Duets Blog : Creativity and the Law: DuetsBlog

While watching the Academy Awards on Sunday night, the winner of the Animated Short Films category definitely caught my attention. The winner was Logorama - a 16-minute French anumation created around the use of 3,000 well-known trademarks.  

The plot is described as a police chase through Los Angeles which includes a machine gun-toting Ronald McDonald who is a fugitive running from the police, played by the Michelin men.  Every inch of the picture is made up of a trademark, logo or character, instantly causing sensory overload (see a prior blog by Brent Lorentz titled Sensory Overload here).  According to Wikipedia, the creators described the film as the presentation of “an over-marketed world” where “logotypes are used to describe an alarming universe (similar to the one that we are living in) with all the graphic signs that accompany us everyday in our lives.”   During his Oscar acceptance speech, the producer opened by thanking "the 3,000 unofficial sponsors" and assured them that "no logos were harmed in the making of the project."

Talk about Logorama is heating up on the Internet with most people wondering how they got away with it.  In a brief clip, I noticed sporadic use of the registration symbol.  One blog includes a quote from one of the creators after the film aired at Sundance, noting "no brand owners had objected yet," but "we hope there is no CEO of McDonalds here tonight."   While everyone has a right to present artistic commentary, it will be interesting to see if any brand owners object now that the film has received so much press.

Another interesting tidbit - when I tried to watch a YouTube video clip on one website, it had been removed due to a copyright claim.   

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Shaun White recently won gold in Vancouver in the halfpipe with a near-perfect score.   At 23, this already his second Olympic games and his second gold metal in this event.  Since 2002, he has also won 9 gold, 3 silver, 2 bronze medals in the X Games.   Anyone who saw him in the Olympics has to be as awe-struck as I am.  

He has many "trademarks," including the name Flying Tomato for his long red hair or, more recently, Animal.  His most recent trademark is a move - the Double McTwist 1260 (see him perform it here).  While the “McTwist” isn’t his to claim (move invented by a skateboarder 25 years ago), he is the first and only to perform the Double McTwist 1260, a two board-over-head flips inside of 3 1/2 turns.  Apparently, he developed this move over two years before he tried it out at the Grand Prix in Park City, Utah a month before the Olympics.  

While he can’t really protect his “trademark” move, maybe he can own it by virtue of the fact that no one else can do it.  He has already suggested he might be back in 2014 with more new moves. 

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In light of the recent Super Bowl victory by the New Orleans Saints, I think a brief discussion of the recent squabble over ownership of the phrase “who dat” is in order.

In case you have not been following the story, the phrase “who dat” is commonly used by football fans and, in particular, New Orleans Saints fans.  With the success of the Saints this year, “who dat” merchandise has been popping up for sale which has led to a battle over rights in the phrase.  There are generally three opinions as to ownership of the phrase: (1) the NFL believes they own it; (2) Who Dat Inc. believe they own it; and (3) Saints fans (and merchandise retailers) believe no one owns it.

According to Wikipedia, the chant originated in minstrel shows and vaudeville in the 1800’s and was later adopted by jazz and big band performers in the 1920’s and 30’s.

According to ESPN, Saints fans began using the phrase “who dat” (shortened from “who dat say dey gonna beat dem Saints”) as a cheer over 25 years ago.  Other sources note the phrase has been used as a southern football chant since the early 1970’s.  As such, the general feeling is that no one owns it or it belongs to the city and the people.

The NFL believes they own a trademark in the phrase or at least as used in connection with the Saints.  Numerous t-shirt makers and retailers have received cease-and-desist letters from the NFL over use of the phrase on t-shirts and other Saints memorabilia claiming the unlicensed products lead fans to believe the Saints endorsed the products.

Finally, ESPN also notes that Who Dat Inc., a company run by two brothers who are long-time Saints fans, claim trademark rights in the phrase for “branded products.”

Interestingly, there are numerous trademark applications for the phrase filed with the Trademark Office in connection with clothing and related goods.  However, no registrations have issued.  In fact, many of the applications were filed within the last month.  I have heard of bandwagon fans, but bandwagon trademarks claims?

So who, if anyone, owns the phrase "who dat?"  Who knows, but I am sure it will continue to be an interesting fight. 

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Well, even though the Vikings didn’t make it, I am still looking forward to the Super Bowl – for the commercials.  I am sure I am not alone in my excitement.  In fact, there are numerous Web sites dedicated to the best Super Bowl commercials, such as this one which chronicles them by decade.  Purchasing one of the coveted 30-second time slots can make or break (remember the controversial Just for Feet ad in 1999?) a brand.   

Estimated to be “the biggest TV audience in the world,” the Super Bowl presents a very unique opportunity for businesses to advertise.  Not only do they capture a huge audience (last year there were 95.4 million viewers the third most watched program of the year), but a captive audience who actually looks forward to the commercials rather than using that time to grab a snack or use the restroom. 

Even in this economy, the coveted time slots are selling fast.  According to Portfolio, Super Bowl ad sales started off slow, with only half of the slots sold six months ago.  However, it was recently reported that CBS has sold 95% of its 30-second spots, and the remaining spots will fill up fast. 

This year, a few of the reported purchasers of ad time include: 

• Anheuser-Busch bought the most airtime and is the exclusive beer brewer for Super Bowl advertising;
• CareerBuilder.com, who last year, in my opinion, had one of the best ads of all time (click here to view); and
• Dr. Pepper, a first-timer to the Super Bowl, whose commercial is reported to include the band KISS. 

Stay tuned for more on the 2010 ads after the Super Bowl airs on February 7, 2010. 

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On December 9, 2009, I blogged about the trademark issues surrounding the famous Tavern on the Green restaurant in Central Park. Well, the New York landmark officially closed shortly after midnight on December 31, 2009, after a blow-out party for 1,700 on New Years Eve. The New York Times reported on the items currently being auctioned to pay the prior owner’s debts including 59 chandeliers, a 14 foot King Kong, champagne buckets and a topiary giraffe. 

As previously noted, the Tavern on the Green mark was estimated to be worth $19 million.  The prior owners, the LeRoy family, continue the fight over the name with the City of New York who claims the name belongs to whoever operates the space.  The LeRoy family filed a federal trademark application for the mark in 1978, which registered shortly thereafter.  

Since my last blog post, some interesting updates have occurred.  First, if the City of New York loses the fight, the new name of the restaurant (now owned by Dean Poll) will be "Tavern in the Park."  The City filed a federal intent-to-use trademark application for the new name on November 10, 2009. 

Second, on December 30, 2009 (one day before the closing), an individual from Texas filed a federal intent-to-use trademark application for the identical TAVERN ON THE GREEN mark in connection with bar and restaurant services.  There is no question that the application will be initially refused by the Trademark Office, based upon a likelihood of confusion with the registration owned by the LeRoy family.  However, the Applicant may hope to cancel the prior registration for non-use of the mark. This raises a few interesting issues to be addressed, including:

1. Abandonment

If the LeRoy’s win the battle over ownership of the mark, but do not operate a restaurant under the name, have they abandoned the mark so that others may sweep in and use it? Under trademark law, abandonment of a mark occurs when the owner ceases use with no intention to resume use in the future. In addition, non-use for a period of three years is considered prima facie evidence of abandonment. Bankruptcy raises an interesting question as to intent to resume use and whether another party could prove a lack of intent shortly after a business goes bankrupt.   

2. Residual Goodwill

Since Tavern on the Green is most likely a famous mark, what about residual goodwill in the name?  As described in a previous blog by Steve Baird, even if there has been a technical and legal abandonment of trademark rights, a potential newcomer must consider the residual goodwill that may form the basis of an unfair competition cause of action.  Residual goodwill recognizes that the goodwill in a trademark doesn't necessarily go away right away, but there is no definition as to how long residual goodwill in a mark lasts. 

Stay tuned to see what happens. 

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If you have been following the bankruptcy of the Tavern on the Green, you have most likely heard about the controversy surrounding the famous trademark.  

There are a few parties claiming ownership of the Tavern on the Green trademark, recently appraised at $19 million according to the New York Times. The current licensee, the LeRoy family, has run the restaurant since 1974 when they turned a former sheep barn into a magnificent restaurant known around the world by name.  Warner LeRoy licensed the space from the City of New York under the name Tavern on the Green Limited Partnership.  Mr. LeRoy filed federal trademark applications for the name which registered with the PTO in 1981.  The Tavern's gross revenues in 2007 were $38 million, making it the second highest-grossing independently owned restaurant in the United States (according to Wikipedia). 

Apparently, in August 2009, the LeRoy family lost a bidding war for a new 25-year contract with the New York City Department of Parks and Recreation to Dean J. Poll, who runs The Central Park Boathouse.  However, on September 9, 2009, months before the LeRoy’s license expired, they filed for Chapter 11 bankruptcy  with 452 listed creditors leading to the current controversy over the Tavern on the Green trademark. 

The second party claiming ownership of the trademark is New York City.  According the another article, the City asserted ownership of the trademark at the bankruptcy proceedings claiming rights dating back to the original opening of the restaurant in 1934.  Apparently, as a back-up plan the City has registered the name Tavern in the Park with New York State. 

Based upon the limited facts available, it is very difficult to determine who has the better claim to ownership of the Tavern on the Green mark.  The creditors certainly hope the LeRoy family prevails but, if so, will the mark survive?  It will be interesting to watch. 

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There was a very interesting article in the New York Times this weekend worth reading - Best Soup Ever?  Suits Over Ads Now Seek Proof.

The article addresses several recent issues raised by companies against competitors over statements or claims being made in advertisements.  Specifically, companies are challenging the truth or implied truth in competitive ads in an attempt to get the ad withdrawn or changed.

Apparently, the number of complaints over advertisements with the National Advertising Division, as well as the number of false advertising lawsuits (under Section 43(a) of the Lanham Act) are up significantly.  Some interesting disputes from the article include:  

• AT&T sued Verizon Wireless over an ad chart, claiming it falsely implied that AT&T had no cell phone coverage in the white area (rather than no 3G coverage):

The lawsuit attacks use of the chart in several commercials.  One great example, is Verizon's Island of Misfit Toys commercial.  In this holiday commercial, out-of-date toys have been banished to an island where Verizon sends one of AT&T’s new phones, due to its allegedly inadequate coverage.  On a related note, the National Advertising Division recently recommended that Sprint discontinue its use of the claim "Most Dependable 3G Network" due to a lack of sufficient support for the claim. 

• Pantene attacked Dove’s claims that its conditioner repairs hair better.  According to the Times, Dove defended its claims with a market study and an expert to defend its use of “wet combing” versus “dry combing” technique.   Based upon a quick review of a few blogs, these two companies are in direct competition over solving the frizzies (for examples, see here and here). 

The Times article suggested defending such claims sometimes requires “delving into the minutiae” and raises the question of whether most consumers actually believe and/or rely on statements such as “no other dog food stacks up” or a hair care product that can really “repair hair better.”  Regardless, it is a great article for anyone interesting in marketing. 

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While browsing through a toy store recently, I noticed what appears to be a trend in branding this holiday season – reintroducing classic or “nostalgic” toys.   It is very hard for me to accept that the toys I played with as a child could be considered “nostalgic,” but upon first sight of the Chatter Phone™, my childhood was calling.  

The beauty of these toys is in their simplicity.  They require imagination; as a toy should, but often doesn’t today.  Another great thing is that the toys and packaging are identical to the originals.  This is interesting from a branding and trademark standpoint in that the product, product packaging and stylized trademarks have been modernized over the years, only to return to the original version.   Some great examples include:  

Fisher Price® Chatter Phone™ (with rotary dial): 

Snoop n Sniff™, first introduced in 1938 (please note – this one is well before my time):

The Classic Slinky® in a retro box:

The Classic Etch A Sketch®:

For some fun reading on other beloved brands and trademarks, check out the Brandland USA blog - “home of America’s best-loved legacy brands.”  

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While this is not highly branding-related, it is too good to not blog about. 

A few months ago, I wrote a blog titled No Genius Required wherein I avoided discussing the merits of the Baby Einstein DVDs, but merely mentioned the important role this type of DVD plays in allowing a new mom a few mintues to herself.  A few days ago, the New York Times ran an article, No Einstein in Your Crib? Get a Refund, which I found to be quite astonishing.  Apparently, if you purchased a Baby Einstein DVD and your child did not turn out to be a genius, you can get a full refund. 

According to the Times, the group Campaign for a Commercial-Free Childhood hired counsel and threatened a class-action lawsuit for unfair and deceptive practices unless Disney (owner of Baby Einstein) agreed to refund the full purchase price to anyone who bought a Baby Einstein DVD since 2004.  The group’s claim was that Baby Einstein’s marketing included express and implied claims that the DVDs are educational and beneficial.  Disney claims the emphasis of its marketing is on parent-child interaction and not education.  Regardless, if your child has not turned out to be the genius you were hoping for, at least you can get your $16 back.  Disney’s current offer is a refund $15.99 for up to four Baby Einstein DVDs per household, purchased between June 5, 2004 and September 5, 2009.  As for me, I figure I owe Disney at least that much for all of the showers I was able to take.  

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Last week, the Minneapolis/St. Paul Business Journal reported that Coach filed a complaint in New York against Minneapolis-based Target Corporation, alleging infringement of two of its handbag designs.  Coach claims Target’s new designs are too similar to two of its bags, including the Ergo and Signature Patchwork bags:

Target is not alone.  Coach also filed a lawsuit against Brown Shoe Co., Inc., parent company of Naturalizer, in June, 2009, accusing the company of copying the Ergo Pleated bag. 

Lookalikes have long been an issue in the fashion world.   While counterfeits are illegal, the rules are much less clear in the world of lookalikes and can come down to just how similar a design is to an "original."  What is clear is that designers and manufacturers in the fashion world are becoming more and more aggressive in protecting their designs.  A few more recent examples include:

Gucci filed suit against Guess earlier this year for trademark infringement for use of the “g” logo on handbags. 

Alexander McQueen recently accused Steve Madden Ltd. of trade dress infringement over a designer bootie. 

Deckers Outdoor Corp. (Ugg) filed a lawsuit against in California against numerous defendants alleging infringement of its Classic Cardy boot. 

Finally, the tables have turned in one recent lawsuit.  Louis Vuitton, known for avidly protecting its designs, has recently become familiar with the other side of case.  New Balance Athletic Shoe Inc. accused Louis Vuitton of trademark infringement, alleging Louis Vuitton copied one of its popular shoe designs.  

As noted on Stylelist, the New Balance sneaker (top) retails for around $75, while the Louis Vuitton sneaker will run you around $590 (bottom).  

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