“Is it trademark infringement if a fictional company or product in a movie or television drama bears the same name or brand as a real company or product?”

For the long drawn out answer, check out Fortress Grand Corporation v. Warner Bros. Entertainment Inc., decided by the U.S. District Court for the District of Indiana last week.

For the short, but delayed answer, complete with Duets flair and my personal insights and perspective on the subject, you’ll need to check back here later today — sorry for the delay.

The infamous heels have also been the subject of litigation abroad. On April 18, 2013, the District Court of The Hague, the leading Intellectual Property court in The Netherlands, rendered a judgment in a case involving an intellectual property dispute over the pumps. The judge ruled that pumps sold by a Dutch discounter, Van Haren, infringed Louboutin’s trademark.

Van Haren’s heels featured black colored shoes with red soles. Louboutin argued “double identity” infringement, confusion with respect to the trademark, and dilution based on the trademark infringement. The judge noted that the sole trademark coincided with Van Haren’s product, since it involved the color of the soles of the shoes. The judge also noted the visual similarity between Louboutin’s red soles and the red soles used by Van Haren in almost an identical way (notwithstanding the fact that the Van Haren heels were not as high). The judge concluded that there would be sufficient confusion based on trademark infringement under Article 2.20 of the Benelux Convention on Intellectual Property Rights and granted an injunction in Louboutin’s favor. Van Haren was ordered to refrain from selling these shoes and was additionally ordered to pay Louboutin’s legal fees.

The case demonstrates the swiftness with which the Dutch proceedings were commenced and ultimately concluded. It also demonstrates the importance of being aware of intellectual property laws in the international context.

Back in 2007, Sarah Rosso (Nutella Fan) established World Nutella Day to celebrate her affection for Nutella.  Within the past week, she announced on her World Nutella Day Facebook page, Twitter feed and blog that she received the dreaded cease-and-desist letter from the product’s maker, Ferrero S.p.A.  Those bastards!  Although she did not post the letter, Nutella Fan went to her followers and indicated that she would be shuttering the website, the Facebook page and the Twitter feed as a result of the letter.  By sending the cease-and-desist letter to a fan who has a significant public voice amongst other fans and essentially silence from Ferrero, the Nutella Fan drove the narrative of this story.  That narrative from the news headlines is telling:  Has Nutella-Maker Ferrero Put an End to World Nutella Day? (Businessweek), World Nutella Day to Cease and Desist (Time), Nutella Makers Spread Sadness By Nixing Popular Fan Site, Holiday (MSN).

Happily for all parties, in the interim Ferrero and the Nutella Fan apparently reached an agreement so that she did not have to shut down these sites and could continue to promote her love for the product.  Ferraro also issued a generally glowing statement, which the Nutella Fan reposted on her blog.  Although these parties seemed to have reached an amicable agreement, damage was done.  A Huffington Post article on the subject quotes one fan’s comment: “And I actually lost respect and love for Ferrero. You’ve [done] nothing but promote Nutella. They should thank you and send you Nutella for a life time. And not send cease and desist letters.”

I have been talking with several marketing and public relations sages about print media versus digital or social media over the last week.  Companies need to adapt to a lack of control in digital or social media and accept that there will inevitably be some negative feedback.  As I will paraphrase from one of these sages, the social media posts “are just saying to your face what they normally would say behind your back.”  Ferrero seems to have recovered from the negative publicity, but certainly an understanding of the power of the Nutella Fan may have modified the strategy employed to defend those rights.

Speaking of that strategy, amongst the glowing and flowery language in the Ferrero statement was one stoic sentence relating to their reasoning behind the letter:

The case arose from a routine brand defense procedure that was activated as a result of some misuse of the Nutella brand on the fan page.

Let’s dissect this sentence into a couple of points.  First, with this posted on the Nutella Fan’s own website, the latter half of the sentence almost reads like an admission that there was some misuse of the mark, even if a fair use or laches defense could be applicable.  The second point relates to the robotic reference to “a routine brand defense procedure.”   Yep those darn attorneys are at it again; they are such sticklers!  In my opinion, a defense strategy should be fluid rather than rigid.  It should consider your goals (including legal goals and public relations goals) and the facts of the particular situation.  There are certainly situations where an aggressive, detached approach to asking someone to stop using your mark is warranted to achieve your goals, and there are situations where a more delicate, “Minnesota Nice” approach (maybe even through B2B contact rather than directly from an attorney) can also achieve all of your goals.

What are your thoughts on Ferrero’s sticky situation?  How do you diffuse negative feedback through social media?

The less than explicit part was the tip required after you snapped your shots. And, by the way, it is odd to watch Woody from the Toy Story count his tip in the awkward way required in a large costume. Do these characters pay a commission back to the rather large media companies who own these characters? Doubt it. If they were there promoting these characters and their movies, I doubt the media giants would have equipped them with tip sacks. So, just take a moment to look around Times Square in your head, all the media dollars being spent to build larger brands and right down on the street there’s a bandit gang peddling photographic moments to unsuspecting tourists. Opportunity exists all around us, we just have to find it. These characters found something to earn themselves a modest income right under the preverbal nose of the trademark owners.

Second, the funny, is a mixed message story. You may have heard about the bed bug problem in the big city last year [see link if you've conveniently forgotten as I had]. The issue was obviously impacting travel and tourism which is big business and when it drops sharply the behaviors of the businesses might become a bit irrational. This is best exemplified by a photo taken in my hotel elevator on the way to my room. The issue had, as previously stated, escaped my memory.  So when I saw this ad telling me how clean the bed is I became a bit perplexed.

That’s like saying this room will have a door and a bathroom. Really? The promise is a clean bed? Which, of course, brought back the memory of the bed bugs and made me wonder, how bad was it? Should I be concerned? So, the lesson here is this. You can’t advertise your way out of a mess. Clean up the mess, tell people you did so and quickly stop talking about it. Never, and I mean never put up a sign promoting something that should be expected as a basic standard. Ick.

Third, the question. We have clients in NY and agency friends in all forms. We often visit with them when we’re there and talk about the culture of New York. On almost every trip we hear this message, “the really good creative ideas don’t come from inside this city, they come from somewhere else and are refined here, then distributed to the world.” Which has perplexed me, because there are so many good firms in all forms in the city. And, there are so many interesting restaurant concepts, art exhibits, products, retailers, and innovations of all sorts. But, when you ask around you hear the real origin was somewhere else, and they became large in the city of New York.

So, the question, is New York a content distribution or content creation city?  My belief now is New York is a content distribution city.

Anyone else have a thought on this subject, I’d like to hear it?

Aaron Keller is an author of two books on design, Design Matters: Logos and Packaging.  He founded Capsule design in 1999 and continues to write for a variety of publications and blogs from his office in Minneapolis, Minnesota.

Federal trademark registration data confirms the first use date to be July 8, 1916. The description of the contour bottle design mark in 1960 was: “The trademark consists of the distinctively shaped contour, or confirmation, and design of the bottle as shown”:

The silhouette or outline of the contour bottle design stands alone as a federally registered trademark even without words:

The negative image or silhouette of the contour bottle design is also federally registered as a trademark:

And, now the outline or partial image of the contour bottle design shape even finds itself in multiple other federally-registered formats for the Coca-Cola brand:

Do these examples make it the most famous fluid trademark that no one is talking about — when they’re talking about so-called fluid trademarks? Sorry, Google Doodles.

Will there ever be a more iconic bottle design or product container? Sorry, Pepsi, no chance.

The beauty in the design to trademark types, of course, lies in the fact that the shape can be owned as a trademark, forever . . . .

The ad was widely regarded as one of the best of the Super Bowl, even though it cost zero dollars to release. Oreo has also used their Twitter branding to take on AMC theatres and Kit Kat bars.

It was only a matter of time before Oreo returned back to traditional media, recently releasing its new “Wonderfilled” advertising campaign (warning: if you have a weak stomach for cute and quirky music, messages, or cartoons, you might just want to skip this video, at least there isn’t a ukelele though…).

As far as star power goes, the lead singer of Owl City certainly is a step down from The Brothers Manning (who else could get away with singing this song?) Turns out though that Oreo couldn’t just keep it simple. On Tuesday they sent a group of 500 a capella singers into New York, handing out Oreos, singing songs, and I guess, attempting to fill the streets of New York with Wonder. The singers then converged for a noon-hour singalong in Union Square with Mr. Owl City himself.

Personally, I have my doubts about whether this was a successful stunt. I would imagine most New Yorkers would have been a bit irritated to be stopped during their morning commute for an a capella rendition of an Owl City song. Based on the picture of the noon concert, it looks like there may be more singers than viewers. As we all know, though, Oreo’s target isn’t real-life viewers, it’s digital viewers. It certainly got my attention, so kudos to you Oreo! I can’t help but point out though that even after reading about Oreos for a few hours, I have zero desire to purchase or eat one. What can I say? I’m just more of a Reese’s Peanut Butter Cup guy…

Perhaps the thinking behind the uncomfortable spectacle ads is to put aside embarrassment of the topic with an in-your-face campaign designed to shock Minnesotans into action by taking advantage of certain free screenings to detect early signs of colo-rectal cancer, for women too:

Here is the last one in the billboard advertisement series that I captured with my iPad within the last month, as you can tell from the snowy background:

Hopefully MDH will publish a report on the effectiveness of this campaign, explaining how MDH measured its success.

Finally, for those of you aware of my interest in irony, the last billboard image shown above also leaves me fairly certain that billboard rental is done in a vacuum without knowing about any potentially nearby signage that might create an opposing view on the billboard’s message.

The owners of two of those memes, Keyboard Cat and Nyan Cat, filed suit against the Scribblenauts developers because the developers forgot to ask permission/pay for the use of those memes in the game (a real Scumbag Steve move if you ask me).  Keyboard Cat, described as a “cat, Fatso, wearing a shirt and sitting upright with its paws on the keys of an electric keyboard,” and Nyan Cat (pictured), “a character with a cat’s face and a body resembling a horizontal breakfast bar with pink frosting sprinkled with light red dots, flies across the screen, leaving a stream of exhaust in the form of a bright rainbow in its wake,” appear to be the first internet memes at the heart of a lawsuit.  We’ll keep you updated on this case’s progress (like Good Guy Greg would).

AdAge posted an article today featuring CBS CEO Les Moonves commenting why his network is a better fit for media buyers than digital media. One quote attributed to Moonves was: “If you need to reach a mass audience, you’re not going to get that online….We figured out you’d need to buy like 2 million spots on YouTube to equal one “NCIS.’”

The example Moonves uses highlights audience fragmentation, a truism in media today. But even media fragmentation does not change the fact that TV programming has the capacity to draw a single, large audience. There is a reason that it is called broadcasting, and that’s because of broad reach. With regard to broad reach, if one looks back 30 years, the Internet was not widely available and cable was in its infancy. The legacy broadcast networks, like CBS, commanded a much larger share of the audience. In the last 30 years (but especially in the most recent 15 years), we’ve seen a proliferation of media channels coming into play, forcing brands to be more aware of content distribution so as to reach their target audience, which is scattered across forms of media. Brands need to be in multiple places for top of mind brand awareness and fostering the positive brand beliefs that ultimately lead to increased sales and revenue. TV can still have a place in the equation depending upon the brand, but a marketing plan today that does not incorporate digital would be concerning and much less likely to reach its fullest potential.

TV and digital work best as an integrated function. A TV campaign can boost outcomes in the social media space, which is a key part of multi-channel marketing. It is a pretty common practice in TV advertising now to see a reference to a branded Facebook or Twitter account. Using print campaigns that are also aligned with messaging being used on TV is part of integrated, holistic marketing communications.

In all channels, what matters most is the content created. Without compelling content, brand created messaging on TV, in the social space, in email, on websites, video and in print is not going to cut it. But compelling content is really a prerequisite in marketing campaigns. Advanced marketing is dependent upon how well a brand uses the various channels. More effective use of marketing channels is usually measured by reduced cost, and increased revenue. The combination of more revenue and less cost is something that looks pretty on a financial statement.

The multi-channel mix is a lot like snowflakes. No two multi-channel marketing efforts are exactly alike. While multi-channel campaigns have many of the same elements, they are often executed slightly differently as different companies weight the mix and channel utilization in different ways. The best idea is to use multiple channels to get a compelling message out there that frames brand beliefs in a positive light, creating an inducement for consumer purchase.

In so many words, our good friend and wise guy Ron Coleman, over at Likelihood of Confusion, described the “trademark bullying” panel as, let’s say, rather muzzled. While I agree that one had to strain to hear any insights, perspectives, or opinions, I prefer the more comprehensive straitjacket metaphor (Hannibal Lecter style) over the mere muzzle, because it obstructs well beyond simple vocal chord vibrations and stills the wildest of “dangerous” body language too, even the likes of this little guy’s gyrations. Yet, Ron critiqued the audible portion of the panel discussion and explained the unfortunate situation this way:

“Similarly, want to talk about trademark bullying?  Briefly mention two or three examples (oddly enough, using “the same examples you might find mentioned in this article) and conclude that they’re not really bullying (kind of like in that article, actually!) (and no — don’t cite the article!  Duh!).  Apologize for not discussing any actual examples of trademark bullying because doing so might offend a the-INTA member company, or, aw shucks, one of my clients, wouldn’t you know? (This actually happened – again resolving, definitively, my original dumb question.)  Then come around to the edgy, original conclusion that maybe we shouldn’t write dumb cease and desist letters any more — you know, what with these crazy kids and their Intertubes and all.”

“It’s easy to crack wise, but the reason, Mr. Wiseguy Blogger, those guys are up there on the panel and you are not is that the people on the panel understand what to say and when to say it.  And when not to say it.”

“And, not to get to all Kurt Gödel about this, but you.  Do.  Not.”

A non-attorney friend of mine recently described how he plans to provide valuable insights and information on his forthcoming blog, but he also “will certainly poke the bear.” The “bear” in his non-legal industry, that is, not a cute, cuddly teddy bear. So, if INTA is an industry bear, Ron, consider it poked (more than a few times). Well, I suppose, it’s not my first time either.

Anyway, back to the problems with INTA’s ”trademark bullying” panel discussion (after seeing IPKat’s similar perspective, does that make this post the “tipping point” on the subject?).

In short, Caveat Emptor (“let the buyer beware”) was the word of the hour.

There were so many caveats offered by the moderator at the outset, I lost track of them, except this one: To avoid offending any trademark owners or their counsel, the panel would limit themselves to “just the facts,” no opinions or “judgments” about whether any “trademark bullying” lines have been crossed.

Call me crazy, but I’m thinking more than a few trademark types pay four figures to register for the Annual Meeting, expecting more than legal facts (facts without analysis or opinions can more easily be found on most Big-law firm websites and blogs) — instead, hoping for some valuable insights, perspectives, and well, opinions on the subject at hand, but by all means, answer some questions (or, at least ask some questions of the audience).

Perhaps the juxtaposition of these images says it all:

So, if some other form of “time” actually had “permitted” and the panelists actually had been inclined or “permitted” to share their opinions or “judgments” about the examples or topic, what might you have asked them about trademark bullying?

Last, while we’re on the subject of caveats, INTA might be wise not to forget this one: Caveat venditor (“let the seller beware”). If INTA doesn’t remove the straitjackets from their speakers and also find qualified speakers who won’t self-impose them, the number of trademark types filling nearby hotel rooms to attend the UN-TA may begin to outnumber those paying four figures to register for the official INTA event.

And, recognizing the heavy dose of irony contained in the coming link, when will “ambush marketing” begin to target INTA events?

It’s such a slippery slope.