Duets Blog : Creativity and the Law: DuetsBlog

Schering-Plough Healthcare, owner of the MiraLAX brand -- the top-selling OTC oral laxative ($360 Million in OTC sales since launching in February 2007) -- has pulled out all of the available stops and then some, in a pre-Thanksgiving Day federal district court action brought in the District of Delaware, asserting a variety of intellectual property and unfair competition claims under both federal and state law. Bloomberg.com's report on the case from yesterday is here. In addition, here is a link to the Complaint, with Exhibits A, B, and C.

As is typical when the manufacturer of a national brand wants to stop what it perceives as unfair retail store brand competition, Schering-Plough brought suit not against either of its retail customers Kroger or CVS -- despite both being mentioned in the complaint -- instead, it sued Perrigo the private label manufacturer who provided the competitive products bearing those retailers' well-known, if not famous store brand names.

Perrigo says it is "the world's largest manufacturer of OTC pharmaceutical products for the store brand market." Here is how Perrigo describes its business model:

The Perrigo Company manufactures products that compare to national brand products such as Tylenol^®, Advil^® or ONE-A-DAY^®. For example, Tylenol^® has acetaminophen as an active ingredient and is available in a store's analgesic (pain relief) section. Store brand acetaminophen is located right next to the national brand acetaminophen, offering the same active ingredient (acetaminophen) and the same relief.

Store brands and national brand products are both manufactured to meet or exceed quality standards set by the Food and Drug Administration (FDA). Store brand products are sold by retail stores under their own labels and compete with nationally advertised brands. All Perrigo products meet or exceed quality standards set by the Food and Drug Administration (FDA). Store brand OTC and nutritional products have saved consumers many millions of dollars in health-care costs over the past six years.

Although the national brand owner's strategy of not suing its retail customer directly may be attractive from a business relations perspective, unless the case is promptly resolved on an amicable basis, it will be hard to avoid having representatives of Kroger, CVS, and other retail customers of Schering-Plough, put on the "hot seat" in discovery depositions to determine who created, controlled, and/or approved the "look and feel" of the store brand packaging. It remains to be seen how this strategy will play out here for Schering-Plough.

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Earlier this week the Legal Satyricon and a number of newspapers in the Southeast reported on the University of Alabama’s loss of part of its trademark infringement suit against former licensee Daniel Moore, an artist who has created original paintings featuring the UA’s athletes for over 30 years. UA argued that it has protectable trademark rights in the unregistered trade dress of the UA football uniforms – namely the colors crimson and white; UA’s trademark rights in its registered marks for CRIMSON TIDE were not at issue. Mr. Moore argued the defenses of “artistic expression,” first amendment, and fair use.

As I’ve written previously, athletic licensing is a serious money-maker for universities, and Mr. Moore purportedly earns in the low millions for his art, so there is much for UA to gain by bringing Mr. Moore back into their licensing fold. But, a cursory review of the court’s opinion, which points to case after case wherein university athletic departments, athletic event organizers, and individual athletes have sued artists on trademark theories, shows that such suits are seldom successful. Putting aside the difficulty of proving strong rights in the trade dress of the colors crimson and white (I can think of one institution in particular that may claim arguably stronger rights in the color crimson) and the on-the-face-of-the-dispute lack of plausible likelihood of consumer confusion, the basic issue here is whether artists such as Mr. Moore are using purported trademark rights in a trademark sense – that is, to identify themselves as the source of the purported trademark rights.

As readers of this blog are aware, a trademark is any symbol, word, device, etc. used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. The doctrine of classic fair use, which allows third parties to use a mark when it does so in good faith, to describe its goods and services in a manner that is not as a trademark, recognizes that if purported trademark owners could limit the use of their marks too even non-source-identifying uses, our ability to refer to goods, services, and their sources would be severely limited for no justifiable purpose. As if the application of this doctrine to the facts of this case spoke for itself, the court spent no more than seven sentences finding that Mr. Moore’s use of the Crimson Tide’s colors was a fair one.

Notably, the court found in favor of Mr. Moore to the extent he depicts the Crimson Tide in his artwork and prints, but enjoined his use of those same images on merchandise, such as coffee mugs, t-shirts and the like. What makes the use of the red-and-white in paintings a fair use, but not mugs?  While the court did not parse out its reasons for these findings, it is likely because consumers are more likely to view such goods – as opposed to $25,000 original oil paintings – as affiliated with UA, which probably makes a tidy sum selling Crimson Tide merchandise to its fans.

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An entire experience designed as an altered reality. Sounds like science fiction, but drop yourself into Las Vegas and you will likely see the world from a new perspective. The full bombardment of your senses is real but nothing around you really is. You feel real marble inside palaces meant to emulate palaces in Rome. You walk under the Eiffel Tower to enter a casino and look up to see painted clouds. In this case the opposite of real isn’t fake, but rather recreated reality that defines the Las Vegas experience.

Consider the experience of visiting Paris, France, and going to the top of the Eiffel Tower, touching the metal, smelling the grass, seeing the views. That experience isn’t trademarked, patented or protected in any form, to my knowledge. Now, when you consider an average American’s chance to walk under the “real” Eiffel Tower, the Las Vegas recreated version may inspire a visit to the real cultural icon in Paris. But, more likely it offers an alternative reality and what you’ve seen is your new reality. “Why go see the real Eiffel Tower when we’ve seen it in Las Vegas.” Does this equate to eating at a French restaurant makes you want to visit France? Maybe. But when does the altered reality become the new reality? When does a copy of an experience like the Eiffel Tower have an impact on how many people visit France? Or alternatively, if a replica of the Statue of Liberty existed in Tokyo, Japan, how would that impact travels to New York ? 

The design of experiences has been happening since the beginning of time, sometimes thoughtfully and others not as much. And, those that become iconic are often replicated by others. The Eiffel Tower is one of many modern examples. The Eiffel Tower is a designed experience and should offer certain rights and protections. Although authenticity can be felt by any average individual, there is a point where an altered reality impacts what is real. It would be a sad day when someone believes they’ve visited the Eiffel Tower after leaving the desert of Nevada.

No disrespect to the City of Las Vegas, you certainly have it going on, and I have seen your share of attempts by others to replicate the Vegas experience elsewhere.

Take a guess which version of the Eiffel Tower you are looking at here.

The experience of Las Vegas: What was your last memory of a family vacation?

—Aaron Keller, Capsule

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With less than 6 months to go until the 21st Winter Olympic Games in Vancouver, trade mark enforcement activities are beginning to heat up.

In January, People for the Ethical Treatment of Animals (PETA) launched its global campaign against the Canadian seal hunt with a version of the Vancouver 2010 Inukshuk logo clubbing a seal in a pool of blood above blood-soaked Olympic rings. PETA is also selling t-shirts, mugs, buttons and stickers displaying this logo, thus capitalizing on its use of the Olympic marks.

The Vancouver Organizing Committee for the 2010 Olympic and Paralympic Winter Games (VANOC), has publicly stated that it has no jurisdiction in this matter on the grounds that with PETA based in the United States, it is the US Olympic Committee's (USOC) responsibility to enforce the International Olympic Committee's rights in its trade marks.

The USOC duly complained about PETA's use of the phrase "Vancouver 2010" and the image of the Olympic rings on its products. In response, PETA publicly took the position that its use was protected as fair use, being an obvious parody. "Absent ... confusion, and in the context of a critical and parodic use of the images, there is no trade mark infringement." And there the matter appears to have ended, for now.

In June, 2009, PETA pushed the matter further with the launch of its website www.OlympicShame2010.com, which portrays the Vancouver Olympic mascots Miga, Quatchi and Sumi as bloodthirsty seal killers. 

PETA is clearly targeting the Vancouver Olympics in an attempt to put pressure on the Canadian government to end the Canadian seal hunt. Thus far, VANOC has declined to attempt to enforce its rights under Canadian intellectual property law, and the question remains, could it?

Intended to combat ambush marketing, the Olympic and Paralympic Marks Act (the OPMA) prohibits any person from adopting or using in connection with a business, as a trade mark or otherwise, an Olympic or Paralympic mark as set out in the Act. The OPMA provides for certain exceptions, including use for the purposes of criticism or parody. The Olympic rings, Inukshuk composite design, and the phrase "Vancouver 2010" are all Olympic marks for the purposes of the OPMA.

The Canadian Trade-marks Act also provides a mechanism to protect "official marks", which are uniquely Canadian. Entities that are "public authorities" such as VANOC and the Canadian Olympic Committee have the ability to request that public notice be given of their use and adoption. Once published in the Canadian Trade-marks Journal, official marks cannot be adopted by others in connection with a business, as trade marks or otherwise. Official marks, unlike regular trade marks, need not be associated with specific wares and services to be published and subsequently enforced. Once an official mark is published it does not need to be renewed and is virtually unexpungeable. Official marks accordingly possess far greater protection than any other kind of trade mark. The Inukshuk design, Olympic rings design, and Olympic mascot designs are all official marks owned by VANOC. 

With this statutory firepower at their disposal, could VANOC stop PETA's display of the Olympic marks?

PETA's "parody" defence could possibly be successful against any cause of action based on the OPMA, since the OPMA provides that use of an Olympic mark for the purposes of criticism or parody relating to Olympic Games is not a "use in connection with a business" (although one questions whether their "parody" qualifies as "parody relating to the Olympic or Paralympic Games"). 

Unlike the OPMA, there is no parody defence under the Canadian Trade-marks Act. However, to be successful, VANOC would have to prove that PETA's activities constitute adoption of the marks "in connection with a business" and that there is a sufficient Canadian nexus to PETA's activities for Canadian law to even apply. These are significant hurdles, and thus far, it appears that VANOC is reluctant to give PETA the publicity that a lawsuit would generate - no action has been commenced. 

An additional cause of action for VANOC could be copyright infringement based on PETA's use of the mascot designs. While PETA may view its use as fair use due to parody, there are a number of court cases holding that parody is not a defense to an infringement of intellectual property rights in Canada.

—Megan Langley Grainger, Bereskin & Parr LLP

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The premise of this blog, Duets, suggests a certain harmony results when law and marketing play together. Is the same true for the law and public relations, a discipline that is part marketing and part business management? 

It brings to mind vintage perceptions of lawyers providing counsel as media swarm people exiting a courthouse. Classic Perry Mason, the attorney and client dismiss the reporters with the familiar, “No comment.” 

This simple statement technically says nothing but really says everything. 

With that perspective, some might think that attorneys and public relations practitioners are at odds. The legal point of view: Say as little as possible. The PR recommendation: Communicate openly and frequently with everyone in every possible way.

At the heart of public relations, it’s about building trust through action and communication. What an organization or person does and how much is or isn’t said as well as the sincerity, context and credibility of the messenger all contribute to the perception of truth and reputation.

On one level it’s simple: say what you mean and do what you say. Yet we know it’s far more challenging than that, especially today with an overwhelming number of online and offline connections. 

Today, it’s not just relationships between people, but relationships with brands and with ideas. Amazon’s Kindle has tens of thousands of followers on Twitter and even community initiatives such as www.stopthedrinktax.com have nearly 7,000 fans on Facebook. 

Heck, I have enough trouble communicating and showing my interest and concern for the people I care about without worrying about the followers of my company and its brand on Twitter! Yet, I do – in business, we have to -- take these brand relationships seriously and work to nurture trust and mutually beneficial interactions. 

It would be easy to say “no comment” or simply post nothing, yet there is an expectation and obligation to act and communicate. What did commentary by Bernie Madoff or Michael Jackson make you think? How did it impact your perceptions of them, their businesses and industries?

As we build and represent brands, there is an increasing need to protect these brands – legally via trademarks and copyright – and equally important, an increasing need to build brand trust through communication. That’s the potentially beautiful duet that can play when legal and PR counsel work in harmony to comment or not to comment as the situation dictates.

—Rose McKinney, Risdall McKinney Public Relations

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Tommy has a lot to offer in advancing the recognition of certain kinds of non-traditional trademarks, especially touch marks. Yes, The Who's tune from the Tommy Soundtrack "See Me, Feel Me / Listening to You" repeats these lyrics over and over: "See me, feel me, touch me, heal me."

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Last month, Eddie Van Halen's company, ELVH, Inc., filed a lawsuit against Nike for copyright infringement.  The complaint alleges the above-depicted model of Nike's Dunk Low shoes infringe his copyright in the red, white and black striped Frankenstein guitar design.  The lawsuit is seeking not only profits from Nike’s sale of the shoes and damages, but also the destruction and impoundment of all shoes in question.  Nike issued a statement denying the charges. 

The real kicker in this case?  Eddie Van Halen recently introduced his own line of tennis shoes, EVH, incorporating the same Frankenstein design.   Interestingly, as one online news magazine pointed out, the EVH shoes bare a striking resemblance to the Classic Chuck Taylor tennis shoe by Converse, a subsidiary of Nike.  My advice to Eddie would be to Jump from this train while he still can. 

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Jennifer Bjorhus of the Star Tribune continues her close coverage of the Polaroid bankruptcy saga. For prior Polaroid posts, see here and here. In her latest report, here, the Court appointed receiver in the Polaroid bankruptcy, Doug Kelley, is quoted as saying "It will take an intellectual property genius to tell us whether the rights go along [with a sale]."

Bjorhus reports that 'Polaroid failed to obtain copyrights to the work it meticulously collected over the years by lending photographers film and equipment in exchange for a few sample works in return." Presumably what she means is that there are no copyright "registrations" covering the works in question, since copyright exists automatically upon the creation of "an original work of authorhip," once the work is "fixed in a tangible medium of expression."

Apparently the $10,000 fee that was paid to Sotheby's to assess the value of the art did not consider the question of whether Polaroid owns the underlying unregistered copyrights in any of the original artwork.

Although it may be beneath the perspective of the requested "genius," the resource below the jump might be a place to start.

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What is it about some advertising campaigns that make them magnets for imitation?

For example, the Got Milk? imitators appear to be endless in numbers, but that is the subject of another post for another day. 

For today, with respect to a different imitation magnet: There must be an endless number of creative and original ways to market a series of home and self defense videotapes, I suspect. Even relying on fear as an underlying theme to sell these videotapes, there must be only a few less than infinity still possible.

So, why the need to borrow from a famous ad campaign here -- one I won't mention until after the jump below?

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