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.

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.

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.

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.

A Long and Winding Road (Gibson's Self-Tuning Guitar)

Begging the pardon of The Beatles and their single-swan-song, the last studio single released in the United States (peaking at #1), "The Long and Winding Road", but it was a very suitable description of Gibson Guitar's latest technology, the self-tuning guitar having a cpu that communicates with robot-tuners that properly and mechanically tunes each guitar string.  Gibson (and inventor Chris Adams) admits that the conception, development, implementation, and "fine tuning" of this technology has been a long time (over 10 years) in the making.  The combination of the cpu and robot-tuners wind the stem of the tuning pegs to add or remove tension on the string necessary to meet the tuner's pitch. Although this is not the first attempt at auto-mechanical tuning of a stringed instrument (e.g., U.S. Pat. No. 6,437,226 by Viking Technologies), Adams was successful in gaining patentable subject matter via the claims of U.S. Pat. No. 7,786,373.  As part of the long and winding process, Adams first filed an application in the European Patent office in May 2004, followed by a PCT (Patent Cooperation Treaty -- aka "International" application) in Jan. 2005, and followed by national phase entries in 2008, and followed by US issuance in Aug. 2010.  However, the patent owners allowed this patent to lapse (by failing to make the maintenance fee payment, presumptively to focus resources on other related inventions).

That focus has led to at least one other U.S. patent for Adams, including U.S. Patent No. 8,772,615 for the fine-tuning drive mechanism operating the tuning peg (to add/remove tension). Beyond the critics that question the reliability of the tuning (or more precisely, remaining in-tune), the device does not appear to be universal (at least beyond the Gibson models).

Unlike Gibson, which predominantly offers fixed tailpiece bridges and no locking nut at the headstock, most other guitar manufacturers have floating tremelo systems (e.g., Floyd Rose; Kahler; Steinberger) that must have a locking-nut at the headstock position to help maintain the string tunings.  In the locking-nut systems, a robot-tuner would (seemingly) be ineffectual as the locking-nut system maintains tension on the string (capable of withstanding dives and rises), and the robot-tuner would be unable to overcome the locked tension.

On the other hand, the Gibson robot-tuning system could still be installed and used on a locking-nut/tremelo system, but it would add the steps of requiring the person tuning the guitar to loosen the locking-nuts, allow the robot-tuner to place each string into proper tune, and then tighten the locking-nuts and fine-tune the strings based on the auto-tuner provided or by the ear of the human-tuner.

Whether this technology gains traction in usage by Gibson buyers (who will have no choice but to purchase the tech include in any new Gibson guitars) remains to be seen.  Musicians are hesitant to change anything that is not broken (or at least perceived that way).  Yet the convenience of a robot-tuning system is probably something that cannot be appreciated until it is used (and then not available).

If you have new or unique tech to add to an instrument, or have a new design for an instrument, please consider the intellectual property services of York Law LLC.  One never knows what new developments will strike the fancy of the instrument-playing public.

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.

Intellectual Property & You (Taylor Swift)

Like or dislike her music, Taylor Swift is one of the few singer/songwriters presently achieving mega-sales, having now crossed-over from country-pop to super-pop-star status with the recent smash 1989.  In glossing over the very recent reports of Taylor Swift's rebuke of Apple's proposal not to pay (performing rights organizations on behalf of producers and writers) during its three-month free trial of a new streaming service, and Apple's subsequent reversal, I ran across this interesting tidbit:  in late Oct. 2014, Swift had applied for multiple (40) trademark applications based on song lyrics.^[1] Although this has been misreported as Swift having "trademarked" five lyrical phrases, when in fact these were "intent to use" (ITU) filings^[2] without any registering decisions made from the US Patent and Trademark Office, it certainly shows a keen attentiveness to the value of her intellectual property regardless of form or media at issue.  Seemingly ripping a page from the KISS (Gene Simmons/Paul Stanley) playbook, and then like a creative coach tweaking the play, Swift has taken some of the more popular (catch-phrase type) lyrics from the collection of songs found on 1989 and filed these ITU applications to further monetize the lyrics beyond the digital downloads and net-streaming revenue available for artists.  While I wouldn't expect a Taylor Swift casket, or for Swift's name to become the nickname of an Arena Football League franchise, Swift's aggressiveness with this type of branding and marketing may know few bounds.

Footnotes

1. The lyrical phrases "Part Like It's 1989" and "This Sick Beat" are taken from the hit song "Shake It Off"; Swift filed intent-to-use applications for both phrases, and each phrase was filed in 16 separate classes of goods and/or services (or 32 applications in total). Three other phrases, "Cause We Never Go Out Of Style" (3 classes of goods/services), "Could Show You Incredible Things" (3 classes of goods/services), and "Nice to Meet You. Where Have You Been?" (2 classes of goods/services), were each taken from the hit song "Blank Space", comprising the remaining applications of the 40 filed by Swift. 2. An "intent-to-use" (ITU) application is designated as a "1B" application and signifies that the applicant has a bona fide intent-to-use the mark in interstate commerce in the future and in association with the goods and/or services identified, but no present interstate commerce usage exists as of the filing. An ITU application for a mark, if approved, requires that the applicant eventually start using the mark in interstate commerce or forfeit the right to use the mark exclusively in those classes of goods and/or services.

Former Van Halen Vocalist: VH Brothers Trying to Stop Hagar from Performing VH Songs

As readers will (hopefully) come to learn, Van Halen (all eras) is my favorite band, for a laundry list of reasons that I won't bother to list in this post.  However, as a fan of the band, one has to either ignore or accept the juvenile passive-aggressive non-sense that passes from the mouths of present and former members.^[1] It is futile trying to really understand why this group of people, comprising mostly 60+ year-olds, cannot simply move-on from decades-long disagreements, arguments, grudges, and feuds.  It defies reason. The latest:  on Eddie Trunk's podcast this week (approx. 31:00), former Van Halen vocalist Sammy Hagar alleged that Edward and Alex Van Halen have tried to stop him from performing Van Halen songs written and recorded during the Hagar-era of the band.  As an example, Hagar was scheduled to record an episode of "Live from Daryl's House" (Daryl Hall of Hall & Oates fame).  Hall wanted to duet with Hagar on VH Top 40 hits "Why Can't This Be Love"^[2] and "Finish What Ya Started"^[3] .  Apparently, this required some type of licensing approval, and the Van Halen Brothers denied the request and blocked any attempts to perform the songs. Show producers did not want to try and fight this issue with a recording-deadline looming, so the songs went untouched during the recording. ** SIGH **

Assuming this version of events and facts as true, it is bad enough that the brothers are that petulant to try and block Hagar's Daryl Hall performance, but the fact that Hagar publicized this example knowing that the Van Halens could not legitimately block him (or any other performer(s)) from performing these songs live is similarly silly and unnecessary.

Most issues addressed in the Copyright Act (17 U.S.C. et seq.) are default positions. In other words, absent a contract addressing a particular issue, the parties resort to the Copyright Act for determining unassigned or non-transferred rights. For example, in most cases, co-writers of a song (including music and lyrics) each own an equal share of the song, unless there is a contract to the contrary.

Accordingly, unless there is a contract between the Van Halens and Hagar that has changed the songwriting shares, or otherwise restricts/prohibits performances in some way, Hagar as a co-writer has the rights accorded by the Copyright Act, owning an equal share of the credits with the Van Halens and former bassist Michael Anthony. One of those rights includes the right to publicly perform such compositions subject to the reporting required of the host-venue to the appropriate performing rights organizations (PRO, such as ASCAP or BMI).^[4] Similarly, co-writers also have the right to record/distribute sound recordings subject to accounting to the other co-writers.

Of course, the public is hearing only one-side (Hagar's) of these issues at the moment. Perhaps the Van Halens have legitimate reasons for pursuing the courses they have pursued thus far, given the acrimonious and distrustful state of affairs between the brothers and Hagar (and Anthony).

It is odd (if not notable) that Hagar did not make specific mention of the brothers trying to stop the release of Hagar's "The Circle" live recording entitled "At Your Service" containing seven songs co-written by Hagar and the Van Halens, but did mention the block of two songs from "Live at Daryl's House". Does Eddie Van Halen have a burr in his backside over Daryl Hall's public comments that Van Halen's keyboard parts in "Jump" were inspired by the piano riff in Hall & Oates mega-hit "Kiss On My List"?^[5] As noted in the current Billboard Magazine cover article, Eddie Van Halen does not appear to hate anyone, but his grudges run long and deep.^[6]

Or, on the other hand, did the Van Halens bully the last-minute production of Daryl Hall's television show based on opportunism while avoiding "The Circle" live disc because it knew the futility of doing so? More than likely, because the acrimony and overall distrust between Hagar and the Van Halens, this is little more than power trips and egos at play. But, there may also be some underlying accounting issues that have been bubbling that the public is not aware of.

Hagar and the Van Halens squabbling over music is hardly surprising. The strong egos of those involved make future disagreement(s) inevitable. Just another sad episode in the Van Halen melodrama.

Footnotes

1. Despite the high-drama, Van Halen still has a fairly strong and devoted following, as exemplified by the robust fan-site VH Links. 2. "Why Can't This Be Love" was the lead-single from Hagar's debut with Van Halen, the 5x platinum 5150 released in April 1986. "Why Can't This Be Love" peaked at #3 on Billboard's Hot 100 Singles Chart in May 1986; 5150 debuted at #13 on Billboard's Top 200 Album Chart, peaked at #1 for a three-week run, and spent more than one-year on the chart. Additional information may be found at 5150 Info. 3. "Finish What Ya Started" was the third single from Van Halen's May 1988 release OU812. The song was a departure for Van Halen, blending rock, country, and an exotic drum sound and beat, sounding as much like a Rolling Stones song as a Van Halen tune. "Finish What Ya Started" peaked at #13 on Billboard's Hot 100 chart; OU812 debuted at #1 on Billboard's Top 200 Album Chart and spent four-consecutive weeks in the top spot. 4. ASCAP and/or BMI distribute royalties to songwriters and publishers based on frequency of play from reports by terrestrial and satellite radio, Internet streaming services, concert venues, and the like. 5. 5 Things About Jump 6. Billboard - EVH on Addiction, Roth, Touring