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.

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.

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).

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.