Congratulations to Stanford University’s Women’s Volleyball Team, winning the NCAA DI National Championship this past weekend in Minneapolis’ Target Center, defeating Nebraska in Set 5:

The competition was incredible, a real seesaw battle, Stanford winning Set 1 (28-26), Nebraska Set 2 (25-22), Stanford Set 3 (25-16), Nebraska Set 4 (25-15), setting up the Set 5 tiebreaker.

Even from our elevated vantage point, it was a challenge to ignore Stanford’s wild band, erratic cheerleaders, and bizarre dancing tree, during the many breaks in the action.

The Stanford Tree, not in the University’s official logo and seal, instead the spastic and gyrating Tree mascot, is simply “a member of the band” — as the University has no “official” mascot.

 

As the Sets progressed, an interesting pattern emerged, but not related to the random, spontaneous, and irrreverent motions and defiant gestures of the merry band of cheerleaders and Tree mascot. Any choreography appeared impossible to script.

No, the pattern I noticed was that each of the first 4 Sets was won by the team that had its back to the band, in other words, turned 180 degrees away from the Stanford Tree.

 

 

In contrast, the losers through Set 4, always faced the Tree, in defeat, coincidence, I think not.

The teams switched sides at the close of each Set. During Set 5, with its back to the Tree, Stanford was up 8-7 at the half, then switched sides again to face the Tree, but somehow was able prevail, in the end, while facing the Tree, winning the 5th and final Set: 15-12.

So, with all this turning away from the Tree mascot, positioning the team to win a National Championship on the one hand, and disavowing the Tree mascot on the other hand, specifically rejecting it as not the University’s mascot, I’m left wondering, who owns it?

In other words, clearly there is intellectual property wrapped up in the Tree mascot costume, I’m seeing both trademark and copyright at work here, but really, who owns it?

Put yet another way, who should Reese’s call for a co-branding opportunity to have the Tree mascot appear on packaging for these little gems, or perhaps, the gems themselves?

Can the University automatically own the intellectual property in an “unofficial” mascot? What are the legal distinctions, if any, between official and unofficial mascots?

For what it’s worth, disavowing the Tree, and its unofficial status, apparently hasn’t prevented the University’s payment of NCAA fines against Stanford when the Tree is especially unruly.

At Stanford, it appears that the student selected by the band to perform as the Tree for the academic year, wears the costume created by his or her predecessor from the previous year.

As to copyright, do you suppose there is a work for hire arrangement in place? So, who would you call to license the IP associated with the Tree? Here is a list of the apparent creators.

Aren’t digital advertising billboards amazing? My iPhone captured this rolling series of images just yesterday, for a health care organization using the Google trademark in the Minneapolis skyway:

My questions, permission, co-branding, no permission, but classic or nominative fair use?

Is Google flattered? Free advertising? Do they care? Should they care?

Discuss, to quote John Welch, on another subject.

Carvanaonline car dealer and operator of “a higher state of car buying” — sports a halo in its non-verbal logo shown above, but is it an angel when using the Google name and logo in t.v. ads?

In other words, is the use licensed by Google or could it be defended successfully without permission as trademark nominative fair use? Dear readers, what do you think?

In the meantime, a good friend Steve Feingold (who wears a halo well), will be delivering a Strafford webinar next month on Co-branding — maybe we can ask him to weigh in on this topic?

In an age of rising healthcare costs, pharmaceutical companies can be an easy target in calls for patent reform.  Patent protection helps drug manufacturers recoup their investment in developing the new drug,.  It also prevents generic manufacturers from releasing the same drug formulation at lower cost.  The Hatch-Waxman Act provides a pathway for generic manufacturers to challenge branded drug patents, but this type of challenge requires costly litigation.

 

Inter Partes Review

Enter the Inter Partes Review.  An Inter Partes Review (IPR) is a procedure before the Patent Trial and Appeal Board (PTAB) for challenging the validity of a patent.  IPR proceedings provide an expedited and cost-effective alternative to litigation.  The IPR process was introduced in 2012, and since then, hundreds of patents have been invalidated using this process.  In the pharmaceutical industry, IPRs provide generic drug manufacturers with an additional or alternative path to challenge branded drug patents.

 

The Allergan Case

In 2016 and 2017, generic drug manufacturers filed IPR petitions seeking to invalidate patents owned by drug maker Allergan on its branded prescription eye drops, Restasis.  In response, and less than a week before a scheduled hearing before the PTAB, Allergan transferred its patents to the Saint Regis Mohawk Tribe.  Like states, Native American tribes have sovereign immunity, and therefore are not subject to private lawsuits.  The idea of sovereign immunity is codified in a Constitutional Amendment, and it stems from the basic notion that you cannot sue a monarch.

The Allergan-Tribe agreement provides for an initial payment of $13.25 million, plus an annual royalty of $15 million paid to the Tribe.  In exchange, the Tribe agreed to exclusively license the patent rights back to Allergan.

Shortly after the agreement was finalized, the Tribe moved to terminate the IPR proceedings on the basis of its sovereign immunity.

There are many opinions about both the legal and moral implications of this agreement, with some calling it a sham transaction.  In a highly unusual move, the PTAB authorized interested third parties to file amicus curiae briefs.  A total of 15 briefs from outside parties were filed, including some from other Native American Tribes.  Seven briefs were filed in support of the Tribe’s (and Allergan’s) sovereign immunity argument, while eight argued against it.  Briefs siding with the Tribe cited prior PTAB decisions recognizing sovereign immunity for states, and dismissing IPR proceedings initiated against state universities.  Briefs arguing against the Tribe’s motion cited a lack of precedent with respect to tribal-specific sovereign immunity, and asserted the question should be left for Congress.

 

The PTAB’s Sovereign Immunity Decision

Ultimately, the PTAB decided last month to deny the Tribe’s motion to terminate the proceedings.  See the decision here, courtesy of Patent Progress.  The PTAB differentiated tribal sovereign immunity from state sovereign immunity, and broadly held that tribal sovereign immunity does not insulate a patent from an IPR proceeding.  The Tribe and Allergan are seeking to appeal the decision.

What do you think?  Just as a matter of policy, should companies be permitted to transfer their IP to sovereign entities to avoid this type of challenge?  The PTAB’s distinction between tribal and state sovereign immunity suggests that if Allergan had made this same agreement with a state university instead of a tribe, the IPR would have been terminated.  Is that the right distinction to make?

Earlier this month, a California federal judge kept alive a suit brought by the estate of famous jazz musician Thelonious Monk against North Coast Brewing Co. for trademark infringement and infringement of the right of publicity. The dispute centers around North Coast’s popular “Brother Thelonious” Beligan-style abbey ale (beer seems to be on the mind here at DuetsBlog as of late), which features a likeness of Thelonious Monk on its label:

Credit

The estate, managed by Thelonious Monk’s son, Jr., agreed to allow North Coast to use the likeness for selling the beer so long as North Coast agreed to donate some of its profits to the Thelonious Monk Institute of Jazz. North Coast apparently upheld its end of the deal, donating over $1M to the Institute since 2006. Though, North Coast also expanded its use beyond beer, to beer brittle, goblets, hats, apparel, signs (metal, neon, and paper), playing cards, pins, and even soap (made–incredibly–using the beer).

North Coast even registered a trademark on its label design, which “consists of a profile portrait of a gentleman in a red cap, dark glasses, and brown monk’s garb holding a glass of dark beer in one hand and a human skull in the other hand, with a stylized circular black and white piano keyboard behind his head, in an abbey setting.” Sounds like Thelonious Monk, don’t you think? North Coast also has a registered trademark on the name “Brother Thelonious.” A little late to the game, the estate registered a trademark on “Thelonious Monk” this summer.

In 2016, the estate rescinded its permission to use Thelonious Monk’s likeness, and after North Coast refused to stop using the likeness, initiated its lawsuit. The district court judge denied North Coast’s motion to dismiss the case, stating that the factual record underlying the dispute needs to be fleshed out before any of the estate’s claims can be decided. Give it several months to up to a couple years before the court issues a ruling.

The estate’s lawsuit, especially the claim for infringement of the right of publicity, got me thinking about the bases for the right of publicity and the right’s applicability to celebrities who have died–sometimes referred to as “delebs.” Sadly, Thelonious Monk died in 1982. But, like many celebrities, the value of his work and likeness endure after death. Indeed, some celebrities have become bigger in death than they were in life (e.g., Tupac Shakur, Michael Jackson, and Elvis Presley). And beloved local delebs continue to make appearances:

Credit

At first glance, it seems odd that a deceased celebrity (through an estate) would have any right to control the use of likeness after death, let alone profit from it. Indeed, the right of publicity, provided under state law, is largely founded on privacy grounds, protecting the use of one’s identity in commercial advertising given the personal and private interests at stake. After death, those personal privacy interests are no longer compelling. But the right of publicity in many states is also founded on property grounds, in view of the fact that (at least for many celebrities) individuals often invest extensive time, energy, and money in promoting and creating their own personal brand. The thought is that, like other intellectual property rights, one should be able to receive the benefits of that investment (which encourages such investment in the first place). Thus, the right of publicity is based upon both privacy and property interests.

The right to publicity is recognized in over 30 states, but the scope and breadth of the right varies in each state largely because states have differing views on whether the right should be grounded in privacy, property, or both (and if both, to what degree?). Many of these states have a right of publicity statute, but some do not. For example, as I discussed previously, Minnesota does not have a right of publicity statute. In 2016, the Minnesota State Legislature considered the “Personal Rights In Names Can Endure” (“PRINCE”) Act, but never passed the bill. Have no fear, though; previously, in Lake v. Wal-Mart Stores, Inc., the Minnesota Supreme Court recognized the right of publicity based on “individual property” rights and “invasion of privacy,” citing Restatement (Second) of Torts § 652B (1977). 582 N.W.2d 231 (Minn. 1998).

Interestingly, because the right of publicity is a creature of state law, where a person was domiciled (residing) at the time of death controls what kind of right of publicity that person’s estate has after death. Estates for celebrities who were domiciled in Oklahoma are the most fortunate and can enforce the right of publicity for up to 100 years after death. But woe be upon an estate in Wisconsin, which bases its right of publicity on privacy interests and only allows living persons to enforce the right. The amount of time a right of publicity can be enforced after death varies dramatically state-to-state. For a helpful run-down of most states, see this useful overview.

How about in Minnesota? The PRINCE Act would have allowed an estate to enforce a right of publicity for up to 100 years, like Oklahoma’s statute. Under the common law, it remains unclear how long the right persists–though, the U.S. District Court for the District of Minnesota held (ironically) in Paisely Park Enterprises, Inc. v. Boxill, that the right survives death. See 2017 WL 4857945 (D. Minn. Oct. 26, 2017) (Wright, J.). How long thereafter? The Restatement (Second) of Torts doesn’t say.

The most basic takeaway from the current state of the law is that celebrities with likenesses that may have great value in commercial use should consider domiciling in states that have favorable post-mortem rights of publicity. Thelonious Monk was domiciled in New Jersey when he died, and the New Jersey right of publicity extends no longer than 50 years after death. So the estate has about 14 more years during which it can enforce the right, which Thelonious Monk may not have ever exercised in life.

By the way, if you’re interested in trying out the Brother Thelonious, it is available in two Twin Cities locations: First, and most appropriately, the Dakota Jazz Club & Rest (Minneapolis), and also at Hodges Bend (St. Paul).

For anyone unfamiliar with internet cat personalities, Grumpy Cat is a well-known feline whose dwarfism and underbite culminate in a perpetual—and adorable—sour expression.  Grumpy Cat’s real name is Tardar Sauce.  In 2012, when Tardar Sauce was only a few months old, she became an internet sensation after a photo of her endearing scowl was posted on Reddit.  Since that time, Tardar Sauce has made several public appearances, and was named to Forbes’ list of Top Pet Influencers.

Tardar Sauce’s owner, Tabatha Bundesen, formed Grumpy Cat Limited to handle licensing and merchandising of the Grumpy Cat brand.  Grumpy Cat Limited holds eight federal trademark registrations, including five registrations for the standard character mark GRUMPY CAT, and three registrations for this design mark:

Grumpy Cat Limited also owns multiple copyright registrations, including these:

 

In 2013, Grumpy Cat Limited entered into a licensing agreement with Grenade Beverage LLC.  Under the agreement, Grumpy Cat Limited licensed the Grumpy Cat trademarks and copyrights to Grenade in connection with a line of iced coffee products (appropriately named Grumppuccinos).

Three flavors of Grumppuccino

The licensing agreement additionally permitted Grenade to develop other Grumpy Cat beverage products, but only with the permission of Grumpy Cat Limited for each new product.  Under this provision, Grenade sought approval from Grumpy Cat Limited for a new line of Grumpy Cat-branded coffee beans.  Grumpy Cat Limited withheld approval for the coffee beans.  Grenade nonetheless moved forward with the new product.  Grenade also began selling unauthorized Grumppuccino t-shirts.

The offending beans

In late 2015, Grumpy Cat Limited sued Grenade for breach of contract, copyright infringement, and trademark infringement.  Namely, Grumpy Cat Limited asserted that Grenade’s use of the Grumpy Cat name and likeness on the coffee bean products and unauthorized Grumppuccino t-shirts was outside the permissible scope of the licensing agreement.

After a week-long trial, during which Tardar Sauce herself made an appearance, a jury decided in favor of Grumpy Cat Limited.  The jury awarded $710,001 to Grumpy Cat Limited: $230,000 in statutory damages for copyright infringement, $480,000 in statutory damages for trademark infringement, and $1 for breach of contract.  Presumably, the statutory damages awarded to Grumpy Cat Limited equal more than any actual damages the company could have obtained–a reminder of the value of statutory damages in trademark and copyright infringement suits.

And whatever the man called a living creature, that was its name.

Genesis 2:19

Naming things is a fundamentally personal, human act that sometimes – in a profession all about brand names – we take for granted. It’s easy to forget when we are clearing, registering, and protecting names, that at a basic level we are engaging with an essential part of human existence not so far removed from the story of Adam’s naming of living creatures in Genesis. True, Adam may not have had to concern himself with trademarks and intellectual property rights, but we trademark lawyers do.

Lately, I’ve been thinking a lot about this act of naming and names – not brand names, but specifically, baby names. My wife and I are expecting a baby on December 1, and among many of the things to do, naming the baby is perhaps the most important. So while my wife and I work on that, I thought I’d use the opportunity to take a closer look at a case that reminds us of how a personal name can become something else – a brand name – and what happens next.

Ten years ago, while I was in law school taking my first trademark law course, the famous fashion designer Joseph Abboud was learning about trademark law the hard way: in court. The lawsuit (about suits) against Joseph Abboud claimed that his marketing and promotional activities as Joseph Abboud for a new clothing line called “jaz” infringed trademark rights to the name – you guessed it – “Joseph Abboud.” So how did it come to pass that the real person named Joseph Abboud was being sued for using his own name?

Well, it turns out that in his rise to the top of the fashion industry through the 1980s and 1990s, Joseph Abboud registered his personal name and variations as trademarks in connection with his clothing. Then, in 2000, Joseph Abboud sold his company JA Apparel and its trademarks, including the trademarks “Abboud” and “Joseph Abboud,” for approximately $65 million. As part of the transaction, Joseph Abboud transferred all of his rights to the following:

[T]he names, trademarks, trade names, service marks, logos, insignias and designations [of Joseph Aboud]. . . . and [a]ll rights to use and apply for the registration of new trade names, trademarks, service marks, logos, insignias and designations containing the words “Joseph Abboud,” “designed by Joseph Abboud,” “by Joseph Abboud,” “JOE” or “JA,” or anything similar to or derivative thereof, either alone or in conjunction with other words or symbols . . . for any and all products and services. . . .

In addition, the designer Joseph Abboud further agreed not to compete with the JA Apparel for a period of time.

But wouldn’t you know, the designer Joseph Abboud couldn’t sit idle and, despite his agreement, he began to engage certain third parties in preparation for the launch of a new line called “jaz” and began promoting it as Joseph Abboud, the fashion designer. When JA Apparel found out, it sued to stop Joseph Abboud on the grounds that it had acquired the exclusive rights to use the name Joseph Abboud, not just the trademarks. In other words, while perhaps “jaz” didn’t infringe the trademarks, Joseph Abboud’s use of his own name to promote it did, and furthermore it breached the contract. In a page right out of Mad Men, the attorneys for JA Apparel even published a full-page ad announcing that “The Finest Trademark Attorneys in the World Wear Joseph Abboud®.”

After a bench trial, the district court agreed with these finest trademark attorneys in the world and concluded that the agreement made by Joseph Abboud transferred not just certain trademarks to JA Apparel, but also the right to use his own personal name for commercial purposes, including in the phrases “a new composition by designer Joseph Abboud” or “by the award-winning designer Joseph Abboud.” Nevertheless, although providing “sweeping injunctive relief” was necessary to ensure that JA Apparel received the full benefit of its bargain, the court determined Joseph Abboud could make media appearances as himself or as a fashion expert, but not to promote clothing in competition with JA Apparel.

On appeal, the Court of Appeals for the Second Circuit found the word “name” as used in the agreement ambiguous and vacated the decision of the district court, remanding returning it for a full refund. Additionally, the court of appeals held that if the contract was not breached, then the district court would need to determine whether Joseph Abboud’s use of his own name constituted trademark infringement by examining specific proposed advertisements. For example, one advertisement featured the “jaz” mark prominently with an image of Joseph Abboud and the disclaimer “Designer Joseph Abboud is no Longer Associated or Affiliated with JA Apparel Corp., the owner of the Trademark ‘Joseph Abboud’TM.” Such advertisements presented the “jaz” mark and Joseph Abboud’s name in ways which might not be infringing or could reasonably be fair use.

On remand, the district court examined additional extrinsic evidence and discovered that the word “names” appeared only in the final draft of the agreement and that nothing in the discussions between the parties explained the reason for its inclusion. Instead, the word “names” was part “laundry list of words” under the “more general penumbra of ‘trademarks’” – essentially a substitute for “brand names” not “personal names.”   Reversing its prior conclusion, the court concluded that Joseph Abboud had not sold his personal name. Unfortunately, for Josheph Abboud, the inquiry did not end there.

The problem, the court explained, was that while Joseph Abboud may not have sold all rights to commercially use his personal name to JA Apparel, Joseph Abboud did register his name as a trademark and he did sell that trademark to JA Apparel. And in such circumstances, Joseph Abboud would be permitted to use his name to advertise his affiliation with other businesses, so long as such use was not in an “overly intrusive manner:”

This is a case in which an individual elected to use his name for many years as a trademark, building up substantial goodwill; he then sold the same, but intends to continue to commercially exploit his name by designing clothes in competition with the purchaser of the trademark. This case therefore presents an inherently difficult scenario, because Abboud’s use of his name in the sale of clothing will inevitably lead to consumer confusion.

The court’s solution was to allow the following ad and similar ads, with the addition of a conspicuous disclaimer making clear that Joseph Abboud, the designer, was no longer affiliated with Joseph Abboud, the apparel brand:

The court was even stronger in its approval of the following possible ad, proposed by JA Apparel, noting that the placement, size, and useage of Abboud’s name, together with the disclaimer (unreadable in the image below), arguably would remove the likelihood of any confusion:

The court was not so enthusiastic about the following ad, which it called “utterly confusing” because Joseph Abboud’s personal name would be used in a virtually identical way as the Joseph Abboud trademark, suggesting “jaz” is merely a sub-line of clothing:


The review of the ads above helped the court craft the following permanent injunction against Joseph Abboud, showing just what happens when a name becomes a brand name:

Abboud may not use his name in any manner on “jaz” clothes, labels, hang-tags, or product packaging.

Should Abboud choose to use his name in promotional and advertising materials, he must do so in a way that is not inconsistent with this Court’s fair use analysis.

Abboud’s name must be used descriptively, in the context of a complete sentence or descriptive phrase, and must be no larger or more distinct than the surrounding words in that sentence or phrase.

Abboud is to prominently display his trademark “jaz” (or any other trademark) elsewhere in the advertisement, both to alert consumers that “jaz” is the source—in the trademark sense—of the new clothing line, and to minimize any resulting confusion.

Finally, should Abboud use his name as proposed in [the ads] or anything similar, he must include a disclaimer of any affiliation with JA Apparel and products sold under the Joseph Abboud trademarks. The disclaimer must be displayed in a font that is no smaller than the accompanying text in which Abboud uses his name.

The lesson for all of us is that a personal name, when it becomes a brand name, becomes something that can be bought and sold just like any other trademark. And after that sale, while some personal uses of a name will be fair use, any use of the name as a brand name will likely result in confusion (if the goods are the same or related).  Sometimes the use of a personal name is inevitable, but business owners and celebrities should take care when they decide to use their personal name as the brand name for their business, especially if they are not exactly ready to retire from what made them famous and successful when they sell their business.  Otherwise, they may find themselves with a name that’s become something they can’t use.

New ideas, creations, and business ventures are often the product of collaboration.  If lawyers had their way, a written agreement would precede every creative collaboration.  Of course, this is not the case.  Collaborators often do not seek advice of counsel, or see the need for an agreement, until after the new idea, creation, or venture is well underway.  As a result, statutes and case law operate to define the joint ownership rights.  Each type of IP affords slightly different rights to joint owners.

Patent

A patent, whether design or utility, provides the patent holder with the right to exclude others from making, using, selling, offering to sell, and importing the patented invention.  Where a patent is owned by multiple entities, each joint owner has the right to independently license any of these rights.  Moreover, patent joint owners do not have a duty to account to one another.  This means that joint owners do not have to share profits with one another.  However, the consent of all owners is generally needed to sue to enforce the patent.  In practice, this means that one joint owner can block others from suing.  Consent of all owners is also needed to exclusively license the patent.

Copyright

A copyright holder has a set of rights, including the rights to reproduce, distribute, make derivative works of, perform, and display, the copyrighted material.  Similar to patents, each joint owner of a copyright may individually exercise these rights without consent of other joint owners.  Each joint owner may additionally license these rights.  However, there is one notable difference from patent law: the duty to account.  Each joint copyright owner has a duty to share profits obtained from the copyright with all joint owner.  Another distinction from patent law is that joint copyright owners may each sue to enforce the copyright without consent of other owners.  However, consent of all owners is also needed to exclusively license the copyright.

Trade Secret

Due to the nature of trade secrecy, the law of joint ownership of trade secrets is not as well defined as with patents and copyrights.  In general, case law suggests that joint owners of a trade secret may each use the trade secret for their individual business purposes.  However, it is unclear whether joint owners have a duty to account.  While consent of all joint owners is likely not needed to sue for misappropriation of the trade secret, the owners must consent to exclusively license the trade secret.

Trademark

The prospect of a jointly owned trademark is something of a different nature.  By definition, a trademark is an identifier of a single source.  While multiple parties can own a trademark, if each party is permitted to use the mark independently in the marketplace, by definition, the mark is no longer designating a single source.  Additionally, the law is unclear on whether joint trademark owners have a duty to account, or whether they must consent for an infringement suit.  In many cases, a co-branding agreement may be a good alternative to a jointly owned trademark registration.  Alternatively, multiple parties may want to jointly own a single entity, which in turn owns the mark.

Consider that SUPER HEROES is often used in conjunction with DC COMICS or MARVEL, which are source designators. What do you think? Are DC and Marvel asking for a genericness battle?

Jointly owned trademarks are rare, but not unheard of.  Arguably the most famous jointly owned trademark is owned and maintained by two competitors.  DC Comics and Marvel Comics have co-owned the mark SUPER HEROES for decades.  This seems a strange duo since the two companies are not only direct competitors, but also the only major players in the comic book realm.  Nonetheless, the two entities have jointly owned the mark since 1979, and are known for diligently enforcing itSome wonder if this is an example of trademark misuse, as SUPER HEROES does not designate a single source.  A consumer might identify a product with SUPER HEROES as being from either DC Comics or Marvel Comics.  The companies’ fierce enforcement efforts may be an attempt to head off an inevitable genericness fight.

cheese_curds_aaron_keller

When Aaron Keller of Capsule deeply cares about an issue (in a deeply fried kind of way), it’s hard not to stand up, pay attention, and follow instructions, especially when his picture of golden little nuggetized cheese curds are involved and the Minnesota State Fair is at stake.

As you might have discerned over the years, yours truly has been known to visit the Minnesota State Fair, perhaps not more than the most rabid of fans (our next door neighbors), but far more than the most average of fans or those with only tepid enthusiasm for said Fair.

Indeed, as an added benefit to the amazing culinary experience at the Fair, a colorful multitude of IP content from the Minnesota State Fair has inspired my keyboard over the years, including these little gems about the Tilt-a-Whirl trademark and Lulu’s (not the lemon in case you wonder).

Yet, before today, cheese curds have been uttered only once before on these pages, by our friend Brent Carlson-Lee of Eli’s Donut Burgers fame, but with Aaron Keller’s call to sign a petition (which I did) and his social media battle cry to #savethecurds, today rightly makes twice.

Truth be told, the entire category of cheese curds is not in question at the Fair, only one of the several curd vendors, but most importantly the original pioneer and cheese curd leader — in fact, after due testing, the one and only curd my family loyally patronizes multiple times each year.

So, to be told, no worries, you can still find cheese curds at the Fair, is like saying to Coke lovers, never mind your unwavering brand preference, you can still find Pepsi. Let’s face it, we live in a pretty divided world, so eliminating the curd pioneer is far more than a shoulder shrug.

Reminds me of when the Minnesota State Fair gave Porky’s Delight the boot more than a decade ago. I’ve never really forgiven them, having said that, I can’t say I’ve boycotted the Fair since then either, but the replacement pork chop stand has never measured up to my taste buds.

Thank goodness Porky’s Delight seasoning is readily available for those willing and able to bring-your-own-pork-and-grill, to do-it-yourself. Sadly, I’m not sure that the cheese curd recipe from the Original Deep Fried Cheese Curds vendor, as good as it is, presents the same opportunity to the stunned Mueller Family. Perhaps this explains the family’s interest in keeping the tradition alive at the Fair? Hopefully the Fair officials will do the right thing and #savethecurds.

In terms of the legal aspects of the issue, not having seen the agreements between the Fair and vendors, I’m not pretending to know the details of the legal terms governing the matter here, but instincts tell me that the Fair probably holds most of the cards, especially with one-sided terms like these (taken from the online 2017 Concession Manual):

“State Fair license agreements, any portion(s) thereof, as well as the privileges, duties, responsibilities, obligations and interests granted therein, may not be assigned, sublet, sold, transferred, devised by will, hypothecated or otherwise disposed of, except with the written consent of the Minnesota State Fair; nor may licensees subcontract or sublet space or license privileges to any other person or firm. Obligations provided for in said licenses, including, but not limited to, payments for insurance, utilities and/or special services, shall remain the obligation of the initial licensee regardless of approved assignment.”

But, do they really hold all of the cards? Perhaps others can weigh in here who have relevant knowledge to share on the details of the typical governing agreements.

For example, did anyone notice in the letter denying the license application to Tom Mueller, Richard Mueller’s son, that the previous license holder for the space appeared to be a corporation (Muskar, Inc.)? To the extent this language from the 2017 Concession Manual governed the license with Muskar, Inc., and to avoid the transfer prohibition above without Fair consent, why couldn’t the corporation have designated a new Principal for the same corporation and licensee to carry on operations at the Original Deep Fried Cheese Curds stand?

“Licenses are issued to, and in the name of, a company/corporation, organization, institution, agency or individual (of legal age) with a designated principal (i.e. owner, president, C.E.O. or executive director) and secondary agent (i.e. secretary, manager, division/department head or assistant). The principal, having primary legal and decision-making authority and responsibility, must sign the exhibit or concession license and all related business documents. In the absence of the principal for any reason, e.g., death, inability or unwillingness to continue as the principal, the license becomes null and void. The agent must be authorized by the principal and may speak for and conduct day to day exhibit or concession business on behalf of the licensee on site, but may not execute (sign) a license on behalf of the principal. Also, in the absence of a principal for any reason, e.g., death, inability or unwillingness to serve as principal, the agent does not ascend to become principal and the license becomes null and void.”

Back to the brand aspect of the issue, even if the Fair holds the legal cards on this one, I’d suggest we launch a new hashtag: #savethecurdcompetition (since the alternative, Mouse Trap Cheese Curds, needs some real competition at the Minnesota State Fair, in my opinion).

Elisha is the two time Super Bowl MVP New York Giants quarterback Eli Manning.

Eli Manning

Collecting equipment used, or uniforms worn, during an NFL game is big business. Young and old alike want these items to feel close to their favorite team or player.

throw football 1celebrate football 2

In a 99 page Amended Complaint, plaintiffs (including,  sports memorabilia collectors/marketers and resellers) sued the New York Giants and employees, alleging that Eli and the team provided fake memorabilia to a dealer. They allege that fake helmets, jerseys and other sports memorabilia were given to dealers.

The lawsuit arose after a criminal investigation into the sports memorabilia business that resulted in Plaintiffs’ being indicted. Ultimately, the indictments were dismissed. Plaintiffs allege that the New York Giants lied during the criminal investigation and were involved in a cover up. Specifically, Plaintiffs alleged the Giants’ General Counsel concealed and encouraged misconduct. This resulted in Plaintiff Inselberg being indicted.

Specifically, the Amended Complaint has 18 counts including: civil RICO, malicious prosecution, tortious interference with prospective economic advantage, trade libel, intentional infliction of emotional distress, consumer fraud, common law fraud, quasi contract unjust enrichment, quantum meruit, unfair competition – misappropriation and reverse palming off; breach of contract, tortious interference with contractual relations, civil conspiracy, aiding and abetting, negligent supervision, negligent retention, negligent misrepresentation, and respondeat superior.

Last week, Plaintiffs attorney told a New Jersey court that a 2010 e-mail exchange between Eli Manning and the team’s equipment director Joe Skiba proves that Eli Manning knowingly provided fake helmets to a sports retailer. Specifically, Plaintiffs’ attorney claims that Eli Manning told Mr.  Skiba that he was looking for “2 helmets that can pass as game used. That is it.” They assert that Eli Manning was under contract to provide game-worn memorabilia to retailer Steiner Sports, LLC. Further, Plaintiffs’ attorney asserted that the Giants or their employees “appear to have deleted” Manning’s e-mail.

The New York Giants’ attorney stated that “the e-mail, taken out of context, was shared with the media by an unscrupulous memorabilia dealer and his counsel who for years has been seeking leverage to a big payday. The e-mail predates any litigation, and there was no legal obligation to store it on the Giant’s server.”

Were the helmets and jerseys fake? Was there a cover up and conspiracy by the New York Giants? Or, are the Plaintiffs merely seeking a big payday and/or to divert attention from the dismissed indictment?

We will have to wait to see how this “plays” out in the courts.