Get It In Writing - Owning The House That Ruth Built

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

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

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

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

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

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

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

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

The Earnhardt Squabble - Family Names & Trademark Usage

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

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

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

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

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

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

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

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

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

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

Lots of Pub on the "Right of Publicity"

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

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

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

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

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

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

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

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

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

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

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

Washington Redskins Legal Position Bolstered

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

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

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

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

CNN Money Botches Redskins' TM Case

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

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

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

As egregious is this sentence:

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

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

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

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

The Washington Redskins Trademark Controversy - Part II

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

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

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

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

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

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

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

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

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

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

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

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

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

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.