Collaborations in Creativity & the Law

The Supreme Court Tackles Disparaging Trademarks

Posted in Copyrights, First Amendment, Infringement, Law Suits, Trademarks, USPTO

From my title, you may think I am referring to the battle over the REDSKINS trademark.  However, the In re Tam case beat the REDSKINS team to the high court.  The case involving the REDSKINS mark is currently on hold until the United States Supreme Court decides the In re Tam case.  These cases have been the topic of prior blog posts.  For example, http://www.duetsblog.com/2016/10/articles/articles/supreme-court-benches-dan-snyders-team/ and http://www.duetsblog.com/2016/07/articles/trademarks/no-budding-in-line-washington-redskins/ and http://www.duetsblog.com/2015/12/articles/trademarks/will-uspto-director-michelle-lees-signature-adorn-a-slants-certificate-of-registration/

The Supreme Court heard argument regarding the In re Tam case last month regarding whether the United States Patent and Trademark Office (USPTO) could refuse to register THE SLANTS as a trademark.

The Government explained that the Lanham Act prohibits the registration of any mark that may disparage persons, institutions, beliefs or national symbols.  A denial of registration does not limit the ability to use the mark in commerce or otherwise to engage in expression or debate topics.  According to the Government, the Lanham Act’s disparagement provision places a reasonable limit on access to a government program rather than a restriction on free speech that would violate the First Amendment.

The Supreme Court Justices actively questioned both the Government’s attorney and Mr. Tam’s attorney.  Justice Kennedy raised the issue of copyright protection and that refusing to copyright protect disparaging work would pose a significant First Amendment issue.  However, there are limits such as not being able to copyright new words or short phrases. Justice Ginsburg, however, distinguished the copyright act because you cannot sue for copyright infringement unless registered.  There is no such restriction on trademark infringement.

Justice Breyer explained that the ultimate purpose of a trademark is to identify the source of the product so it is making a statement.  The disparagement provision of the Lanham Act says you can say something nice but not bad about a minority group.

The Government argued that trademarks tell the public from whom the goods or services emanate, but this is not expressive in its own right.  Trademarks have a dual purpose of identifying source and as a miniature advertisement.  Congress should be able to discourage negative advertising by not registering a trademark such as “Coke Stinks.”

Justice Kagan explained that Government programs cannot make distinctions based on viewpoint. She then asked the Government’s attorney isn’t that what the Lanham Act’s non-disparagement provision is doing?  The Government pointed out the restriction was only for the government program of registration.  The Government argued that the restriction on disparagement was reasonable because the Government is publishing the mark.   Mr. Tam could still use THE SLANTS trademark in commerce and have common law rights in the trademark.

Justice Kagan raised the issue of whether a trademark registration was Government speech itself.  The Government publishes the registration on its Web site and sends the trademark registrations to other countries.

Mr. Tam’s attorney disagreed with the Government arguing that the Lanham Act’s provision prohibiting disparagement (and scandalous marks) was unconstitutional under the First Amendment.  Tam’s attorney argued that trademarks constitute both commercial (e.g. the band’s name) and non-commercial (e.g., Proud Asians) speech.

Justice Sotomayor asked Mr. Tam’s attorney isn’t it true that he was asking the Government to endorse his trademark or name in a way that it chooses not to?  The speech is not being burdened, because the mark can still be used and he can still sue others.  Other laws restrict commercial speech such as product disparagement.   Libel and slander laws also restrict speech.  Further, there are restrictions on speech carried over airwaves.

Tam’s attorney conceded that other content distinctions in the Lanham Act such as prohibition against registering marks that are falsely suggestive of a connection that is likely to cause confusion, descriptive, mis-descriptive, functional, a geographical indication of wine or spirits, etc. would survive his First Amendment challenge.  Justice Kagan explained that this then meant that the registration of trademarks was not the same as restricting speech in a public park where free speech could not be so restricted.

In rebuttal, the Government argued that its registration program provides certain benefits that the Government does not have to provide.  Denial of registration only affects the commercial aspect of the trademark by limiting remedies for infringement.   The program does not regulate the non-commercial component, namely use of the trademark.

Trying to read the tea leaves, I am thinking the Supreme Court may liken this speech (e.g., trademark registration) at issue to the speech of Texas license plates at issue in the case (Walker v. Texas Div., Sons of Confederate Veterans, Inc., No. 14-144, 2015 WL 2473375 (U.S. June 18, 2015)) mentioned by Judge Ginsburg during oral argument.  If the Court decides to do so, this could result in a ruling that the Government can place a reasonable restriction on its program.  An owner can use the disparaging trademarks and sue infringers even without registration with the Government.

How do you think this will come out?

A Tipping Point For Super Bowl Advertisements?

Posted in Advertising, Almost Advice, Branding, Guest Bloggers, Look-For Ads, Marketing, Mixed Bag of Nuts, Product Packaging, Social Media, Television

-Mark Prus, Principal, NameFlash Name Development

I was largely unimpressed with the crop of Super Bowl ads this year. It seemed to me that advertisers have chased “form over function” and have forgotten that when you spend $5 million for a 30-second ad you should probably sell some product to offset that cost. There were few ads that actually tried to communicate in a strategic way and present a compelling selling message for their brand.

Why have Super Bowl advertisers stopped selling their products?

Here is a prime example of how far we’ve fallen in just a year. Last year Christopher Walken used his unique communication style to decisively deliver the selling message of “don’t be beige, be bold” in a Kia commercial. This was a “Top 10” ad from Super Bowl 2016. Check it out.

This year Christopher Walken again appeared in a Super Bowl ad, and again used his unique delivery style but this time he was reciting song lyrics in an ad for Bai. Many polls have indicated that this was the “Best Super Bowl Ad of 2017.” Check it out here.

The difference is amazing. Walken stayed in character in both ads. However, last year the message was a strategically focused argument for the new Kia Optima. This year the Bai ad reeked of borrowed interest and delivered absolutely no selling message for the brand. OK, there was that tagline that was on the screen for 5 seconds at the end that said “5 Calories, No Artificial Sweeteners, and Tastes Amazing” but that tagline has no relevance to the rest of the ad so it was clearly a band aid that was inserted to appease the Brand Manager.

The makers of Bai were no doubt hoping that using Christopher Walken and Justin Timberlake in an ad would break through the Super Bowl clutter. Alas, they were seduced by the cleverness of their brand name in relation to the “Bye, Bye, Bye” lyrics. What does the NSync song from 2000 have to do with an antioxidant beverage? The only possible outcome that would benefit the brand would be name recognition, which could be important if people do not know how to pronounce Bai.  But in the end, I suspect they were using borrowed interest because they apparently have nothing to say about why I should choose their brand.

I know some Super Bowl ads were making political statements or “feel good” messages to bolster corporate identity. But seriously, if you spend $5 million for a 30-second ad, shouldn’t you attempt to sell something? You can use other tools in the marketing toolbox to bolster your corporate image.

Here is an example. In 2002, Scripps Networks (the company behind HGTV and the Food Network) wanted to announce their newest media property Fine Living. They could have blown their budget on a Super Bowl ad but instead they created a PR event by building a tropical island in New York City’s Hudson River. The island was complete with sand, palm trees, a thatched-roof hut, hammock and hot tub. They towed the island in place at night for the big reveal on Columbus Day. One lucky couple (and their dog) got to enjoy the island for a few days. They romped in the sand, relaxed in the hot tub, and enjoyed the good life…Fine Living indeed! This event cost $300,000 to arrange and generated over $30 million in media exposure, or 100x the original investment.

Can the advertisers in this year’s Super Bowl claim that they got a 100x return on their investment (doing the math: $5 million for a 30-second ad means they would have to get a $500 million payback)? I doubt it.

What do you think? Have we reached a tipping point in terms of Super Bowl advertising? Should we stop calling them ads? Maybe “public service announcements” would be more appropriate!

Let the Games Begin

Posted in Copyrights, Infringement, Law Suits, Technology, Trademarks

Many of you interested in the video game and media industry have undoubtedly heard that Oculus recently lost a jury trial to Zenimax which resulted in a $500 million jury verdict.  However, what many (or at least some) of you don’t know is that a jury trial really is only a first step in the world of high stakes civil litigation.  Here’s what’s going to happen next.

1.  Additional fencing in the district court

While its not the same in every case, a jury verdict is usually recorded in something called the Court’s Charge to the Jury, or a Verdict Form.  In this case, for example, the jury returned its verdict in a “Charge to the Jury” form which included a series of instructions from the Court about the law, and some questions which were then filled out by the jury.  A copy of the 90 page form with the handwritten jury responses is here for those who are interested in seeing what it looks like.  Now that the jury has returned the verdict, the parties will likely end up filing a variety of “post-trial motions” which will argue about things like whether the evidence presented at trial actually supports the jury’s verdict, and whether the court should have let in or excluded particular evidence over the course of the trial.  Oculus may even claim it is entitled to a new trial.  Not until after all of these issues are resolved will there be an actual judgment for the $500 million which Zenimax can try to collect on.

2.  The likely appeal

Even after the district court enters its judgment, the parties will still have the right to appeal to the United States Court of Appeals for the Fifth Circuit.  The arguments that will be made here will very likely be similar to arguments made in the post-trial phase before the district court (i.e. the evidence didn’t support the verdict, there were improper decisions made about which evidence the jury could see and hear, or the court instructed the jury improperly on the law).  Depending on how the appellate court views the matter, possible outcomes include a new trial or an alteration to the damages amount.  If the parties are unhappy with the Fifth Circuit’s decision, they can ask the United States Supreme Court to review it, although it would be very unlikely that the Supreme Court would take the case.

3.  The post-trial  posturing

Even after a trial, there are still likely to be discussions between the parties about how to resolve the matter without further litigation.  Each party is also likely considering various legal and strategic options to improve its position in the marketplace.  By way of example, Zenimax has stated it intends to seek an injunction which, in this case, would be a Court order prohibiting the sale of Oculus headsets.  Zenimax could theoretically seek a “permanent” injunction, which would bar sale of the headsets for a substantial period of time, or it could at least seek an injunction pending the resolution of any appeals.  Depending on Zenimax’s success with this motion, it could substantially damage Oculus’s business.  This might lead Oculus to pay the $500 million judgment (and more) to get the matter resolved immediately.  It might also damage Oculus to the point that it has no reasonable alternative but to sell its business to Zenimax.  Interestingly, one of the defense arguments during the trial was that Zenimax brought the lawsuit because it was embarrassed about its prior decision to pass on an opportunity to acquire Oculus.  With an injunction hanging over Oculus’s head, Zenimax could realistically get a second chance to acquire Oculus at a very reasonable price.

As we often say in the legal profession, litigation is a process not an event.  This case is a perfect example of that cliché playing out.  Now that the trial has concluded, the real fun is about to begin.

NASCAR Brand Gasoline at a Pump Near You?

Posted in Advertising, Articles, Branding, Contracts, Marketing, Non-Traditional Trademarks, Sight, Smell, Taste, Trademarks, USPTO

With the Strafford Publications webinar later today discussing the Lanham Trademark Act’s “Use in Commerce” requirement, with some of my favorite panelists no less, the topic has been on my mind, even when pumping gas into my rental car in Houston, Texas, this past weekend:


So, what do folks think, does this photograph of a gasoline pump constitute “use in commerce” of the NASCAR trademark and brand in connection with gasoline, classified in Int’l Class 4?

NASCAR has all sorts of stuff that can be purchased online with it’s brand name and trademark on it, but to serve a trademark function (identify, distinguish, and indicate the source of gasoline), and to demonstrate proper use in commerce of a word mark (as opposed to non-traditional subject matter like colors and scents — we’ll pass on the possibility of taste for this one though), applying the mark directly on the goods isn’t possible given the liquid state.

NASCAR also has an impressive trademark licensing program and more than a semi truckload of federal trademark and service mark registrations to protect its licensed brand, but interestingly, none presently covering Int’l Class 4 or gasoline.

It appears the closest NASCAR has come to protecting gasoline in Int’l Class 4 is through this expired NASCAR registration for motor oil and automotive greases in Int’l Class 4.

Yet, I’m thinking TMEP 904.03(c) contemplates the issue and fully supports using the above photo as an appropriate specimen to demonstrate use in commerce of the NASCAR mark for gasoline, by showing the mark directly on the containers or packaging for the goods: “gasoline pumps are normal containers or ‘packaging’ for gasoline.

Why do you suppose NASCAR hasn’t taken this step (yet)?

Your Favorite App-Based Ride Service?

Posted in Advertising, Articles, Branding, Loss of Rights, Marketing, Technology, Trademarks, USPTO

Before you answer the question posed in the title of this post, your initial question might be: What is an App-Based Ride Service?

The Minneapolis St. Paul International Airport is using a handy sign directing passengers on where to go to access their favorite one, does that help?


I’m thinking the designated area in the airport is where passengers can hail Uber or some alternative brand to Uber, as opposed to a traditional taxi and/or cab, right?

As you know, we love to write about signs, and the one above sparked a thought and reminder about the importance of a frequent topic on this blog: Brand owners launching a new category of product or service do well to design a simple generic category name too.

Remember how it took Rollerblade an entire decade to come up with “in-line skates”?  Before that, the generic name it adopted at the USPTO was “boots equipped with longitudinally aligned rollers used for skating and skiing,” leading to a multitude of generic Rollerblading misuses.

We covered this topic in the fitness tracker category too, so let’s not forget the insights we covered in: A Missed Step in Branding Fitness Trackers?

Why the concern about having a bite size consumer-friendly generic category name? Besides risking a loss of rights, taking this step can help avoid appearing on our Genericide Watch list.

So, back to App-Based Ride Services, what say our marketing types, does this name appearing on the sign accurately, efficiently, and generically name the category created by Uber?

Initial Interest Confusion: Initially Interesting, Ultimately Harmless?

Posted in Advertising, Civil Procedure, Infringement, Squirrelly Thoughts

In the market for sunglasses, I recently went to Amazon.com and searched for “Holbrook sunglasses.” HOLBROOK is, of course, a trademark of Oakley, Inc. – but I had no intention of purchasing Oakleys. Instead, I wanted a far cheaper pair of sunglasses based on that style, so I could more easily justify inevitably losing them. Was I a victim of self-inflicted “initial interest confusion”?

Initial interest confusion is a theoretical “subset” of trademark infringement, whereby infringement can occur “where a plaintiff can demonstrate that a consumer was confused by a defendant’s conduct at the time of interest in a product or service, even if that initial confusion is corrected by the time of purchase.” In other words, under an IIC theory, a plaintiff could sustain a lawsuit based on source or affiliation confusion, even if that confusion was not the basis for the consumer’s ultimate decision to purchase the product.Screen Shot 2017-01-27 at 7.59.28 AM

At yesterday’s INTA Roundtable here at Winthrop, my colleagues and fellow practitioners discussed Multi Time Machine, Inc. v. Amazon.com, Inc. and Amazon Services LLC, 804 F.3d 930 (9th Cir. 2015), a case holding that Amazon is not liable for trademark infringement resulting from its search results – and rebuking an “initial interest confusion” theory.

Multi Time Machine, Inc., a maker of high-end watches, brought a trademark infringement action against Amazon.com, alleging that Amazon infringed its trademark because a search for “mtm special ops” on Amazon’s website returns search results for alternative products, including other watches. Multi Time Machine does not actually sell its own watches on Amazon.com, so only competitors’ products would be listed.

MTM argued that because a search for MTM Special Ops watches on Amazon displays watches manufactured by MTM’s competitors and does not inform the consumer that Amazon does not carry MTM watches, there is a likelihood of “initial interest confusion.” Namely, MTM argued that a consumer may be confused into thinking that a relationship exists between MTM and one of its competitors, as displayed in the Amazon search. Because of this initial confusion, MTM asserted, the consumer may choose to buy the competitor watch instead of continuing to seek out an MTM watch.

In a 2-1 majority decision, the panel affirmed the district court’s summary judgment in favor of Amazon, holding that Amazon’s search results page does not create a likelihood of confusion by displaying other brands’ watches.

INTA, for its part, recommends that courts adopt initial interest confusion as an actionable theory:

INTA recommends that courts recognize that the initial interest confusion doctrine is not separate from a likelihood of confusion analysis. It is simply a timing question as to when confusion occurs, which recognizes confusion that is dispelled before an actual sale occurs may be actionable. Courts should consider initial interest confusion claims, whether in brick and mortar cases or Internet cases, under traditional likelihood of confusion tests and should consider each element of such tests, as well as related defenses, based on the facts of each case.

Personally, I’m a bit skeptical of this particular theory of liability, and I’m certainly not alone in the trademark blog world. And perhaps the Ninth Circuit’s ruling is a step towards minimizing the scope of initial-interest liability.

Fictional restaurant wins trademark battle: The Krusty Krab

Posted in Infringement, Mixed Bag of Nuts, Squirrelly Thoughts, Television, Trademarks, USPTO

Who lives in a pineapple under the sea?

If you know the answer to that theme-song question, you’ve probably seen, or at least heard of, the popular cartoon SpongeBob SquarePants. It is one of the highest-rated and most-watched animated series to air on television. Many of us, myself included, grew up watching it on Nickelodeon since the early 2000s (or watched our kids watch it) (or still watch it as adults).

For those of you who are less familiar, the series revolves around SpongeBob, a yellow sea sponge, who lives in a pineapple and works as a fry cook at the Krusty Krab, in the underwater city of Bikini Bottom. The series follows the adventures of SpongeBob and his various friends and co-workers, including Patrick, a friendly starfish who lives under a rock, Squidward Tentacles, SpongeBob’s ill-tempered neighbor, and Sandy Cheeks, a squirrel from Texas. Another frequent character is Mr. Krabs, the penny-pinching crustacean and owner of the Krusty Krab.

Krusty Krab & Patrick

The Krusty Krab restaurant, famous in Bikini Bottom for its Krabby Patty burgers, recently became embroiled in a trademark dispute.


A couple years ago, a real-life, above-water company IJR Capital Investments filed an intent-to-use trademark application (Serial No. 86470477) for the mark THE KRUSTY KRAB for “restaurant services.” Viacom (the distributor of the show and parent company to Nickelodeon) objected through a cease-and-desist letter to IJR, asking it to withdraw its trademark application and change the name of its restaurant. IJR persisted with its application and its plans to open a restaurant under that name. Eventually, Viacom filed a complaint in federal court (the Southern District of Texas), alleging various claims including trademark infringement and dilution. Viacom moved for summary judgment, which the court recently granted in part. The court granted SJ in favor of Viacom for trademark infringement, but not dilution.

Although Viacom had no federal trademark registration or application for “The Krusty Krab,” the court explained it was protectable as a common-law trademark owned by Viacom, in part because Viacom had presented sufficient evidence of acquired distinctiveness. The court also explained that trademark protection may extend to ingredients of popular television shows that the public directly associates with the plaintiff or its products, such as characters or design elements. For example, the court cited cases holding that common law trademark protection applied to the words “Kryptonite,” (a fictional radioactive compound in the Superman series) and the “Daily Planet” (a fictional newspaper where Superman works), because they were a “staple of the Superman character and story” and “regularly appeared on licensed consumer merchandise over the years.”  Order at 6 (citing DC Comics v. Kryptonite Corp., 336 F. Supp. 2d 324 (S.D.N.Y. 2004); DC Comics v. Powers, 465 F. Supp. 843 (S.D.N.Y. 1978)).

As for likelihood of confusion, the court focused on the strength of Viacom’s mark, the identity of the marks with the same misspellings, and the similarity of the restaurant settings. The court was also persuaded by a consumer survey, showing that 30% of respondents believed that Viacom would operate, approve, or be affiliated with a “Krusty Krab” restaurant. (As a related example, the court also referred to the Bubba Gump Shrimp Company, a worldwide restaurant chain inspired by the 1994 film Forrest Gump, and licensed by Viacom’s subsidiary Paramount Pictures.) In addition, there was evidence that IJR was aware of Viacom’s mark prior to filing the trademark application.

Aside from its legal analysis, the court also sprinkled in some hilarious but decidedly on-point footnotes with SpongeBob quotes. For example, to illustrate the court’s point that trademark rights arise from use, and do not require a trademark registration, the court quoted SpongeBob:  “You don’t need a license to drive a sandwich.” The court also predicted that SpongeBob’s reaction to Viacom’s lack of briefing on certain claims would be: “Aw, tartar sauce!”

This is an interesting case study in trademark protection for fictional story elements in the entertainment field, which will likely be followed closely by those in the industry. And this case is not over yet–IJR’s owner Javier Ramos has vowed to appeal–and if that doesn’t work, Ramos says he’d consider changing the restaurant name to the Crusty Crab. Reading the sea leaves here, based on the decision, it’s unlikely that either Viacom or a court would be satisfied with a minor spelling change. Stay tuned for updates.


Song Titles and Trademarks: The Eagle(s) Have Landed

Posted in First Amendment, Goodwill, Infringement, TTAB

Regardless of whether you’re a fan of “classic rock,” there are some songs that everybody knows. The song Hotel California by the Eagles is one of those songs.  Not everyone likes the Eagles (looking at you, Dude), but most people at least like Hotel California. So it’s no surprise that the Eagles want to prevent others from trying to make money off the name. Most recently, the band filed an opposition with the Trademark Trial and Appeal Board to oppose an application to register the mark HOTEL CALIFORNIA (the pleading is available here).

Eagles Album Cover


The application is owned by Hotel California Baja LLC (HCB), who apparently operates a hotel south of the border in the town of Todos Santos in Baja California, Mexico. Notably, HCB’s application does not seek registration in connection with “hotel services.” Instead, HCB appears to be seeking registration of its name to sell a wide variety of merchandise in the U.S., including cosmetics, body care products, eyewear, phone accessories, jewelry, and other products. Although the Eagles do not allege that they own any trademark registrations for the HOTEL CALIFORNIA mark, the band claims common law rights in connection with licensed goods such as clothing, guitar picks, posters, and others back to 1977. Along with the Notice of Opposition, the band filed an application to register the mark on Jan. 18, 2017.

But do the Eagles have trademark rights in the song name? We’ve broached the subject briefly before (here). Generally speaking, use of a word or phrase as a song, album, or movie title does not create trademark rights in that name because consumers aren’t likely to view such use as designating the source of the goods. Instead, consumers are likely to view the use simply as a title of a creative work, or some other expressive content. The issue is similar to merely ornamental refusals, where a name or phrase is used on a shirt, coffee mug, etc. as a design element or as informational phrase (like my BEST BLOGGER EVER mug, or a FEAR THE BROW t-shirt). However, it is possible through licensing the name and/or using the name on other products or services that the mark can come to signify a secondary source. Based on the pleadings, it appears that the Eagles may have a reasonable claim that the HOTEL CALIFORNIA mark, when used on licensed products, serves as a source identifier.

Even then, it’s possible the Eagles could claim that the mark falsely suggests an association with the band. HCB’s website includes the following information as part of its “history”:

During the 1960s and 1970s, the precise details of the hotel’s history are a bit “hazy” – not uncommon for the culture of that particular era in general… There are numerous stories. Whether fact or myth, nobody knows for sure. However, one rumor, fabricated in the 1990’s by someone with no connection to any owners of the hotel, states that the Eagles once owned it. This is unequivocally false. Many of the other legends are less black and white and continue to fascinate the public. Although the present owners of the hotel do not have any affiliation with the Eagles, nor do they promote any association, many visitors are mesmerized by the “coincidences” between the lyrics of the hit song and the physicality of the hotel and its surroundings.

  1. Hotel California is accessed by driving down a long desert highway from either Los Cabos to the south or La Paz to the east
  2. The Mission Church of Pilar is located directly adjacent to the hotel and mission bells are heard daily. Since the Church is so close it sounds like they are almost inside the hotel at times
  3. Countless stories and firsthand witnesses relating to spirits and ghosts in the courtyard of the hotel.
  4. During the ‘Hippie Era” of the 1960s and 1970s, people were know to easily grow their own marijuana in the extremely fertile land of the Todos Santos area and then roll them into “Colitas” which is a Mexican slang term for ‘Joint” or Marijuana cigarette
  5. The simple fact that the Hotel California in Todos Santos was built in 1947 which was of course far before the “Hippie” or “Classic Rock” eras

It certainly seems like the hotel is trying to suggest an association with the band and the song. Accordingly to the Eagles (via Wikipedia), there is no “Hotel California,” as the hotel was more symbolic of Hollywood and L.A. generally. If the Board were to find that the use of the HOTEL CALIFORNIA does create a false association with the band, then the disclaimer is not likely to help. Even if HCB claims that the rumor was started by “someone with no connection to any owners of the hotel.”

HCB’s website does not clarify whether guests are allowed to “check out” or, more importantly, “leave.” Luckily for the applicant though, the Trademark Office does allow them to voluntarily abandon the application.

What’s a Peppadew?

Posted in Advertising, Articles, Branding, Food, Genericide, Loss of Rights, Marketing, Trademarks, USPTO

We recently checked out a new restaurant in Minneapolis’ growing North Loop area, called Red Rabbit, what a great spot:



The menu cleverly refers to the salad options as “Rabbit Food” — and the Italian Chopped salad spoke to me, but one of the listed “ingredients” left me wondering “what’s a peppadew”?


Not wanting to be too surprised before committing, as I was only somewhat prepared to compromise on the inclusion of “artichoke,” I took matters into my own hands.

And, believe me, at the moment, I wasn’t looking for a trademark story, but there is was, staring back at me on my iPhone.

In fact, Google said Wikipedia knows that “Peppadew is the trademarked brand name of sweet piquanté peppers (a cultivar of Capsicum baccatum) grown in the Limpopo province of South Africa.” With peppers, I’m all in (should help mask the artichoke), so I committed.

But, back to the trademark story, turns out, the USPTO agreed with Wikipedia (despite the lower case lettering on the menu), Peppadew is a federally-registered brand name for “preserved, dried and cooked fruits and vegetables,” not some generic type of food ingredient:


Yet, if the South African brand owner wants to keep it that way, and avoid complete loss of trademark rights through genericide, it really ought to educate and police restaurants on proper trademark use.

Or, maybe it is already doing so (Panera is reportedly on board), so perhaps Red Rabbit just hasn’t seen the memo yet, or maybe it’s being delivered by a tortoise, not a hare?

At any rate of speed, this kind of genericness evidence can be harmful to a trademark owner, so how hard should a restaurant work to get the trademark facts right in their menus?

Oh, and in case you’re wondering, the salad was truly amazing (despite the artichoke), and I’m sure the Peppadew brand peppers made all the difference.

Boldly Going Where no Fanfic has Gone Before

Posted in Mixed Bag of Nuts

Fanfiction refers to the art of creating fiction using another author’s characters or universe.  I was first introduced to the concept in high school, when a friend began writing Harry Potter fanfiction.  (Side note: this is not one of those situations where the “friend” is actually me.)  My friend used the same well-known characters—Harry, Hermione, Ron, etc.—and details of the world created by J.K. Rowling, including Hogwarts, muggles, the Ministry of Magic, and Diagon Alley, to create an otherwise original plot.

Fanfiction is typically shared among fellow enthusiasts, and rarely results in publication, movie deals, or notable profits.  For this reason, intellectual property rights are often not enforced against fanfiction creators, which has led many to mistakenly believe that fanfiction is a categorically protected use.

While IP rights holders typically tolerate—and even encourage—fanfiction, one recent fan-sourced plotline caught the attention of CBS and Paramount.  In 2014, Axanar Productions launched a crowdfunding campaign to produce a “feature-quality Star Trek film,” entitled “Axanar.”  The campaign raised over $1 million through combined Kickstarter and Indiegogo campaigns.  To promote the campaign, Axanar Productions released a 20-minute preview entitled “Prelude to Axanar.”  And it’s awesome.

Whether it was the impressive production value, the appearance of actor Richard Hatch from Battlestar Galactica, or the overwhelmingly successful crowdfunding campaign, Axanar Productions caught the attention of the makers of Star Trek.

In late 2015, CBS and Paramount sued Axanar Productions for copyright infringement.  The amended complaint, summarized here by Ars Technica, alleges 57 instances of copyright infringement divided into categories, including characters, races, costumes, settings, logos, plot points, dialogue, and theme.  It’s pretty clear that both the Prelude to Axanar, and the planned Axanar film, are intentionally based on the Star Trek universe and incorporate at least some copyrightable Star Trek elements.

Axanar takes place 20 years prior to the start of the Star Trek Original Series (i.e., the William Shatner series).  At least one episode of the Original Series includes characters discussing the “Battle of Axanar,” in which Garth of Izar was a heroic victor.  According to the Kickstarter campaign, “Axanar tells the story of Garth and his crew during the Four Years War, the war with the Klingon Empire that almost tore the Federation apart.  Garth’s victory at Axanar solidified the Federation and allowed it to become the entity we know in Kirk’s time.”  The preview, Prelude to Axanar, is a documentary-style telling of the Axanar battle by the characters themselves, including Garth of Izar.

Axanar Productions appears to be relying primarily on a defense of fair use.  The fair use defense considers four factors in determining whether a work that technically infringes a copyright is excused nonetheless.  The factors include: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the copyrighted work used; and (4) the effect of the use on the potential market for the copyrighted work.  Some recognized forms of fair use are parody, criticism, and journalism.  While perhaps not a parody or criticism, fanfiction does seem potentially defensible under fair use, due at least to the transformative nature of the work.  That is, Axanar Productions does not seek to supplant the existing Star Trek films, books or television series, but rather to create an entirely new work with their own creative process.

A California federal district court disagreed with Axanar Productions’s fair use defense.  Ruling on motions for summary judgment earlier this month, a federal judge concluded that Axanar and Prelude to Axanar are not protected under fair use.  The court found all factors of the fair use analysis weighed in favor of CBS and Paramount.  Regarding the effect on the plaintiffs’ market, the court held that the Axanar films take the place of stories that the plaintiffs might want to create in the future or might want to license.  As David Post Points out in the Volokh Conspiracy, this results in somewhat circular reasoning—albeit reasoning supported by precedent.  Because others would be willing to pay a licensing fee to make these works, they’re not fair use.  But suggesting that others would be willing to pay a licensing fee presumes that the works are not fair use to begin with.  The case is set to begin trial on January 31st to decide the issues of “substantial similarity” between the works and willful infringement.

What do you think? Is fanfiction permissible fair use?  Should it be?  Is this another situation where a culture of information sharing and technology is at odds with antiquated IP laws?  (See Napster.)  Does it depend on profit?  (Axanar Productions maintains that it is a nonprofit organization.)  Does it depend on the funding and/or sophistication of the infringer?  And in that vein, who qualifies as a “fan?”  If Disney were to create Axanar, would that be fair use?

Notably, CBS and Paramount recently released some “Fan Films” guidelines, promising not to enforce their IP if their very specific guidelines are followed.