribution order.

Like many of the songwriting tandems in popular music over the last 50 years, such as Jagger-Richards (The Rolling Stones), John-Taupin (Elton John), Simon-Garfunkel, Plant-Page (Led Zeppelin), Simmons-Stanley (KISS), and Bon Jovi-Sambora (Bon Jovi), the first mentioned person seems to capture much of the songwriting attention.  This is probably due to an issue not particularly noticed (the primacy effect) - the strongest impression made on the mind of a viewer/reader based on the first item listed.

However, most interestingly, McCartney points out a legitimate gripe regarding technology.  In particular, McCartney notes that when an individual downloads, streams, or a song selected from an existing digital library, often the display is too small to fully display multi-writer attribution (or does so intermittently).  Consequently, using The Beatles as an example, on a smartphone or iPad display, The Beatles song "Yesterday" may be attributable only to John Lennon or John Lennon (and perhaps) Paul McCartney a few seconds later. Thus, at least in McCartney's view, younger generations may be misinformed or misled as to the appropriate songwriting credits, or frustrated by the bounce between one co-writer and the other(s) co-writer(s).  Thus, younger generations may be deprived of some knowledge, history, and searchable keywords that could link-up Lennon-McCartney with other valuable or culturally significant songs.

As someone who enjoys trivia and completeness of information, I can sympathize with McCartney's lament as a threshold matter.  However, given the younger generations Internet acumen, it seems unlikely that a user would not have such information readily available in just a few clicks or taps.  Alternatively, younger generations may simply not care enough to want to know/learn about the artist, esp. in an age when popular music is more disposable than ever before.

While McCartney's concerns possess some merit, the degree of import seems rather low.  Publishing royalties remain unaffected by the naming order; and the fame of The Beatles nearly negates any inverted (or lack of) attribution, as many folks will supplement their listening experience by browsing for information abut the artist (e.g., via Wikipedia).  As with so many things surrounding the surviving members of The Beatles and managers of the Lennon and Harrison estates this really descends into a Paul v. Oko battle of wills, wits, and strong-willed personalities.