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.

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

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