A television icon even to this day

She made the role famous all on her own,

Then Mattel stole it, without throwing her a bone.

Misappropriation that is, false endorsement, right of publicity.

Well y’all ought to know ol Mattel’s a millionaire,

Kinfolk said, “Elly you gotta shoot that bear”

Said an IP lawyer is just what you need

To sue Mattel for that darn evil deed.

Lawsuit that is, injunction, damages, and attorney’s fees.

Well now its time to say hello to the judge and his court.

And Elly May will kindly ask ‘em for their support.

In stoppin’ Mattel from a cheatin’ and a stealin’

Her pretty face, with no right or good reason.  

Trial that is.  Things just started, we’ll keep you posted.

Y’all stay tuned now, y’hear?

For nine seasons actress Donna Douglas played Elly May Clampett on the popular television show ‘Beverly Hillbillies.’  Mattel, maker of the popular Barbie Dolls, sought to capitalize on the fame and recognition of Douglas’ character by offering a doll designed to look like Elly May.  One problem—according to Douglas, Mattel never sought or obtained her permission to use her name and likeness on the dolls.

Hence, Douglas, now 77, has filed a Complaint in her home state of Louisiana, alleging damages and seeking an injunction as a result of Mattel’s misappropriation of her name and likeness.  Louisiana, like many other states, has statutes in place to protect a person’s right of publicity, giving them the right to control the commercial value and exploitation of his/her name, picture, and likeness and to prevent others from unfairly appropriating the value for their commercial benefit.

Mattel denies liability, claiming that they obtained the rights to Beverly Hillbillies for the Elly May product through the appropriate channels.

The case was filed on May 5, 2011, and we will provide updates as we receive them.  Y’all stay tuned now, y’hear?

When I got home with my new iPad in hand, I did some more research into the Motorola Xoom and I found out that Motorola (formally Motorola Mobility) was currently under the heat of litigation with the Xoom Corporation for trademark infringement. Xoom filed a suit against Motorola in the US District Court for the Northern District of California alleging that Motorola’s trademark infringement was “willful and intentional conduct” for which the Xoom Corporation believes to be entitled to “treble damages”.

In the complaint, Xoom sought a permanent injunction as well as a temporary restraining order and a preliminary injunction. Should the Northern District grant Xoom relief, it would undoubtedly delay the launch of Motorola’s “iPad Killer”. Granted that Xoom’s got a better case than Ferrari, I can’t help but think that Xoom’s timing on the matter is a little sublime. Xoom served Motorola with the complaint on the eve of the great launch party for the tablet computer presumably with the intention of delaying the release Motorola’s computer.

On the other hand, the Xoom Corporation was founded in 2001 with one of its angel investors being Sequoia Capital (who also, in an ironic twist, funded Apple, Inc. during its 1970s fledgling years). The Xoom Corporation has owned the Xoom.com internet domain since 2003 and has filed several US trademark registrations, the earliest one being in 2004 (Federal Registration Number 2,909,931). It appears that Motorola must have been aware of Xoom’s trademark as the computer has been in development for a couple of years. However, despite making attempts to negotiate usage of the “Xoom” trademark, Motorola threw caution to the wind and decided to launch the tablet anyways, leaving the burden on the Northern District to decide whether Xoom’s complaint holds pole position or is nothing more than a tire gone flat.

Amanda Mooney

amanda@goodmanmooney.com

Yesterday, the U.S. Senate passed a long awaited patent reform bill that if it becomes law will certainly change the rules of intellectual property as we know it.  The Senate bill passed on a vote of 95 to 5 and promises the biggest changes to patent laws in more than a half a century.  But first, the House of Representative must act and then it’s on to the White House where the President has shown support for it.  In fact, President Obama said he “look[s] forward to working with the House of Representatives to pass patent reform legislation [that he] can sign into law.”

All of this legislative promise comes amid ever growing competition for intellectual property rights from around the world.  In fact last year, China is said to have issued a record number of patents which illustrates the global quest for countries to out-innovate one another.

The most radical change in the bill is moving the U.S. system from a “first-to-invent” to a “first-to-file” system.  Large corporations presumably support this change because it will potentially reduce costly legal challenges from smaller entrepreneurs.  But this really begs the question of: how is an invention novel simply by being the first application on the subject to reach the U.S. Patent and Trademark Office?

My beloved Senator Dianne Feinstein (D., Calif.) purportedly tried to stop the “first-to-file” portion of the bill in an effort to protect the little guy.  Small entrepreneurs that lack the resources to promptly file an application could be outplayed by larger corporations that learn of their invention and win the race to the Patent Office.  Despite Senator Feinstein’s efforts, the bill passed with the “first-to-file” change.  What apparently didn’t make it in the bill is the thorny issue of limiting damages in patent infringement cases.  That’s fine by me.

The other seemingly important change brought on by this bill is empowering the U.S. Patent and Trademark Office to set its own funding which would likely mean higher application and processing fees.  One can only hope any fee hike would also bring added resources to overcome the current backlog of more than 700,000 pending applications.

Hopefully, any change to the U.S. patent laws will do more good than harm.  But you know what they say: Crafting new legislation isn’t pretty…it’s like watching sausage being made.

Eric Goodman

eric@goodmanmooney.com

Some say Sheen is not worth the bloated salary he receives ($1.8 MM per episode) since he merely plays himself—a middle aged playboy with a penchant for woman and booze.  I say he deserves every dime of his salary and potentially more from the network for which he has raked in over a billion dollars.  In fact, don’t be surprised if CBS eventually gives Sheen the $3 MM per episode he has demanded.  They, more than anyone else, have done the math and realize that Sheen’s success rate with Two and a Half Men is 100%, and that the show will die without him.

Perhaps CBS should pay the man what he wants so that he can afford his goddesses and mercury surf board.  Sheen can spend his life “in character” and CBS can keep cashing the advertising checks he brings in.  CBS, Lorre, Sheen, and the rest of the cast and crew deserve to make a pretty penny of the hit they have created—even if it happens to be because the edited and scripted version of Sheen’s life sells itself.

Who does not deserve to get rich is every opportunist seeking to capitalize on the flash-in-the-pan moment of Sheen’s public outcries.  It took less than a week from Sheen’s first public appearance post-cancellation for persons and companies to start selling t-shirts and other memorabilia with Sheen’s quotes, his image, and his likeness.

Don’t get me wrong, we are all amused by Sheen’s over-the-top statements such as “I don’t sleep.  I wait.” and “Sorry my life is so much more bitchin’ than yours.”

But amusement should not mean profit for those not entitled to exploit a person’s name and likeness.  California, like many other states, has statutes in place to protect a person’s right of publicity.  Rooted in both privacy and property law, the right of publicity is ‘[t]he right of an individual, especially public figure or celebrity, to control the commercial value and exploitation of his name or picture or likeness or to prevent others from unfairly appropriating the value for their commercial benefit.”[1] In essence, those who have become famous, not others, should be the one’s to capitalize on their fame.

Of course, exceptions exist for free press and free speech so that people can report and comment on the lives of notable personalities, such as Charlie Sheen.  That is why TMZ and Perez Hilton can run articles about our favorite warlock and make a pretty penny doing so.

Immunity does not exist, however, for people trying to hawk products by evoking or unabashedly using a person’s name, image, or likeness.  Yet people try.  The website www.skreened.com alone has over 150 different unauthorized t-shirts for sale that use quotes, silhouettes, and even pictures of Charlie Sheen.

Others have tried to capitalize on F18 Sheen above board by seeking an endorsement or license arrangement wherein they are granted permission to use his name, image, and likeness in exchange for compensation.  The Chill Group, for example, is offering Sheen a $3MM endorsement deal to promote their drink Just Chill, which is marketed as having stress-relieving qualities.  The catch?  In order to get the endorsement deal, Sheen has to complete a thirty day drug treatment plan and agree no to make any additional media appearances during the deal.

There is only one problem, Sheen is already cured of his drug addiction.  How?  Just ask Sheen: “I closed my eyes and made it so with the power of my mind.”

Maybe Sheen will start exploiting his right of publicity himself and begin offering the Charlie Sheen drug for sale, with the appropriate warning label of course: “ If you try it once, you will die. Your face will melt off and your children will weep over your exploded body.”

This experience made the recent refusal of Monster Cable’s trademark application seem more relevant.  Way back in January of 2004, Monster Cable filed an intent-to-use application with the United States Patent and Trademark Office (the “USPTO”) to register the trademark “Monster” in connection with:

Automotive and marine accessories, namely, automotive bed mats, automotive bug shields, bumpers, automotive organizers, automotive cargo management systems, automotive fender flares, automotive grab handles, automotive grille, grille guards, automotive light bars, rear view mirrors, roll bars, running boards, automotive seats, seat covers, side bars, side skirts, skid plates, spoilers, visors, truck steps, shock absorbers, tail gate protectors, tail gates, side guards, truck cargo nets, tonneau covers, truck boxes, window covers, window deflectors, automotive battery accessories, automobile bug shields, automobile covers, automotive carpets, dash board covers, floor mats, front end masks, headliners, license plate frames, splash guard, steering wheel covers, steering wheels, sun covers, automobile window shades, window covers, window deflectors, shift knobs, hoods, automotive batteries, spark plugs, suspension struts, air intake manifolds, truck bed liners.

The USPTO Examining Attorney summarily refused the application based on the mark being merely descriptive.  The Examining Attorney contended that the term “monster truck” refers to a large pickup truck and to use the mark “Monster” in connection with truck accessories would identify products intended for monster trucks.  The term is deemed to be “merely descriptive…if it conveys an immediate characteristic, feature, or function.” It is enough that the term “Monster”, describes one significant attribute of the goods or services.

Monster Cable appealed the Examining Attorney’s final refusal to approve the application and the matter was considered by the Trademark Trial and Appeal Board (the “TTAB”).  Three weeks ago, after pending for over seven years, the TTAB affirmed the refusal thereby killing off Monster Cable’s application once and for all.

Notorious for being aggressively litigious, Monster Cable has opposed applications for registrations for various marks that include the term “Monster” at the USPTO.  Some past examples include: the Monster.com employment website, Fenway Park’s The Green Monster, Monster Energy drinks, and even Pixar’s “Monsters, Inc.”

So here’s to the USPTO for standing up to big bad Monster Cable!

Eric Goodman

eric@goodmanmooney.com

The lawsuit, filed February 14, 2011, is merely the latest layer of controversy for the video that has been age-restricted on YouTube and banned in 11 countries in just two weeks since its release.  The heavily sexualized video includes sadomasochistic imagery that some viewers have deemed indecent.  LaChappelle’s objection, however, is not based upon decency.  Rather, he alleges that the video “copies original photographs conceived and created by [LaChappelle].”

LaChappelle, a renowned artist, contends that Rihanna never sought permission to use his photographs despite Rihanna and her people having asked the director of the video (and another director who turned down the job) to “make a ‘LaChapelle-esque music video.’”  LaChappelle further alleges that his actual photographs were used in the storyboards for the video.

LaChappelle claims that the “S&M” video incorporates images so similar to his photographs that it violates Federal copyright and trade dress law.  But the video did not use LaChappelle’s exact photographs, so does it constitute copyright or trade dress infringement?

The owner of a copyright has the exclusive right to do and to authorize (among others) any of the following: (1) reproduce the copyrighted work;  (2) prepare derivative works based upon the copyrighted work;  (3) to distribute copies of the copyrighted work to the public; and (4) to display the copyrighted work publicly.

The copyright infringement claim is likely to turn on whether Rihanna’s video is similar enough to constitute a “derivative work.”  Under Federal law, a “derivative work” is a work based upon one or more pre-existing works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.  If the video is deemed to be a “derivative work” then LaChapelle has the rights to it and Rihanna is likely to be found to have committed copyright infringement.

The trade dress claim contends that LaChappelle’s work is so well known that it has acquired secondary meaning, i.e., that people attribute the work to LaChappelle and that the video’s images cause confusion as to the source of the work (LaChappelle rather than Rihanna).

LaChappelle hopes to use legal restraints to stop Rihanna and her video.  The merits of the case may get an early test if LaChappelle seeks a preliminary injunction, the legal equivalent of a ball gag.

For those new to the IP/Patent world you might be wondering what a patent troll is.  A patent in essences grants the exclusive right to an invention for a set amount of time.  If someone uses that invention during the patent period without the patent holder’s consent, he or she may sue for damages.  A patent troll is typically an entity that owns lots of patents, but does nothing with them except sue infringers.

With that out of the way, let’s investigate Mr. Allen.  In 1992, he founded Interval Research in Silicon Valley – a sort of software incubator where loads of really smart tech-weenies invented new software for Allen’s empire.  He spent $200 million funding the project but then became annoyed when it didn’t generate enough money.  However, Interval Research (now named Interval Licensing, LLC) registered 300 patents.

According to the Los Angeles Times:

“The patents cover some online features that are today so deeply embedded in so many websites that many people have trouble imagining that they weren’t part of the Web from birth (they weren’t, of course). For instance, they include features fundamental to news aggregator sites, which bring snippets of news reports from a variety of sources together on a single page at the user’s specification.

Perhaps it’s better to say that Allen isn’t a patent troll, but on this occasion has dressed up as one.”

Allen’s staff has been working for years to monetize these patents.  This lawsuit was filed in Federal court against Youtube, Apple, Facebook, Yahoo, Google, Office Depot, Office Max, Staples, etc.  However, the software that is allegedly being “infringed” is being infringed all over the internet by hundreds of websites.  Allen appears to only be going after the deep pockets.

As opposed to offering my own two cents, let’s see what others around the internet are saying…. Does this make Paul Allen a patent troll?

• TechDirt says yes.
• Gaming Affiliates Guide says yes.
• ZDNet says no.
• Venture capitalists Jason Mendelson and Brad Feld of the Foundry Group, say yes in a guest spot on the Wall Street Journal.

What do you think?

LEGO has been blocked from registering the iconic image of their famous little plastic building bricks as a trademark.  The European Court of Justice has denied Lego’s appeal of a 2004 ruling determining that its red building brick is ineligible for trademark protection. Canadian manufacturer Mega Brands, which makes similar plastic bricks, argued that LEGO violated trademark legislation.

Mega Brands claimed that Lego was trying to trademark the appearance of the brick “to confer a potentially everlasting monopoly on a useful product configuration.”  The Court in Luxembourg ruled in favor of Mega Brands on Tuesday.  LEGO cannot appeal the ruling any further.

What is the issue?

The issue was whether the LEGO brick served a technical function. European law says individuals and companies can trademark graphic images like words, designs, the shape of their product and packaging – but trademarking a product’s shape, if that shape is necessary to obtain a technical result is not allowed.

According to the BBC:

The European Court of Justice found that protecting the shape and function of a product would reduce the opportunities for rival manufacturers to use them. ‘Technical solutions are capable of protection only for a limited period,’ the judgment said, ‘so that subsequently they may be freely used by all economic operators.

Now, don’t feel too bad for LEGO.  They still can trademark their name (and have indeed done so, Registration No. 2245652) and can still protect themselves in many other ways.  But you can’t help but root for you childhood toy maker, right?

Eric Goodman

eric@goodmanmooney.com

Snooki – Nicole Polizzi is trying to trademark her nickname “Snooki” for use in books and as an entertainment personality.  However, the USPTO has denied her application because of a “likelihood of confusion” with another Trademark.

“The registered mark is ADVENTURES OF SNOOKY, for a “series of children’s books.”  Applicant’s mark is SNOOKI for… “books.” The terms SNOOKY and SNOOKI are very similar; the wording ADVENTURES OF, being common wording in book titles, does not sufficiently distinguish the respective marks, particularly since the goods are legally identical. The goods are, in each case, books. Therefore, given the similarity of marks and identity of goods, there is a likelihood of confusion.”

JWOWW – Jenni Farley has filed a trademark application for her nickname “JWOWW” for entertainment services in the nature of an on-going reality based television program.  The application is pending a number of issues.  First, if the mark identifies a particular living individual (which it does), then Ms. Farley needs to submit a statement of consent.  Second, Farley’s attorney needs to submit a appropriate specimen showing “JWOWW” being used in commerce.  Neither should be too difficult to do.

DJ Pauly D – Pauly Delvecchio has filed two trademark applications for his nickname “DJ Pauly D” for entertainment services and exclusive DJ rights.  The first, (application number 77929416) has been refused because of a likelihood of confusion with another trademark.

“[A]pplicant’s mark, DJ PAULY D, is similar to the registered mark, DJ PAULIE, in sound, appearance and connotation.  Overall, the marks have the same commercial impression.”

Pauly’s other mark has been refused because of the same reason.

Last time I wrote: “Mike “The Situation” Sorrentino is trying to trademark his nickname so he can have it put on clothing, including t-shirts and underwear – as of March 24, 2010, the situation is that The Situation’s trademark, “The Situation,” has been denied and his application is currently suspended.  Not a good situation!”

Well, the application is still suspended.

Well, its been fun, but I’m going to let Amanda and Eric handle this one

“With childhood obesity at an all-time high, schools are looking for ways to promote healthy lifestyle choices in the foods that children eat. In doing so, school systems are eliminating high sugar and calorie-filled foods and beverages and replacing them with healthy alternatives. Sportastic™ Sports Drink offers a unique and innovative approach to attracting students: a round, spherical bottle with fun sports-theme designs. …”

That sounds nice, but what the press release states next (and it’s stated in bold, mind you) is just plain false.

“Sportastic™ has been identified as an acceptable sports drink for diabetics and has been approved by scientists at the Junior Diabetes Research Foundation (JDRF).”

A reporter at the OC Register did a fantastic bit of reporting and called the JDRF to verify this claim.  Turns out the foundation doesn’t endorse products.  Oops.

The Lanham Act states, “Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name…, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person…shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”

Here, JDRF’s name was used by GT Beverage Co. to explicitly (and falsely) endorse a product.  Now, if JDRF were a celebrity, or if they were overtly concerned about money, they could probably sue GT for damages.  However, I doubt that is going to happen.

The OC Register goes on to state that GT’s managing Partner, Tom Weiss issued a apology for the “mistake.”  Apparently, they point their finger at over eager publicist who made the “mistake.”  In order to make amends, GT Beverage now plans to sponsor one of JDRF’s events in the near future.

Let’s hope they follow through on that….

Eric Goodman

eric@goodmanmooney.com