November 2010

Because, we plan to be here a while longer . . . .

As DuetsBlog approaches the legal drinking age (whoops, I guess we’re only about 21 months old, not years, sorry), we’d like to pay special thanks to our guest bloggers, our loyal readers, our friends who spread the word through their tweets and in other ways, and especially

—Aaron Keller, Capsule

How do you feel when you’re being a bit indulgent? Guilty, perhaps. Sometimes it’s just something small, something you can enjoy without too much of an afterthought. The whipped cream atop your favorite coffee house (low fat) drink might be one of those treats. It is for me.

But recently I’ve noticed

Actually, not just the Seventh Circuit Court of Appeals (governing appeals from the federal district courts in Illinois, Indiana, and Wisconsin), but the Seventh Circuit is the most recent to reaffirm that our current legal system does, in fact, provide protection against real “trademark bullies” — and more generally — those who abuse

–Dan Kelly, Attorney

Gibson Guitar Corp. sued a number of companies last week, alleging infringement of its guitar body shapes.  The principal target of its ire appears to be WowWee Group Ltd., who makes a line of toy instruments called “Paper Jamz.”  These instruments are sold through numerous well-known retailers like Wal-Mart and Target, many of whom Gibson also sued.  (Suing retailers being a topic for a whole ‘nother discussion someday.)

Trademark geeks may recall the last installment in the getting-to-be long-running history of securing trademark rights in guitar body shapes, which was Fender Music’s effort to register the shapes of its Stratocaster, Telecaster, and Precision Bass instruments.  Numerous companies opposed those applications, and the Trademark Trial and Appeal Board sustained the oppositions (PDF here), because Fender could not prove distinctiveness–it had not policed the marketplace for similarly-shaped instruments very well at all and could not prove that the shapes of its guitar bodies distinguished them from other guitar makers (despite many competitors openly suggesting that their models were Fender look-alikes).

For that matter, one of Gibson’s previous suits also did not have a happy ending, when it sued Paul Reed Smith Guitars for infringement of the shape of its Les Paul guitar (Reg. No. 1,782,606).  The U.S. Sixth Circuit Court of Appeals ultimately decided that there was no infringement (PDF here).  Perhaps the Gibson v. WowWee case will succeed where previous efforts have not, if nothing else, on the “try, try again” theory.

Although others may disagree, I do think that rights in guitar configurations can eventually succeed.  In the area of product configurations, it is important to find the relevant consumers.  I whiled away many hours in my youth ogling electric guitars, and I had no trouble connecting the six guitars in the Paper Jamz lineup with their “real” counterparts.  Distinguishing product configurations is like bird watching.  To the uninitiated, birds are birds, cars are cars, and guitars are guitars.  Ask anyone who has some familiarity in each category, though, and you’ll quickly learn to distinguish a nuthatch from a finch, a Ford from a Chevy, and a Gibson from a Fender.  This isn’t to say that every product has a protectable configuration, just that almost everything is distinguishable if you pay close enough attention.

Now, for your holiday quiz.  Can you identify “genuine” guitars mimicked by the six Paper Jamz guitars pictured below?  Answers below the jump.

Continue Reading Get Your Paper Jamz Guitars While You Can

Monday, November 9, 2010 marked the release of yet another title in the often controversial “Call of Duty” video game franchise and, with that, the release of controversial advertising. Of particular note is the below commercial featuring Kobe Bryant and Jimmy Kimmel in a no-holds-barred shootout meant to illustrate the experience of on-line gameplay.

Not

–Susan Perera, Attorney

Last Wednesday I wrote about the parody fair use defense to trademark infringement in connection with the Facebook v. Lamebook lawsuits.  Since then another party has asserted the fair use defense, this time in regards to copyright infringement.

Last week the on-line news source, Gawker, published images of more than

David Mitchel, Norton Mitchel Marketing

In 1981, MTV’s first music video was The Buggles’ “Video Killed The Radio Star”. The title of that song could be adapted to ask a more modern question. Is the DVR killing television advertising? Also, can brands successfully use television advertising in the era of the DVR?

I strongly believe that the DVR is not the death knell for TV advertising. Some studies have shown minimal impact. Nevertheless, that is not an excuse to pretend we are living in 1981. Those using television to advertise must take technological advances into consideration when devising plans for using video to promote their brands.

The DVR is not an entirely new paradigm. Rather, it is the evolution of pre-existing concepts. People who want to avoid television commercials will avoid them with or without DVRs. Without a DVR, a person that avoids commercials can mute a program, go to the bathroom during commercial breaks, change the channel to another channel not in commercial, or prepare a meal or snack. Additionally, people have had the ability to record TV shows and watch them at their convenience since circa the late 1970s. A 2001 episode of “That 70s Show” pokes fun at the early TV recording technology. Minutes 4:29-5:38, 8:52-9:45, 16:15-17:35 contain dialogues about early TV recording. However, programming a VCR to record live TV was far more difficult for most people than the DVR. This has made the DVR a bigger force to be reckoned with.Continue Reading DVR Killed The Video Ad?

Would it surprise you to learn that not all trademark types are created equal? I didn’t think so. Like any profession, some of the professionals are better and more gifted than others. A few are much better. And, if bell curves have any application here, a few are much worse too.

In the inaugural post for DuetsBlog, last March, we introduced a type of trademark attorney known as "Dr. No," and we discussed how he or she likes to focus on the "Parade of Horribles" instead of creative solutions to difficult and important problems:

The underlying personal brand promise for this lawyer is to say “no,” early and often, believing an enormous hourly rate is still justified by citing a multitude of technical and valid legal reasons in support of the unhelpful answer. He is obsessed with saluting to the Parade of Horribles.  He is typically part of the problem, not the solution.  Perhaps repeated frustration with this kind of Dr. No is what motivated one cartoonist to brand (uh, jab) the “trademark attorney” as “the most basic figure," at least in the world of Art.

Avoiding the "Dr. No" moniker and mindset should not be the only goal of trademark types. There is clearly room for improvement in our profession in other areas too.

Gather ’round, it’s time to meet J.D. Waffler.Continue Reading J.D. Waffler: The Art of Taking a Position

Beneath the large umbrella of the law known as Intellectual Property (or simply, IP), one of the badges of superiority that trademark lawyers are able to brag up to their patent and copyright colleagues is that trademark rights are capable of lasting forever — there are no term limits — so, the underlying legal rights can be truly timeless, provided, of course, they continue to be