DuetsBlog

Collaborations in Creativity & the Law

Hey Commish, Can You Trademark The (Fantasy Football) League?

Posted in Squirrelly Thoughts, Trademarks, USPTO

All around America, men will soon gather in front of their computers feverishly conducting research, generally wasting time, and participating in one of the manliest things they likely will do for quite some time:  their fantasy football league’s draft.

Fantasy football is an $11 billion dollar industry (to put that into perspective, the NFL had only $6 billion in revenue last year) and there is a multitude of fantasy football-related patent applications and granted patents.  But a search of the U.S. Trademark Office’s records reveal only 56 live applications and registrations having the likely generic term “fantasy football” in their goods or services description (one of those happens to be for the WASHINGTON FEDSKINS).

I recently ended a self-imposed hiatus from fantasy football for my UJustGotBeatByAGirl team by being the first woman ever accepted into the WAFFL league – the preeminent fantasy football league, or at least so my friends who started it over 15 years ago tell me.  Acceptance into the WAFFL league came after completing an application form longer than my law school application.  I had to find a team name to fit in with the off-color team names like the Belfast Bombers and the Junior High Pedophiles. There was also a significant essay section on trash talking and a long essay on the prospects of the Philadelphia Eagles this year.  It’s so serious, folks, that I’m surprised they didn’t make me do the 40-yd dash and take the Wonderlic.

Now acting like an owner in such a prestigious league, it’s important to me to protect the league’s important assets, including its WAFFL name.  A quick search of the USPTO records suggests that it’s available for use and registration, although internationally there is a WAFFL football league in England…but for that other kind of futbol.  So I decided to ask a question for all fantasy football players: “hey Commissioner, can I get a trademark registration for my fantasy league’s name for fantasy football league services?”

In order to get a U.S. trademark registration for a word or design, it must (1) function as a trademark, meaning it must be used to identify and distinguish the owner’s goods and services over those of others and (2) be used in interstate commerce.

First, a fantasy football league name ostensibly distinguishes one league from another league – especially when you play in multiple leagues at the same time.  The name distinguishes the entertainment services of providing and organizing a fantasy football league for one group over another’s.  A team name, however, would be unlikely to function in the trademark sense, because there really are no goods or services that your fake team is providing to others.

But as to whether a fantasy football league name would satisfy the second requirement, the typical lawyer answer applies:  “it depends.”  Interstate commerce would include any use that might possibly be regulated by the federal government under the Commerce Clause, which has been interpreted to apply to just about anything.  While secret, non-public, or certain “sham” transactions have been deemed such casual or de minimis use as to not give rise to federally registrable trademark rights, there could be room for fantasy leagues to file for federally registered trademark rights if sufficient use was shown.  For instance, if a fantasy football league were to have at least a public website and offer its league services to teams in different states, that may be enough under current law to support that there is adequate use of the mark in commerce and the website would also satisfy the specimen of use requirement for the application.

So, is your fantasy football league serious enough to warrant some trademark protection?  Doubtful, but if you really want to take the “fantasy” of fantasy football one yard further, I see trademark registrations and lucrative licensing deals for league swag in your future.

You can follow me on Twitter:  @Martha_Engel

 

Recalled Harleys: What if I could make my own fix?

Posted in Guest Bloggers, Idea Protection, Mixed Bag of Nuts, Technology

- Jason Voiovich, Vice President, Marketing, Logic PD

Bottom line: Your Harley gets recalled. You need to get on the road to Sturgis. So you need parts in a hurry. The specs for those parts are available for free online. And you can buy a MakerBot 3D printer from Home Depot for under $1500. What could possibly go wrong?

To tell this story, we need to assemble facts from three places.

First, on July 10, Harley Davidson recalled 66,421 Touring and CVO motorcycles because of an issue with its antilock brakes. Apparently, the flaw can cause the front wheels to lock up spontaneously. I’m not a physicist, but I’ve hit the occasional log on my mountain bike, and the results aren’t pretty. I can’t imagine what that’s like doing 90 on the road in South Dakota. The fix is pretty simple: A strap to keep the brake line from getting pinched.

Second, not four days later, Home Depot announced that it would start carrying the ultra-cheap and uber-cute MakerBot2 in its stores the following Monday. We have one in the office, and while it’s not the easiest equipment to use, it is certainly within the realm of the average “maker” to figure out.

Third, for the first time on Thingiverse, I noticed a functional aftermarket part for a real (not a toy or a scale model) Harley. This is a throttle lock lever attachment to allow the rider better thumb action control over the standard star-shaped part. Not a critical part, of course, but pretty cool. And free.

Let’s put one and two and three together, shall we?

What happens when they (inevitably) figure out that they don’t want to wait the 3-4 weeks to get into the dealer to have their strap fixed? That same enterprising soul figures out how to build a 3D model of said replacement/add-on part. And that person posts the part to Thingiverse. For free. What then?

I thought it would take until 2016 before we saw 3D printers in the mass market. In many ways, that’s still true for most things. But this is exactly the situation that I mentioned almost two years ago: Replacement and add-on parts are some of the most logical first steps, and we are beginning to see them now.

In other words, when you read articles like mine (and many others, I would add, mine certainly was not unique) and thought you had plenty of time to handle the legal issues, that time is up.

You need to start addressing this trend <em>today</em>.

Some questions your legal team had better start answering:

1. Who owns the IP for this new part? Is it shared IP? Is it fair use?

2. Who is liable if it fails? (The rider, the company that makes the MakerBot, Harley Davidson/the OEM, someone else)

3. Who gets paid? How? What if I sell the part? Does that change the equation?

I believe there is an opportunity for OEMs (Original Equipment Manufacturers, like Harley Davidson) to get in front of this trend. Think of the opportunity not only for replacement parts, but also for warranty fixes and other accessories. Harley already is a master of the accessories market; this would be a natural fit. The “quality” of the maker parts may not be quite up to production quality yet, but that seems like a weak reason to wait. IP owners need to figure out the legal implications fast, or the market for accessories will float into the “free-verse”, never to be paid for again.

Tick tock. There’s some dude driving to Home Depot right now…

 

I’m Gumby Dammit — A Flexible Trademark?

Posted in Advertising, Articles, Branding, Marketing, Non-Traditional Trademarks, Trademarks, USPTO

The Minnesota History Center is currently promoting its Toys of the ’50s, ’60s and ’70s exhibit — my favorite promotional billboard is the one captured above, featuring none other than Gumby.

I can still remember my Gumby toy and watching the Gumby Show as a young child along with the Davey & Goliath television series, both creations of Art Clokey (who passed away at 88 in 2010).

The programs were so perfectly wholesome, making the anthropomorphic Gumby character the natural target of an iconic series of R-rated Saturday Night Live parody skits featuring a young and hilarious Eddie Murphy as Gumby, a “cigar-smoking show business primadonna,” who coined the infamous and often repeated catchphrase: I’m Gumby Dammit!

The Gumby trademark — bolstered in strength, if not fame, by the character’s status as a long-lasting pop culture phenomenon — has enjoyed a similar exclamation of self-confidence and apparent, well-deserved respect from others over the years, as the brand’s owner Prema Toy has had virtually no trademark oppositions (one for footwear averted with a little help from an Examining Attorney), at least as it appears from the USPTO’s online TTAB database. This third party application for Gumby’s Pizza, was most likely brought into the fold, as detailed below.

The GUMBY word mark is still federally-registered in Int’l Classes 9 (DVDs), 16 (paper products), 25 (clothing), 28 (toys), 41 (entertainment services), and Gumby’s is also federally-registered in Int’l Classes 30 and 42, since Gumby’s Pizza & Wings is a restaurant franchise offered by Prema Toy. I figured there would be non-verbal product configuration trademark registrations for the appearance of the Gumby character too, but nope, nope, nope, only two dimensional depictions (here, here, and here).

Notwithstanding the fact that the only federally-registered marks consisting of or including the GUMBY word are owned by Prema Toy, this once singular trademark meaning of GUMBY recently has been threatened by a hightech software firm called Digital Surgeons who have dubbed one of their products with the so-called GUMBY FRAMEWORK trademark for ”software development tools for the creation of mobile internet applications and client interfaces.” Their application was published for opposition last summer, and there is no record of Prema Toy opposing or seeking an extension of time to oppose, and once Digitial Surgeons submits evidence of use, the registration should issue.

Digital Surgeons is currently promoting GUMBY 2.6, as a flexible, responsive CSS framework — powered by Sass: “Now more flexible than ever.” So, the Digital Surgeons have drawn their scalpels to clearly play on at least the meaning behind the iconic Gumby character, perhaps explaining this statement on the bottom of their website:

“Disclaimer: Gumby Framework holds no affiliation or association with our friends at www.gumbyworld.com, Primavision Inc. or Prema Toy Inc.”

Since the Digital Surgeons are apparently friends with the folks at Prema Toy, perhaps the disclaimer is enough to satisfy the brand owner, assuming they are aware of the use and pending application for federal registration.

So, if you were responsible for the GUMBY brand, how flexible would you consider it to be, and would you easily bend on this encroachment? Why?

If a flexible approach is adopted to permit unrelated brands that play on the bendable meaning associated with the GUMBY brand and character, will it lead to others, eventually taking the GUMBY brand into a very different posture and position? Would it make a difference to you to know that the Prema in Prema Toy means “heart” in Sanskrit?

Oh, and in case you’re wondering where Gumby’s best pony pal Pokey is, it appears that he doesn’t hold the same status as Gumby, since Pokey’s registrations have lapsed (here and here).

Colors, Words, and Colours: Pink with Envy

Posted in Advertising, Branding, Fair Use, Famous Marks, Infringement, International, Law Suits, Trademarks

It has been nearly a year since we posed the age-old question: Does this Pink Clash with My Pink? Okay, so it’s not that old of a question. In fact, most of you (readers) may not have ever considered the inquiry.

I guess I should clarify, by “clash with” I mean “infringe.” By “Pink” I mean “Victoria’s Secret Pink” and by the other “Pink” I mean Thomas Pink and yes, I understand that the phrasing of this entire endevour may be a bit confusing.

What do you think? If you walked into this store:

 

Would you assume there was some connection with this store?

In case you haven’t read the previous article, Thomas Pink, U.K. retailer of high quality men’s fashion dress clothes sued Victoria’s Secret over their “Pink” stores, which are geared primarily toward college-aged girls. Victoria’s Secret filed a declaratory judgment action in the U.S., but that was dismissed back in May based on a settlement between the parties. But the British court issued a ruling on August 4, ruling that Victora’s Secret’s use of the PINK mark as a store name does, in fact, legally clash with Thomas Pink’s use of PINK.

We talk a lot on Duets Blog about the difference between the right to register a trademark versus a right to use a trademark. (See Steve’s post and accompanying links here). Essentially, the idea is that when you are seeking to register a trademark, you are given the right to use that mark in any shape, style, or form, unless specifically noted. So if you apply to register the word MISGUIDED in connection with “legal opinions,” the U.S. Patent and Trademark Office would look to see whether the proposed registration would conflict with any prior registration (or live application), for marks confusingly similar to MISGUIDED, regardless of whether it appeared with an image of a powdered wig, whether it was in Arial font or Cambria, or whether it was used with the color black or the colour blue. Or pink, too.

The idea is that, unless a restriction on use is actually in the application (or prior registration) the Trademark Office will not look to see how the mark is actually used in the real world. It doesn’t matter whether the house mark NIKE always appears with NIKE AIR, if you’ve applied (or registered) AIR on its on, the Trademark Office will give the broadest interpretation possible to the marks as set forth in the application or registration. This leads to the oft-cited rule that merely adding (or deleting) a term from a previously registered mark is insufficient to avoid a likelihood of confusion if the goods or services are related (unless the term is diluted, but let’s leave that for another post…).

However, when we speak of the right to use, we usually are speaking in the context of a lawsuit for trademark infringement. Because that’s how you stop someone from using a trademark. (Cease and desist letters can work, but only under the threat of infringement, so the issue would still be the same). In this context, the defendant is free to cite any evidence regarding the party’s use which might help consumers avoid any confusion. For example, do the defendants and plaintiffs consistently use a house mark in connection with the mark (does “Victoria’s Secret” always appear below the term “Pink” and does “Pink” always appear as part of “Thomas Pink”?), are the target customers sufficiently different such that consumers wouldn’t presume a connection between the two uses (would I expect these University of Minnesota booty shorts to have some sort of connection with a high end menswear fashion designer?), whether the defendant only uses the name as an store that is attached and connected to their primarily store of a different flagship name, and other factors like the cost of the goods, advertising, number of third-parties using similar marks, etc.

British Judge Colin Birss has been quoted as concluding that “Consumers are likely to enter one of the (Thomas Pink) claimant’s shops looking for lingerie and be surprised and disappointed when they find they have made a mistake.” I guess that’s possible. But if consumers never refer to “Thomas Pink” products as anything other than “Thomas Pink” they seem unlikely to enter into a Victoria’s Secret store  thinking it is some different version of the Thomas Pink brand. They might also wonder why, unlike every other Thomas Pink store, the signage is in bright pink rather that the black and gold of the Thomas Pink stores. Oh, and they might also notice that instead of the words “Thomas Pink, Jermyn Street London” the words “Victoria’s Secret” appear on the front of the store.

My apologies for wearing my opinion on my sleeve, but I don’t think there is any infringement here. It turns out, Judge Birss agrees. Sort of. If you read any of the news reports, you’ll basically just see that the use was found to be infringing and Victoria’s Secret may have to close their stores. But if you read the decision (H/T – IPKAT), it’s more complicated. The judge concluded that:

[E]ven inside a free standing PINK store there is sufficient emphasis on VICTORIA’S SECRET to counteract what might otherwise have been a likelihood of confusion under Art 9(1)(b) relating to the swing tags and labels.

Ultimately though Judge Birss found that Victoria’s Secret had violated Article 9(1)(c). Although I have lived and worked in the U.K. (just blocks from the Thomas Pink flagship store on Jermyn street, actually, – take the tube to the Piccadilly Circus station. Don’t get the sushi from Tesco), I’m not an expert in trademark law under U.K. or E.U. law. However, the difference between subsection (b) and (c) appears to be whether there is a confusion as to the goods (section b) or whether there is a confusion as to some type of endorsement or association that could be “detrimental to the distinctive character” of the prior mark.

Notwithstanding the quoted language when deciding the case under subsection b, the judge concluded that, under subsection c:

In my judgment average consumers who are familiar with the claimant’s reputation will encounter the defendant’s swing tags and labels and will enter the defendant’s premises with a view to buying the defendant’s goods complained of in this action.

An average consumer presented with swing tags or labels inside one of the defendant’s stores will appreciate from the context that it relates in some way to VICTORIA’S SECRET . . . However crucially what they will see is a sign very similar and reminiscent of the claimant’s sign. It does not include the full name Thomas Pink nor the Jermyn Street address, but the key element is the word PINK itself. It is even presented in a format which is reminiscent of the claimant’s PINK outlined format[.]

Victoria’s Secret will likely appeal the ruling. Or maybe the parties will settle. It appears though that the consequences for Victoria’s Secret are not as dire as some news reports suggest (i.e., having to close all of their “Pink” stores). Based on the judge’s ruling, it may be as simple as changing the font on the exterior of the sign (even I’ll admit that block letter font is pretty similar). Which brings us back to where (wear?) we started: the U.S. Trademark Office wouldn’t consider what font you’re using for your trademark, unless you’re applying for a stylized version. But like the British court, a U.S. court examining a claim of infringement would. Seems like a great way to put a (pink?) bow on this issue.

 

 

Follow me on Twitter: @TimSitzmann

 

 

Data Breach Notification, Helpful or Harmful?

Posted in Almost Advice

Some IT professionals are debating whether they would issue a data breach notification in the event of a hack. Their rationale is that such a notification makes them a target for other hackers and that most of the incidents that trigger the required notification don’t rise to the level where notificaiton is necessary.

Those companies that are debating the wisdom of the data breach notification see the notice more as assigning blame than helping to protect those individuals that have been affected. However, before deciding to adopt the contrary view, it is important to remember the evidentiary impact of the notification. The data breach notification can be considered part of a subsequent remedial measure. As such, it can’t be used against the company issuing the notification for the purpose of proving negligence or culpable conduct.

 

The C-word and IP Rights

Posted in Almost Advice, Copyrights, Counterfeits, International, Loss of Rights, Patents, SoapBox, Trademarks

No, not that c-word.

The protection and enforcement of intellectual property rights involves a plethora of c-words:  copying, counterfeit, copyright, cease-and-desist, CIPO (the Canadian IP Office).   But the one I am referring to today is China.

As the world becomes more interconnected and the global economic impact of China has significantly increased, intellectual property rights holders and attorneys have recently become faced with, what some might call, “the China Problem.”  Trademark squatting in China has become as problematic for companies today as domain name squatting was for them in the 1990s at the beginning of the internet age.

 

Here are some recent “squatting” examples involving well-known international brands:

  • After Tesla launched in the US,  businessman Zhan Baosheng registered TESLA in China, as well as the Tesla logo and a Chinese version of the name, and later sued the company for trademark infringement after Elon Musk’s company began doing business in China.  The dispute has since settled for unspecified terms, other than it seems Zhan agreed to allow the Chinese government to cancel his registrations.

 

Compounding the issues with squatting and the attention the matters above have gotten from national media, trademark owners often receive solicitation scam e-mails from alleged Chinese domain name registrars suggesting that someone is interested in registering the recipient’s trademark or business name as a domain name in that region in an effort to entice the recipient into signing up for various “services” of protection.

Certainly there’s an element of trademark “squatting” that is a function of China’s so-called “copycat culture,” where imitation is a form of mastery or flattery.  But what isn’t flattering has been the country’s reticence to assist international brands in overcoming these and other hurdles to registration.  The Chinese government has recently made strides by requiring applications to be filed in “good faith.”  Effective May 1, 2014, the amended law prohibits trademark filings where the agent knows or should know that the client is squatting, or is knowingly made to pre-emptively register a mark already used by another person that enjoys a certain reputation in China.  Theoretically, it seems that the onus is on the agent regarding knowledge of squatting, not on whether the client had knowledge that it was squatting on another’s rights, unless the applicant has some business relationship with the trademark owner.

While many companies often make economic considerations to put off filing in foreign countries until they might manufacture or sell patented or trademarked products, China presents some concerns with holding off.  China has a “first to file” trademark system, and with U.S. trademark data publicly available, it is easy for a squatter to apply for protection for new marks of U.S. companies in China – seemingly even under the new “bad faith” rules, but we’ll see how those are applied.  This is also how those pesky solicitation emails and notices begin.

Although I’m focused on China here, it’s likewise important for companies to be first to file for their trademarks in other foreign jurisdictions, especially when working with a distributor in a foreign country like Russia, Iran, India, or some Latin and South American countries.  These distributors often file for trademark protection on their own, without notice to the trademark owner.  In these situations, it’s critical for the trademark owner to file in these countries first or to ensure in their distribution agreements that the distributor agrees to assign any trademark filing to the company.  If they don’t and they later decide to file for trademark registration, their application may be refused once they later find out that the cited registration is owned by a distributor of the company’s products.  This adds to the cost of obtaining a registration, which could have been avoided at the outset.  Foreign filings today are simply the cost of doing business in a global economy.

Think before you design. Please.

Posted in Branding, Goodwill, Guest Bloggers, Marketing, Mixed Bag of Nuts

- Aaron Keller, Managing Principal, Capsule

The proliferation of tools and tricks in Adobe Photoshop and other photography software has become abundant. This has allowed anyone and their cousin Frank to act in the role of a “designer” and design anything for clients. This has an interesting tie into something we’ve noticed over the past fifteen years and recently in the window of a downtown Stillwater retailer.

Over the years we have noticed a few camps in the world of design. Those who would like to see a more professional accreditation (lawyers, architects, doctors, engineers, etc). And, those who would like to see design move closer to the art influence in the discipline. I’ve come to appreciate the push and pull, knowing how Andy Warhol started as an illustrator / designer / commercial art and moved into the fine art community. And, from the other side, seeing what can only be described as really bad design decisions (think Tropicana a few years ago) having a negative fiscal impact on brands, people and organizations.

Then, I am walking down the street in Stillwater, Mn and find the image above in a window promoting a nail and massage shop. There it is, right in front of me. Someone has chopped up this perfectly nice woman and turned her into a strange two headed creature being pampered.

This is wrong.

This is not good use of Adobe Photoshop. This is really bad design. This is not good for the brand. This is not good for the poor woman in the stock image. Even the “designer” doing this work had to be at such a horrid hourly rate to cause them to not even look at the monster they created after the work was done. No one wins in this scenario.

The only good thing about this Frankenstein effort is perhaps it will inspire a minimum professional status in design. So, while we don’t lean hard toward a fully professional design world, we do see a place for minimum professional status. Something that will at least make someone entering the design profession responsible to “do no harm” when working for clients. This movement will help in the following ways.

1. Those who have been around long enough providing design advice benefiting their clients’ best interest and the interest of our global community will see a professional boost.

2. Those just entering the industry will see a path to professional status for themselves and the resulting value to their current and future employers.

3. Clients will have a baseline confidence in the advice and design work done by people with professional status.

4. Consumers of design (all of us) will see a progressive cleaning up of some of the false promises, a lessening of the eye carnage we see way too often and the discipline of design will take a place at the table with the professional class.

While this all sounds good, we’ll still have the “ambulance chasing designers” who do the work others can’t physically or professionally take on. But, perhaps we’ll raise the bar and stop chopping up young women like the one in the image above. And, perhaps, as you look around and see bad design like this, you’ll send it to us (info@capsule.us) so we can showcase the negative economic impact of bad design.

Vote for a more professional design future. Contact Capsule: akeller@capsule.us

Thank you for keeping your eyes and mind open.

Judge Posner, I Presume

Posted in Law Suits

Over the past several months, Judge Posner and the Seventh Circuit has handed a couple of rare, but well-deserved wins to the public domain.  On June 16, 2014, the Court issued an opinion holding that the primary characters of Sir Arthur Conan Doyle’s Sherlock Holmes stories–the first of which was published in 1887–had fallen out of copyright and were now part of the public domain.  Recently, on August 4, 2014, Judge Posner and the Seventh Circuit affirmed an award of attorneys’ fees to the alleged infringer for prevailing in the case.

The case generally involved what Judge Posner deemed the  Doyle Estate’s ”extortionate” practice of demanding a relatively small licensing fee of $5000 for any publication that involved Sherlock Holmes or related characters.  The plain business strategy was to demand a sufficiently small license fee so that a rational party would simply pay the fee rather than deal with the expense of litigation.

One intrepid author did the right thing.  Rather than succumbing to the demand, Leslie Klinger brought a lawsuit, in which he prevailed, and established, once and for all, that the Doyle Estate’s claims were bunk.  In affirming the fee award, Judge Posner noted:

 When a story falls into the public domain, story elements—including characters covered by the expired copyright—become fair game for follow-on authors. There is no ground known to American law for extending copyright protection beyond the limits fixed by Congress. The estate’s appeal bordered on the quixotic.

The Doyle estate’s business strategy is plain: charge a modest license fee for which there is no legal basis, in the hope that the “rational” writer or publisher asked for the fee will pay it rather than incur a greater cost, in legal expenses, in challenging the legality of the demand…. The willingness of someone in Klinger’s position to sue rather than pay Doyle’s estate a modest license fee is important because it injects risk into the estate’s business model. As a result of losing the suit, the estate has lost its claim to own copyrights in characters in the Sherlock Holmes stories published by Arthur Conan Doyle before 1923.

In addition to the win for the public domain, the case raises a couple additional issues of interest for us IP folks.  First, this is just another case where we see the intersection of important IP rights and the costs of litigation necessary to vindicate those rights.  Copyright is a tough animal because of how unbalanced the playing field is.  The strategy here is nothing new.  I previously blogged about the Estate of William Faulkner asserting questionable copyright claims, presumably to extort an unwarranted settlement.  The expenses Klinger incurred in the Doyle Estate litigation far exceeded the $5000 license he was asked to pay for.  Had he not been awarded his attorneys’ fees in connection with this case, Klinger would have suffered a significant loss.  Moreover, had the book been published without this legal victory, and without a license, the publisher would have faced the prospect of excessive copyright infringement damages authorized by current law.

Second, this case raised the insane point that, even though most of his works are now in the public domain, ten stories written approximately 90 years ago are still protected.   Much to the chagrin of fans of the public domain, copyright laws have undergone a troubling series of term extensions, which some authors have pejoratively termed the Mickey Mouse Protection Act.  The fact that any works of Conan Doyle–who died in 1930–are still under copyright is pretty absurd.

Monkey See, Monkey Do Selfie?

Posted in Articles, Copyrights, Fair Use, International, Law Suits, Loss of Rights, Technology

Is photography nowadays really so easy even a monkey can do it?

What about a caveman?

If Wikimedia is right, the caveman would own a copyright in his selfie (or perhaps Geico, under the work for hire doctrine) because he is a human being, capable of being an author under U.S. copyright law, but not the monkey — his or her selfie immediately becomes part of the public domain.

Well, I’ll be a monkey’s uncle, I never would have guessed an Indonesian macaque capable of such a beautifully perfect selfie! What, no direction?

Judging from the thick jungle of international news reports about the origin of the photo to the left, however, it sounds like it took the simian several hundred tries to capture the selfie everyone loves.

We might even call it the “money shot,” but that might provoke the owner of the camera equipment, David Slater, who sadly, it appears, only has made enough from this photo to buy a few loaves of monkey bread.

But seriously, I must ask, is Slater’s contribution — as a professional photographer – to the creation of this photo really only that he owns the equipment used to capture it? I think not. There’s much more, it appears.

I tend to agree with Matthew David Brozik — over at Likelihood of Confusion yesterday – that “judging from the quality of the photo in question, Slater (and presumably not the macaque) did a lot of work beforehand, because it is a terrific picture.”

Brozik goes on to make a creative joint authorship argument in Slater’s favor that could possibly throw a monkey wrench in Wikimedia’s public domain copyright position, but I have a hard time picturing satisfaction of the law’s joint work requirement that the macaque intended her contribution to be merged with Slater’s into a unitary whole.

Nevertheless, what I’d like to suggest Slater consider as a more promising argument for sole copyright ownership is this: The macaque simply was Slater’s amanuensis.

Although mentions of the word “amanuensis” have been in rapid decline over the last 200 years, the notion of an artist’s assistant or an author’s scribe receiving no copyright interest — in the resulting copyrightable work that they may help the artist or author fix in a tangible medium of expression – remains alive and well. The same is true for photographer’s assistants.

Judging from the detailed and technical description of Slater’s involvement in the creation of the photos on Slater’s website, I’m thinking this may be the direction he is headed, but stay tuned:

“It was about midday on the second day and the monkeys, about 25 strong of all ages, halted for a rest and a grooming session.  It had been a hard day as usual, slashing through tangled and very humid jungle, climbing over and squating under fallen trees, all with a 20kg backpack on full of expensive camera gear.  I sat close by them, camera at the ready as always. I must have tuned in to them, because after some time a few brave monkeys began to come closer, and slowly but surely began paying me more attention.  I held out my hand and WOW, one held my hand back. Shock!  This went on for maybe 15 minutes.  They started to groom me, picking through my hair as I knelt on the ground, hunched over my camera, but desperate to record it all.  I knew about monkey etiquette from many previous encounters around the world, and this made that knowledge so much more than worthwhile.”

Note how Slater’s knowledge of monkey etiquette allowed him to tune into them and gain the trust of the monkeys with his camera at the ready, as always, laying the groundwork and opportunity for the photos that resulted from his many choices. He’s not just monkeying around.

“I decided to set up the camera on a beanbag on a log, self-timer all set. I was afraid they would run off of course, but they didn’t.  Rather, they grabbed my camera!  Quick thinking had my guide rushing to save it – lesson learnt.  Setting up the camera again, some of the cheekier monkeys had now got bored, and now even my guide had wandered off for a smoke.  I was alone and had to encourage the monkeys back to me for my intended contact experience photo.  Soon enough, I was jokingly asking for his help again as the monkeys looked increasingly cheeky as they touched the camera with that glint in their piercing red eyes.  It was now that I heard some frames reeled off when my guide struggled to keep the camera from little monkey fingers – the scene was set.”

Note how Slater’s decisions, his selection, coordination, and arrangement, and his choices and contributions set the scene for the resulting photos. Not your typical monkey business at all.

“I wanted to keep my new found friends happy and with me.  I now wanted to get right in their faces with a wide angle lens, but that was proving too difficult as they were nervous of something – I couldn’t tell what.  So I put my camera on a tripod with a very wide angle lens, settings configured such as predictive autofocus, motorwind, even a flashgun, to give me a chance of a facial close up if they were to approach again for a play.  I duly moved away and bingo, they moved in, fingering the toy, pressing the buttons and fingering the lens.  I was then to witness one of the funniest things ever as they grinned, grimaced and bared teeth at themselves in the reflection of the large glassy lens. Was this what they where afraid of earlier?  Perhaps also the sight of the shutter planes moving within the lens also amused or scared them?  They played with the camera until of course some images were inevitably taken!  I had one hand on the tripod when this was going on, but I was being prodded and poked by would be groomers and a few playful juveniles who nibbled at my arms.  Eventually the dominant male at times became over excited and eventually gave me a whack with his hand as he bounced off my back.  I new then that I had to leave before I possibly got him too upset.  The whole experiance lasted about 30 minutes.”

Note how Slater made all the creative, technical, and artistic selections and camera settings, and only then, bingo, he allowed the monkeys to finish his work with a few clicks, almost at his direction, when they snapped the selfies in question. After all, if you pay peanuts, you get monkeys. In the end, it must have been a relief to finally have the monkey off his back.

“It was like the joy of seeing your new baby learn about something new and becoming enlightened with a new toy.  They loved the shutter noise, but most of all they loved their own faces, ‘chimping’ away in what seemd to me to be total fun for them……..”

Note how Slater taught the monkeys, and they learned something new, as he allowed them to complete the photos he so carefully envisioned and directed: Monkey see, monkey do selfie!

I’m thinking we’ll soon be reading about Slater’s lawyers donning their monkey suits in court any day now, and I suppose we should be relieved we aren’t dealing with a barrel full of monkeys. . .

Playing Games Over ANGRY BIRDS

Posted in Agreements, Branding, Law Suits, Marketing, Trademarks

The internet was aflutter yesterday over a lawsuit involving Angry Birds.  The artist who created a pet toy line is apparently quite angry that she’s not racking up gold coins from a lucrative license agreement for the mark ANGRY BIRDS with Rozio.  If you haven’t been living off the grid, and if you’re maybe somewhat tech savvy, you’ve probably heard of Rozio’s popular tablet game by the same name where colorful birds hurl objects at unsuspecting animals.

According to the complaint, in 2006, artist Juli Adams was approached by Hartz to create and design a pet toy line based on her cartoonish animal paintings.  In the context of copyright law at least, where a work is created within the scope of one’s employment or the work is a specially commissioned work and the parties have agreed that the work is a “work made for hire,” ownership rests with hiring party.  Patent law is similar when it comes to works made during the scope of employment.  But here, the artist and Hartz had a different agreement relating to Adams’ “intellectual property” – the two parties agreeing that the rights remained with her and Hartz licensed the intellectual property from her.  In addition to her intellectual property rights for her work developing the products, the artist also coined the trademark ANGRY BIRDS for the line according to the complaint.  The product packaging features her bio and states in general terms “Licensed from the art of Juli Adams.”  The term of the agreement began after the first sale of a licensed product, according to the complaint.

Following Hartz’s “key responsibilities” in the agreement to renew and protect the intellectual property of Adams, Hartz filed a trademark application for ANGRY BIRDS for pet toys.  The intent-to-use application was filed by Hartz on March 28, 2007 listing Hartz as the owner of the intellectual property, in contrast to the apparent terms of the agreement as described in the complaint.

By signing a trademark application, the signatory confirms that “the applicant declares that it has a bona fide intention to use or use through the applicant’s related company or licensee the mark in commerce on or in connection with the identified goods and/or services.”  Furthermore, the signatory declares that:  “he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.”  The signatory here was Hartz’s attorney, who confirmed Hartz’s rights, interest, and ownership in the mark by signing the document.  This application likely should have been filed in Adams’ name as the owner of the intellectual property rights, if this was intellectual property contemplated by the agreement as being owned by her and licensed to Hart.

Not all the facts appear to be out here yet, as the complaint leaves a lot of unanswered questions, especially regarding the scope of her intellectual property rights.  For instance, and importantly allegedly months after the ANGRY BIRDS application was filed, an amendment to the license agreement was executed that granted Hartz “the right to file copyright, trademark and other intellectual property right filings in Hartz’s name, in its discretion, for all of the Licensed Products” including a mark for THE JULI ADAMS COLLECTION (an application for which was filed by Hartz at the same time as ANGRY BIRDS).  The complaint disputes the validity of that amendment.

What does this mean for the marketers, product developers, advertisers and others of you who create intellectual property?  One takeaway may be to pay more attention to obtaining a well-crafted agreement that meets your objectives and your understanding of your rights.  Even if the intention is to license your intellectual property, an owner of trademarks puts themselves in the best position, even if they don’t want the responsibility for the filings going forward, by filing applications in their own name and let the licensee agree to pay all fees associated with them.  It also helps clarify issues related to the owned rights to be able to refer at least to a filed copyright, patent or trademark application.