Celebrity Inventors & Inventions

I came across a news article discussing the recently issued design patent for an improved beverage and food cooler to Mike Golic (former NFL football player and current co-host of ESPN radio's Mike and Mike show), son Jake, and three other co-inventors. This got me to thinking about celebrity inventors and inventions (a distinction that will become more clear shortly), as well as the difference between utility (for mechanical arrangement and/or function) and design (aesthetic / ornamental design) patents. If it is not obvious, a celebrity inventor is someone that is already a celebrity and later develops an invention that is exploited in some way.  Although Thomas Jefferson was initially philosophically opposed to patents (and the limited monopoly provided), through his ministerial role as chief patent examiner as Secretary of State in the early years of the US republic, Jefferson came to appreciate the economic benefits derived from a patent system.  And despite is prolific mechanical acumen, Jefferson did not attempt to patent the many inventions he developed after the US patent system was implemented in 1791 (and, of course, many of his inventions pre-dated the system), thus falling outside a reasonable definition of celebrity inventor.

Before his election as the 16th President of the United States (but as a member of Congress), Abraham Lincoln received a patent for buoying water vessel over shoals.  Given the time (and times) of Lincoln's invention and congressional experience, any celebrity that Lincoln enjoyed at that point was limited.

Likewise, although Thomas Edison is extremely famous, his fame is tied to his inventions and his patents, and thus not quite within the celebrity inventor umbrella.

Shortly after she launched her American-film acting debut, in an effort to contribute to the allied war-effort during World War II, actress Hedy Lamarr teamed with George Antheil to develop a frequency-hopping signal system to prevent naval opposition from jamming naval torpedo signals that would cause the torpedo to veer off course and miss its target.  Lamarr (under her married name Markey) and Antheil were awarded U.S. Patent No. 2,292,387 in 1942.  However, a skeptical U.S. Navy did not adopt the technology.  Instead, the technology sat unused until the 1960s, when it was finally adopted.  Although Lemarr skirts the edge, since her technology was not adopted until after the patent term expired, this too falls short.

The several (and best) examples of celebrity inventors generally come from the performing arts, where some necessity was the inspiration for an invention for integrated use in the performer's milieu.  As such, Harry Houdini is probably the first celebrity inventor, creating a diving suit awarded a patent in 1921, some thirty-years into his illusionist career.  Walt Disney held two patents for animation and motion picture techniques, with the animation patent forming part of the launching pad for Disney Studios.

Although Houdini and Disney had utility patents, design patents are well represented by George Lucas and his LucasFilm empire.  Being the pioneer in film-to-toy merchandising, Lucas (and with the artistic input of legendary artist Ralph McQuarry) holds at least 11 issued design patents for various conceptions of characters from the Star Wars universe, such as the uber-popular Boba Fett, Yoda, and the AT-AT imperial transport.

The world of music provides some of the more recognizable implementations of invention-by-inventor.  Eddie Van Halen created a removable try that attaches to the underside of a guitar for assisting the guitarist in accessing the guitar like a piano (now expired).  EVH also invented and owns the patents for a single-string de-tuning system (branded as the D-Tuna) and the design for a guitar headstock (with a scallop cut removed).  EVH also has purchased other patents (here and here).

Musical genius Prince held a design patent for a portable keyboard (expired in 2008).  Prince's chief musical rival in the 80s, Michael Jackson, invented a shoe-device that created the illusion of anti-gravity, most effectively used in his video for the hit-song "Smooth Criminal".

The previous examples stand in contrast to "celebrity inventions" that are really no more than celebrity-endorsed products invented by other non-celebrities.  The "George Foreman Grill" is one of the best examples of this, since the grill was actually invented by Michael Boehm.  With the success of the Foreman Grill, the copycats followed, with the Evander Holyfield Real Deal Grill, the Carl Lewis Health Grill, and the Hulk Hogan Blender.  However, these are good examples of the licensing, use, and (somewhat) successful utilization of the valuable name, image, and likeness (aka, NIL) of a well-known celebrity.

Whether the Golics can land a licensing deal or sell to a cooler manufacturer, and achieve the desired monetary success with the ornamental design of this new cooler remains to be seen.  Mike Golic's celebrity certainly will be a large selling point in getting the product recognized, often one of the hardest parts of achieving commercial success.

While you may not (yet) be famous, if you have an invention that you believe functions or appears differently from what is out there, contact York Law LLC to get more information on what you can do to start down the path of success.  (E: oly3@olenyork.com).

King of Pop - And The (Un)Credited

Over the course of the last week, many music and entertainment outlets briefly observed the sixth anniversary of Michael Jackson's death. Love him or despise him (because of his music or behavior), the majority of credit for the King of Pop's album "Thriller" was shared between Jackson and producer Quincy Jones. Being the shrewd businessmen that they were, esp. Jones, Jones-and-Jackson utilized many talented musicians and songwriters to craft what may be the "perfect" studio release in music history (and certainly the most-successful),^[1] including the credited use of several members of the band Toto (Steve Lukather, David Paich, Steve & Jeff Porcaro), composer and producer David Foster, Paul McCartney, and Jackson's sisters LaToya and Janet. However, and arguably the most significant musical contribution was the uncredited writing, arrangement, and solo provided by Eddie Van Halen on the song/single "Beat It". As the story goes, Van Halen (the band) is on a brief recording/touring hiatus, with three-of-the-four band members scattered to the winds. Eddie Van Halen (EVH) is alone at his home recording studio (later dubbed "5150", which is the California criminal code for the criminally insane) and receives a telephone call. Immediately on pick-up, the connection is fuzzy and nearly inaudible. An unfamiliar voice asks "Is this Eddie?" After several unpleasant responses by EVH, the unfamiliar voices identifies himself as Quincy Jones, and asks if EVH would like to play a solo on one of Jackson's songs. With his brother, the lead singer, and the bassist unavailable for consultation, EVH agrees to contribute, figuring he will do it for free, uncredited, no messy royalties to discuss (or split), and no one would be the wiser. The wishiest of wishful thoughts.

As the third single from what was becoming a pop-cultural juggernaut (Thriller), "Beat It" strayed from the R&B and pop playbook Jackson had been so successful with as a member of the Jackson 5 and during the infancy of his solo career. With Toto's guitarist Steve Lukather providing a tasty lead riff and underlying rhythm guitar, EVH's "trademark" squeals and screeches from his striped Frankenstein "strat" provided one of the more memorable guitar solos on pop-radio in the 1980s. More importantly, it was the "sound" of 80s guitar-power included on a pop-single, and gave hard rock and album-oriented rock radio stations, as well as the caucasian-rock-band-centric MTV, permission to play a young black man's song as part of the rock rotation. "Beat It" help propel "Thriller" into the phenomenon that it became.

Notably, this would not be the last time that EVH contributed uncredited music to a pop-culture success. In 1985, EVH's guitar (sounds) found its way into the film "Back to the Future" as music used to scare George McFly into submitting to the suggestions of a "robot".^[2] Unless EVH is (and has been) lying to fans for decades, his work on Jackson's "Beat It" and "Back to the Future" were not only uncredited but also uncompensated. The thought that EVH made nary a cent from either contribution is a bit mind-boggling, given the record sales and ticket/rental sales each has logged in the three-decades since each was released.

Jackson (and video director John Landis) would later pay a small (double) homage to EVH and "Back to the Future", having young Macaulay Culkin strap-on an Ernie Ball Music Man (EBMM) Wolfgang model guitar designed by and for EVH and hit a power chord akin to the one hit by Michael J. Fox in "BTTF" in the intro of the song/video "Black or White".

In the "small world" category, Jackson himself contributed uncredited backing vocals to the Doobie Brothers 1978 release Minute By Minute (on songs "What a Fool Believes", "Here to Love You", and "Minute By Minute"), working with future Van Halen collaborators producer Ted Templeman and Doobie Michael McDonald (sharing a co-writing credit on the 1984 Top 15 single "I'll Wait" from the album 1984). Later, Jackson would be credited with backing vocals on the #2 hit-single by Rockwell "Somebody's Watching Me".

Jackson and EVH's uncredited contributions are consistent with the occasional uncredited contributions of mega-popular artists, including Mick Jagger's famous uncredited backing vocals on Carly Simon's hit-single "You're So Vain".^[3] Of course, when you are the type of recording stars that Jagger, EVH, and Jackson (at the time of working with the Doobies), getting another co-writing and publishing credit may be less of a reward than the work itself (maybe). OTOH, these guys passed up A LOT of money by not getting those credits.

Footnotes

1. According to the Recording Industry Association of America (RIAA), Jackson's "Thriller" is tied with The Eagles' "Their Greatest Hits, 1971-1975" with certified sales of 29 million copies. However, "Thriller" is an original studio release (1982), while "Their Greatest Hits" is a compilation of The Eagles biggest hits, thereby supporting the distinction as most-successful studio release. Also notable, "Thriller" has not been certified Aug. 2009, while "Their Greatest Hits" has not been certified since Jan. 2006. It is highly likely that each is now over 30 million in certified sales. 2. Back to the Future / EVH 3. You're So Vain

Swift v. The World (It Only Seems That Way)

So, last week, Taylor Swift was using her muscle to first call-out and then praise global-behemoth Apple Inc. once the Cupertino, CA company fell into line with her way of thinking (on royalty payments during the trial-period of Apple's new streaming service).  This week, Swift is on the outs with photographers (and photographers on the outs with her - I sense a song coming from this episode). Apparently, Swift and at least one photographer disagree on whether the photographer is wholly restricted or selectively restricted in using a photo more than once (taken during the "1989 World Tour").  The photographer claims that each photo can be used only once and that the copyright ownership is retained by Firefly Entertainment (Swift's label) presumptively under a "work made for hire" provision in the contract.  Conversely, Swift claims that while each photo may be used only once, additional uses may be provided by submission for approval to Firefly Entertainment, and that the copyright ownership is retained by the photographer (and no "work made for hire" situation ensues).  Obviously, without the executed agreement between the parties, it is difficult to guess which side has the best or better argument(s).  However, "work made for hire" (WMFH) situations are usually very clearly denoted in such agreements, using the specific language from the statute to make it clear that the photographer is being hired by the performing artist for a specific purpose, for a specific (enhanced) fee, and with copyright ownership clearly aligned into the portfolio of the performing artist.  The confusion of whether the photographer is or is not operating under the WMFH provision is, well, confusing.

What may not be readily apparent is that this is not really a fight over copyright issues (or, at the least, the copyright issues are secondary and subservient to a larger set of issues).  Consider: the images captured by the photographer are of Taylor Swift, not of the stage set-up, costumes, band and back-up singers, or the like.  All individuals, famous or not, have the common law right of publicity - the right to exploit his/her name, image, or likeness (aka, NIL rights), or prohibit exploitation by others.  It is a non-federalized form of intellectual property, but tends to be a companion to trademark litigation cases and/or other forms of unfair competition.  And despite these cases not generally grabbing the headlines the way a good patent, trademark, or copyright row grabs, these cases are often more interesting and fairly important (esp. for the entertainer or athlete involved).  In the case of someone as famous as Swift, the ability to exploit and protect against against undesirable (or perhaps over) exploitation makes this form of intellectual property particularly useful for individuals with an established and branded identity.

Right of publicity, and esp. the NIL issue, has grabbed headlines recently with the litigation spurred by former collegiate athletes Sam Keller (Arizona St. quarterback) and Ed O'Bannon (UCLA basketball center) and the class of current and former  collegiate athletes each represented in suing the NCAA and EA Sports.  Although the cases were different, each touched on the right of athletes to exploit their NIL rights.  In Keller et al., the plaintiffs successfully sued EA Sports, surviving an appeal, for its use of collegiate NIL in their popular (and realistic) collegiate video games.  After surviving the EA Sports appeal, the NCAA settled with the Keller plaintiffs for $20 million.  In O'Bannon et al., the plaintiffs successfully sued based on an anti-trust claim that collegiate athletes were not allowed by the NCAA and its member institutions to individually or collectively negotiate with EA Sports (the advantageous beneficiary of amateurism concepts) for pecuniary gain in the use of collegiate athletes' NIL.  Because EA Sports and the NCAA had negotiated the use of NILs of collegiate athletes for a sizeable licensing sum, there is established value in the NILs of the athletes.  By cutting out the athletes, and by denying the athletes a cut of the licensing fee royalty, the plaintiffs alleged that the actions of EA Sports and the NCAA were anti-competitive and a restraint on commercial trade.  This case was also sent up for appeal before the Ninth Circuit, with a decision looming.

Accordingly, rights of publicity and NIL issues are of considerable importance, esp. when the prospect of others free-riding and making a considerable profit.  While it may appear such celebs are on a power trip, protecting one's valuable NIL in the age of electronic media is a harrowing but necessary proposition.