Duets Blog : Creativity and the Law: DuetsBlog

Jacket maker Weatherproof Garment Company took advantage of a GQ-style photo of the President standing in front of the picturesque Great Wall of China.

The White House was not pleased.

Smack in the middle of Times Square in New York - one of the busiest and most-watched intersections on Earth - stood a larger-than-life billboard featuring President Obama, in a Weatherproof jacket, in front of the Great Wall of China.

Now wait. Don't we see the image of the President just about everywhere? Your local newspaper doesn't need White House permission to feature the Pres on page 1, do they?

Of course not. But that's different.

News organizations (even bloggers) can use the image or likeness of political figures - with a few exceptions - in editorial content. That can include all manner of news reports, commentary, and even political cartoons. It's a sort of "fair use" interpretation and falls into the freedom of speech / freedom of the press continuum.

Clearly, that's not what Weatherproof was doing.

The headline "A leader in style" is clever, yes (borrowing "style points" from the unarguably GQ-ish President), but could hardly be seen as political commentary. Whatever Weatherproof may have tried to claim, the company is hoping to sell jackets. Plain and simple.

At least, that's how the White House interpreted it.

Last week, White House counsel Kendall Burman and Weatherproof spokesman Allen Cohen had a "cordial conversation" in which Mr. Burman reminded Mr. Cohen that public figures have a right to protect their likeness for commercial purposes. Needless to say, Weatherproof agreed to take down the billboards at the earliest possible time.

That said, it will be two weeks before the logistics line up to make that happen. Two weeks of continued visibility. Two weeks of continued buzz. All told, it will turn out to be a pretty good return on advertising investment.

Methinks Weatherproof knew exactly what it was doing when it flirted with the edge of the law.

This is gorilla advertising of the first order.

Yes, two billboards in Times Square aren't the equivalent of stuffing flyers under windshield wipers at your local supermarket, but it's still pretty darned creative. With a modest investment, and a cheap license fee from the Associated Press for the photo of the President in China, Weatherproof was able to generate disproportionate attention for their little campaign.

I have to admit, I took a look-see at the Weatherproof website. I need a new coat, and the one in the ad looks pretty good. Frankly, I never would have considered it otherwise. We'll have to see what the ad does for sales on a larger scale, but my guess is the net-net will be positive.

But aren't there any risks in this type of strategy?

Yes, certainly.

The President may engender good feelings for many people, and many people may view him as a style/trend leader, but those warm fuzzies are not universal. Does the Weatherproof brouhaha actually dissuade right-leaning buyers from the brand?

Perhaps.

But my guess is that Weatherproof understands its buyer demographics pretty well.

Was the campaign risky?  Yes. But did it pay off? I think 'yes' as well.

—Jason Voiovich, Principal and Co-Founder of Ecra Creative Group and Author of the State of the Brand weekly column

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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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Last week, a group calling themselves The Yes Men apparently perpetrated an elaborate hoax to usurp the corporate persona of the United States Chamber of Commerce, to the point of publishing a fake website and holding a press conference at the National Press Club, posing as the Chamber itself.   (Image of genuine website here.)

As reported at Betanews (and elsewhere), representatives of the real U.S. Chamber of Commerce became aware of the hoax in time to actually interrupt the faux press conference, under the auspicies of which the pranksters were announcing an about-face in the Chamber's previously-stated positions on climate policy.  As of this writing, the Betanews article has a six minute video of the press conference as it is interrupted by a genuine representative of the Chamber.  It is interesting to see how close the hoax came to actually duping real members of the press.  (Of those in attendance, apparently four actual reporters were naive to the hoax, and they reported for the Washington Post, Reuters, and Greenwire.  Some of those attending were allegedly plants.)

On Monday, the U.S. Chamber of Commerce sued The Yes Men for a host of trademark-related torts, including trademark infringement, unfair competition, trademark dilution, false advertising, and cyberpiracy.  (PDF of complaint here.)  They even worked in an allegation of counterfeiting.  (Had I drafted the complaint, I would have used the word "counterfeit" as often as possible.)  While I reserve judgment as facts develop, the information publicly available now suggests that the Chamber has a strong case.  The Yes Men seem to be leaning towards some sort of a free speech defense.  The complaint suggests that The Yes Men perpetrated the hoax in an effort to publicize their new movie.  Whether this is the case, or whether this was an actual effort to deceive people, I don't see much traction for a free speech defense, which requires at a minimum that the speech in question not be misleading.  This should be a fun case to watch!

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Back in May, I wrote a piece entitled "Re-Branding Madness in Washington" Overlooks Obvious: The Washington Redskins," discussing the trademark cancellation action that I filed on behalf of seven prominent Native American leaders back in September 1992 (Harjo et al v. Pro-Football, Inc.), and calling for the football team to "hire a branding guru to engage in some serious and successful re-branding."

Well, the 2009 football season is now upon us, and it appears my re-branding call has fallen on deaf ears, at least for now.

Yesterday the Washington Post "reported" the case may be heard by the U.S. Supreme Court.

What I found most interesting about the brief 197 word story in the Washington Post is that the "reporter" used the word "activist" three times and "group" twice, to describe the distinguished Native American leaders I know, without referring to them as individuals or even as being Native American (without the "activist" pejorative), leading me to wonder what yard-line his seats might be located at in FedEx Field.

For what it's worth, at least the Associated Press, ABC News, NBC Sports, ESPN, Yahoo News, WTOP.com, WUSA9.com, New York Times, New York Post, Miami Herald, San Francisco Chronicle, Seattle Times, Sports Illustrated, The Washington Times, and CBS News, have all managed to report the story without employing the highly-charged and politically-loaded term "activist," instead neutrally referring to the petitioners as "Native Americans" and "American Indians," who are offended by the team name.

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A picture can say a thousand words; so does a face. The same is probably true of non-verbal logos, including the several federally-registered "Chief Wahoo" logos, shown above (all apparently still in use by the "Cleveland Indians" professional baseball team, according to their latest trademark filings).

So, what do they say to you?

My take? I can think of quite a few words to describe them, but none includes the word "honor," as is often the claim made by those in favor of keeping Native American mascots.

From my perspective, "Chief Wahoo" is the non-verbal equivalent of the Redskins racial slur that I blogged about last week.

Last month I blogged about Non-Verbal Logos That Can Stand Alone, and while "Wahoo" certainly can "stand alone" as a non-verbal logo, unlike the famous Nike Swoosh and McDonalds Golden Arches, "Wahoo" should simply "stand alone" in the corner of a dark closet with the door shut and locked.

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Re-branding occurs all the time.

Re-branding occurs in business. Remember when Bell Atlantic became Verizon? Andersen Consulting became Accenture? How about when Philip Morris became Altria?  

Re-branding occurs in politics too. Just days ago, Judson Berger discussed a kind of "re-branding madness" consuming Washington, D.C. right now: "Terrorist attack is out. -- 'man caused disaster' is in." Our friends at Catchword Branding had a lot of fun with the political re-branding of Swine Flu.

Re-branding even occurs in the world of professional sports. Remember when the NBA franchise Washington Bullets became the Washington Wizards in 1997 out of concern that the Bullets name of some twenty-three years (1974-1997) had acquired "violent overtones".  How about the recent re-branding from the Seattle Supersonics to the Oklahoma City Thunder? Even the NFL has decided to recognize Cincinnati Bengal Chad Johnson's re-branding to Ocho Cinco.

Re-branding changes, according to Wikipedia, are "usually in an attempt to distance [the brand] from certain negative connotations of the previous branding." So, given the widespread meaning and understanding of "redskin" as "offensive slang" and that it is "used as a disparaging term for a Native American," given the pain the term has caused, and given that the team's helmets sport a Native American profile and not a certain variety of spud on them, why won't the Washington Redskins get on the re-branding bandwagon in our nation's capital? After all, even one of the attorneys at the same law firm hired by the team apparently has spoken out, read about the details here.

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Gripe sites have been around for almost as long as the Internet itself, and they tend to be difficult to shut down.  Conventional wisdom among brand owners is to send a threatening letter and play the odds that the (likely) individual with an axe to grind will not want to get sued by a corporation. 

There are two problems with that strategy.  First is the possibility that the letter will draw more attention to what is likely a sparsely visited site, or the person or entity running the gripe site will actually sue first, as Mike Morgan has done against Goldman Sachs.  Second, and by far the larger problem, is the failure to assess the root causes of the gripe site.  For many retailers, the roots can often be traced to a bad customer experience.  With Goldman, the issue seems to be more that Mr. Morgan is just looking for a place to vent.  Sometimes, the griper is just off the deep end.

As a usually disinterested observer, I find mild entertainment value in how clever the gripers can sometimes be with their domain names, like NoDaddy.com.  There is even enough gall and vinegar to fuel sites devoted to griping wholesale, like this one and this one (warning, these may be offensive).  Interestingly, I have yet to run across any sort of praise sites, like cokerocks.com.  Do any exist?

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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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