— Jessica Gutierrez Alm, Attorney

No one does the Carlton quite like Carlton Banks.  (Queue Tom Jones’s It’s Not Unusual.)  Since actor Alfonso Ribeiro first performed the unique dance on The Fresh Prince of Bel-Air, it has been readily associated with him.  When the dance move recently appeared as a purchasable avatar dance in the popular video game, Fortnite, players quickly recognized Carlton’s signature move.

 

Fortnite is a battle royale-style combat game in which players, through their avatars, fight to the finish.  In-game purchases allow players to download character skins, clothing, and emotes (dances) for their avatars to perform on the battlefield.  In January 2018, the makers of Fortnite introduced a new emote available for purchase: a Carlton-esque dance called the Fresh.  When a player purchases and downloads the Fresh emote, the player’s avatar can perform the dance move on command.

Ribeiro filed suit against Fortnite creator, Epic Games, last month in a California federal district court.  The suit has been widely reported as a copyright case, prompting many to analyze whether short dance moves like the Carlton are eligible for copyright protections.  Their collective answer: probably not.

Copyright Choreography

While choreographic works are eligible for copyright, the US Copyright Office states that it will not register for copyright “short dance routines consisting of only a few movement or steps with minor linear or spatial variations, even if a routine is novel or distinctive.”  Individual steps or movements, such as the Waltz step, hustle step and grapevine are not copyrightable, according to the Copyright Office’s guidance in Circular 52.  Social dances are similarly not eligible for copyright registration.  “[U]ncopyrightable social dances are generally intended to be performed by members of the public for the enjoyment of the dancers themselves,” as opposed to registrable choreographic works, which are “intended to be executed by skilled performers before an audience.”  At most, it is unclear whether the Carlton is complex enough, or includes enough movements or length, to be eligible for copyright protections.  Of course even if the Carlton dance is copyrightable, NBC Productions might have something to say about ownership of the copyright.

But Ribeiro’s suit against the makers of Fortnite alleges more than mere copyright infringement.  In addition, Ribeiro is suing Epic Games for violation of his statutory and common law right of publicity.

Vanna White-bot, Here’s Johnny Toilets, and the Right of Publicity

In general, the right of publicity protects an individual’s right to control the commercial use of her name and likeness.  In California, courts have defined a broad right of publicity.

Federal courts have determined that the California common law right of publicity is not strictly limited to an individual’s name and likeness.  In White v. Samsung Electronics, Vanna White sued Samsung for its depiction of a robot adorned with blond wig, gown, and jewelry in a VCR ad.  971 F.2d 1395 (9th Cir. 1992).  The familiar robot was posed next to a gameshow letter board reminiscent of the Wheel of Fortune.  The caption read, “Longest-running game show. 2012 A.D.”  Notably, the case is from 1992, and the ad was part of a campaign depicting use of various Samsung products in a futuristic setting.  Recognizing that although the defendants did not actually use White’s name or image, the court determined that the ad was clearly intended to depict White and presented colorable right of publicity claim.

In another case, the Ninth Circuit held that Ford Motor’s use of a Bette Midler sound-alike voice was a violation of Midler’s right of publicity, even without any use of Midler’s name or image.  Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988).  And in Carson v. Here’s Johnny Portable Toilets, the Sixth Circuit held that the defendant’s use of the phrase “Here’s Johnny” to market portable toilets was a misappropriation of Carson’s persona.  810 F.2nd 104 (6th Cir. 1987)

In light of this precedent, Ribeiro’s right of publicity claims seem stronger than his copyright claims.  The complaint also includes claims under the Lanham Act and California statutes for unfair competition.  Ribeiro alleges that the company’s use of the dance move creates a false impression that either Epic Games created the dance move or that Ribeiro provided sponsorship.

What are your thoughts on these unfair competition claims?   Are they stronger than the copyright infringement claims?

The Vanna White case also included a Lanham Act unfair competition claim.  The court in that case recognized a celebrity’s ability to bring such claims to protect her persona.  The court permitted the Lanham Act claim to proceed to a jury along with White’s right of publicity claim.  Ultimately, the jury found for White and awarded over $400,000.

Others Join the Fight

Ribeiro is not the only artist to challenge Epic Games on the IP battlefield.  Rapper 2 Milly (Terrance Ferguson) sued Epic Games for creating an emote based on his Milly Rock dance.  And most recently, Backpack Kid (Russell Horning) sued Epic Games for introducing an emote modeled after his viral Floss dance.  Both complaints include claims for copyright infringement, violation of right of publicity, and unfair competition claims.

Last Friday, the Supreme Court decided it will hear the Brunetti case, and take a closer look at Section 2(a) of the Lanham Act, the portion forbidding federal registration of trademarks having matter that is scandalous or immoral.

So, it appears my big prediction for 2019 is pointing in the affirmative direction:

“In terms of my big trademark prediction for 2019, it will be revealed whether the scandalous bar to federal registration is invalidated, whether or not the Supreme Court agrees to hear Brunetti.”

Now that the Court has decided to review Brunetti, it will be the one to decide whether the “scandalous” and “immoral” bars to registration violate the First Amendment, not the Court of Appeals for the Federal Circuit.

So, perhaps Chief Justice John Roberts was foreshadowing a review of Brunetti, when he was speaking in Minneapolis, and said: “Obviously, if any court finds an Act of Congress unconstitutional, we will take it . . . .

To piggyback on what I wrote back in October:

“There are plenty of good reasons for the Court to decide the constitutionality of the “scandalous” and “immoral” language, separate and apart from the disparagement language found to violate the First Amendment in Tam (here, here, here, here, here, and here).”

“If the Court does hear Brunetti, let’s hope Section 7 of the Lanham Act — the provision expressly noting that federal registrations are issued ‘in the name of the United States of America‘ — won’t be some uninteresting and ignored ‘nuance’ of trademark law to the justices.”

You may recall, I previously said this about the Federal Circuit’s overreach in Brunetti:

“What is striking about the CAFC ruling is its breadth. It isn’t guided by the Supreme Court’s Tam decision — requiring viewpoint discrimination — as the Tam Court found with disparagement.”

“The CAFC did not decide whether the ‘scandalous and immoral’ clause constitutes impermissible viewpoint discrimination, instead it seized on mere content as lower hanging fruit for invalidation.”

“The problem with focusing on content alone is that it proves too much. Trademarks, by definition, are made up of content, and many other provisions of federal law limit the right to register based on content, so, if this analysis holds, what additional previously-thought-well-settled provisions of federal trademark law will fall? Importantly, some even allow for injunctive relief: tarnishment.”

I’m thinking the Court will decide that the Federal Circuit went too far in Brunetti, and it will find a way to retain the “scandalous” bar to federal registration, though I’m doubting the “immoral” bar will survive, so stay tuned.

What are your predictions dear readers?

Before we think predictions for 2019, let’s consider the vast ground we’ve covered in 2018:

Wow, I’m exhausted, and these highlights are only a small fraction of what we delivered in 2018.

You may recall, earlier this year, I predicted more informational and failure to function decisions.

As our friend John Welch reported, there were more than a few (here, here, here, here, and here).

Stay tuned, on March 13, in New York City, I’ll be diving deeply into the failure to function topic, among others, at Practicing Law Institute’s Advanced Trademark Law 2019: Current Issues.

In terms of my big trademark prediction for 2019, it will be revealed whether the scandalous bar to federal registration is invalidated, whether or not the Supreme Court agrees to hear Brunetti.

So, what is your big trademark prediction for 2019?

A loyal reader brought to our attention the logo for a rather interesting chiropractic practice:

Without too much pain, can we all agree on the likely inspiration for the above name and logo?

What’s really interesting is that the name Thorassic Park has been federally-registered since 2004, so there is little doubt that the names may co-exist without likelihood of confusion or dilution.

But, what about the visual identities? Don’t they seem far too close, even if the businesses are very different? It appears the chiro-logo is almost a fossil now, having been around twenty years.

How can that be, given the close proximity between Orlando, Florida and Bradenton, Florida? What are the odds that the Jurassic Park franchise owner hasn’t discovered the chiro-logo before now?

And, what are the odds a patient of Thorassic Park in Bradenton might need an adjustment after visiting Jurassic Park in Orlando? Might there be an opportunity for a shuttle service in between?

So, if you are the brand police for the Jurassic Park franchise, does the chiro-logo give you back pain? For the creatives in the crowd, does your spine tingle seeing this painstakingly cloned logo?

This is quite a collection of art pieces, inspired by some pretty recognizable candy bar brands:

The fine print reads: “Each handmade . . . sculpture is a real working whistle!” Parodies, anyone?

Here’s a question, does the functionality of these pieces make them any less expressive as art, any more likely to be confused, any more likely to dilute, any less First Amendment worthy?

It’s not every day you’re presented with the unique opportunity of seeing and hearing the Chief Justice of the United States Supreme Court live in your own backyard, thanks very much Caleb!

Tuesday was that day, Chief Justice John G. Roberts, Jr. was here in Minneapolis for the 2018 Stein Lecture at the University of Minnesota’s Northrup Auditorium, as the Star Tribune reported.

SCOTUSBlog had this to say about the Chief Justice’s remarks. To listen to a recording of the event, to a sell out crowd of 2,700, check out MPR’s coverage, here.

Others reporting on this event don’t appear to care about trademarks as much as we do, so this may be the only place you’ll learn about Justice Roberts’ remarks relating to trademarks.

As you can imagine, knowing the vast body of legal subject matter confronted by the Supreme Court, clearly my ears perked up in hearing Justice Roberts utter the word “trademark” five times!

Moderator Robert Stein, former University of Minnesota Law School Dean, asked Chief Justice Roberts whether any highly technical subject matter might be unsuited for the Court to decide.

My mind went to the creation of the CAFC in 1982, specifically designed to hear all federal district court patent appeals, yet the Supreme Court has repeatedly reversed the CAFC since 2005.

Justice Roberts never mentioned the CAFC, instead he waxed a bit about trademark expertise:

“My answer, I think is, no, because usually no matter how complex and involved the legal issue, the case may seem, it implicates a broader legal question about, you know, the statute may be complicated, but the question is going to be, well, how do you go about reading the statute, what sources do you look at in a particular case. We don’t take technical legal cases because we like technical legal cases. They’re usually because they implicate a broader question. When I was practicing law, this is a speech I gave a lot of times, because I was not an expert in any area of the law. I like to think of myself as somebody who was good arguing in a particular court, in the Supreme Court, and so I’d have to, you know, convince someone who comes in with an important trademark case, who could hire the world’s leading expert in trademark law, or me.  And, I would tell them, look, the Supreme Court does not think your case is a big deal for trademark law. It thinks your case is a big deal for how regulations relate to the statute, how particular provisions in the statute should be read. So, you need somebody who, you know, can look at it in that broader perspective that the justices do, and you know, I would say, half of the time, they would say, well, I actually want somebody who knows something about trademark law, and that was understandable, but, then it would be, and, you know, they would get there in front of the Court, and they’re too expert in trademark law, and the justices just aren’t that interested in a lot of those nuances, and sometimes they would just be speaking over each other.”

My ears also perked up with Justice Roberts’ remarks about the Court’s fewer decisions:

“We have particular criteria for the cases we want to take. Obviously, if any court finds an Act of Congress unconstitutional, we will take it, we think as a matter of comity to the branches across the street, we should be the ones to say that, if any court is . . . .”

Do you see where I’m going with that remark, dear readers? I’m thinking about Erik Brunetti.

As you will recall, presently before the Supreme Court, is whether to hear the Brunetti case, and the issue presented in Brunetti is:

“Whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of ‘immoral’ or ‘scandalous’ marks is facially invalid under the free speech clause of the First Amendment.”

Given the clarity of Justice Roberts’ statement, “if any court finds an Act of Congress unconstitutional, we will take it,” I’ll be amending my prediction otherwise, since the CAFC did just that, in Brunetti.

There are plenty of good reasons for the Court to decide the constitutionality of the “scandalous” and “immoral” language, separate and apart from the disparagement language found to violate the First Amendment in Tam (here, here, here, here, here, and here).

If the Court does hear Brunetti, let’s hope Section 7 of the Lanham Act — the provision expressly noting that federal registrations are issued “in the name of the United States of America” — won’t be some uninteresting and ignored “nuance” of trademark law to the justices.

It’s fall, and you know what that means: football season! For many, this means a return to the couch each weekend to spectate America’s most-watched sport. But the popularity of doing so appears to be in decline. This shift isn’t only affecting the NFL, but also college football as well, as ticket sales continue to plummet. Increasingly among my own family and friends, it seems as if everyone is more interested in playing their fantasy leagues than watching reality unfold before them. Which is why, one would think, that leagues and other football organizations would want to promote discussion about football, rather than hinder it.

Credit: Geek.com

But football organizations are cracking down on, rather than encouraging, use of familiar football names and phrases. Some have questioned, for example, the NFL’s bully-like tactics in aggressively protecting the “Superbowl” name. The annual “big game” is so well-known and such a major event that it’s almost impossible not to use its actual name. Yet, the NFL persists, enforcing more than just its famous name, drawing the ire of commentators each year.

Such tactics appear to have inspired a recent filing by the Heisman Trophy Trust against “HeismanWatch.com,” for trademark and copyright infringement. The Heisman Trophy Trust, the complaint says, is the owner of a slew of federal trademark and service mark registrations related to the Heisman Trophy, “one of the most distinguished, prestigious, and recognized awards in all of sports, and perhaps the most famous of all individual awards in football.” The award is given to the most outstanding collegiate football player, usually a quarterback or running back, each year. You might recognize the trophy by its distinctive “stiff-arm” maneuver captured in bronze:

Credit: The Ringer

Defendant HeismanWatch.com is a website that offers information, analysis, and podcasts about the Heisman trophy award. It is known for its “one-of-a-kind regression model that processes simulated Heisman votes,” to predict in advance who will win the Heisman each year. It reportedly correctly predicted the most recent winner, Baker Mayfield.

The Heisman Trophy Trust, apparently, does not appreciate HeismanWatch.com’s analysis and attention. It alleges that the website is deliberately attempting to free ride on the fame and notoriety of the Heisman Trophy marks, and it says that consumers are likely to believe there is a connection between the website and the actual trophy organization. Of course, the fact that HeismanWatch.com exists at all belies any such connection; the Trophy selection is secretive, but the website helps fans read the field and guess who will win next.

Time will tell whether the Heisman Trophy Trust can prevail against a news reporting and commentary organization like HeismanWatch.com, but it’s not unprecedented. The Academy Awards sued “OscarWatch.com” over a decade ago, prompting the website to change its name to “Awards Daily.” One cannot help but think that HeismanWatch.com has an incredibly strong nominative use defense, though. Under nominative use doctrine, another person can use the trademark of another if:

  1. the thing identified by the trademark (here, a trophy) cannot be readily identified any other way;
  2. the mark is used only as much as is necessary for that identification; and
  3. the use does not suggest sponsorship or endorsement.

The nominative use defense protects free speech and against the need to use “absurd turns of phrase” to avoid liability.

Credit: Wikipedia

It’s difficult to imagine a viable substitute to the name “Heisman,” given the trophy’s actual name–and namesake. What alternatives are there to HeismanWatch.com that do not include the surname? One commentator  offered an idea:

BestOffensivePlayerWithAGreatPRCampaignOnAVerySuccessfulTeamWatch.com.

Of course, this is absurd. And generic alternatives would fail to adequately describe what the website does (e.g., OutstandingCollegiateFootballPlayerWatch.com). One also doesn’t have to look much farther than a simple Google search to find that the media regularly uses “Heisman Watch” as a phrase to discuss anticipation about the next awardee. Even ESPN has a section called “Heisman Watch.” This kind of ubiquity shows the obvious necessity of using the surname. The common use of the phrase also suggests there is a very low likelihood that collegiate football fans are confusing the website–or any other reporting source–with the actual trophy organization. These are hallmarks of fair use.

But setting aside the legal defenses, one has to wonder if organizations such as the Heisman Trophy Trust, NCAA, and NFL ought to relax a little, and encourage the kind of use presented by sites like HeismanWatch.com. These fan centers generate excitement about, and interest in, football. That’s something football desperately needs more of lately.

Erik Brunetti is not one step closer to being able to federally-register his vulgar and scandalous FUCT trademark for clothing; his portfolio of applications remain log jammed (here and here):

So, scandalous trademark applications are still on hold at the U.S. Trademark Office, since the government is now asking for the Supreme Court to reverse Brunetti. First prediction, check.

As you will recall, the Court of Appeals for the Federal Circuit in Brunetti, struck down the scandalous and immoral bar on federal trademark registration, as a violation of Free Speech.

The government now contends that denying federal registration of scandalous or immoral matter does not constitute viewpoint discrimination, so Brunetti isn’t controlled by the Tam decision.

The scandalous and immoral registration bar has been applied since the 1905 Trademark Act, and “scandalous” is interpreted to mean, under current attitudesshocking to the sense of propriety.

Putting aside whether much of anything in our current culture can be considered shocking, if it’s possible, doesn’t shocking content express a certain viewpoint, namely one with shock value?

And, if Justice Alito was right in Tam that the disparagement bar is a “happy talk clause,” then isn’t the scandalous bar a “tranquility clause,” appropriately and fully cleansing of any shock value?

Will the Supreme Court decide to review the Brunetti decision? I’ve predicted it won’t, but it should, so I’m hoping to be wrong, it would be priceless to see the Court address Section 7:

“Why did the Tam Court not acknowledge that a Certificate of Registration is issued by the USPTO, under authority of the Department of Commerce, “in the name of the United States of America,” under Section 7 of the Lanham Act, and instead proceed to mock the governmental speech argument without addressing or attempting to explain away this difficult fact?”

That drum we have been beating hard, so kudos to the government in pressing Section 7:

“Congress’s directve that the USPTO refuse federal trademark registration to vulgar words and lewd sexual images is consistent with those First Amendment principles. Congress legitimately determined that a federal agency should not use government funds to issue certificates ‘in the name of the United States of America’ conferring statutory benefits for use of vulgar words and lewd sexual images. 15 U.S.C. 1057(a). Although [Erik Brunetti] has a First Amendment right to use a vulgar word as a mark for his clothing line, he has no comparable right to require the government to register vulgar terms, issue registration certificates for them in the name of the United States, inscribe them on the USPTO’s Principal Register, and bestow valuable benefits on the markholders’ use of the terms in commerce.”

Even if it ends again, with the Free Speech argument prevailing, for reasons beyond my beliefs (here, here, and here), nevertheless it would be helpful for predicting the fate of other portions of the Lanham Act that are content-based and that have been called into question. Wait and see:

When can a brand owner lawfully use a competitor’s trademark on the brand owner’s product?

Over the years, we’ve lifted away a lot of dust on the hairy subjects of classic trademark fair use, nominative fair use, and comparative advertising, especially in the context of billboard ads.

It isn’t every day we see comparative billboard ads actually affixed to a product in question, so I can’t resist sharing this vacuum cleaner canister that captures all of these legal allergens at once:

For those unfamilar with the fierce competition between the Shark and Dyson vacuum brands, above is a cropped photo of a Shark Lift-Away canister vacuum, from my home closet.

As you can see, the label affixed to the canister portion of the vacuum actually refers to the competing Dyson brand twice. Just imagine what our friend James Mahoney might be thinking.

Why would the leading household vacuum cleaner brand — Shark — stoop to give its competitor Dyson free mentions (albeit negative) and publicity? Isn’t that kind of like punching down?

Actually, I’m not sure whether Shark had yet surpassed Dyson as market leader, when the canister left the store and entered our closet, so the above label might have been a punch up?

And, if comparative advertising induces sales, why does someone who already purchased the product need more reminders — with each use — that Dyson sucks, in more ways than one?

Turns out, the label shown above, as we now know, is fairly easily removed, so I suppose the joke is really on us, for leaving this comparative advertising on the product for more than a long while.

One of the dangers in affixing comparative advertising claims or content to the product itself may be, over time the claim might lose its original truth; perhaps that’s why the label is removable?

Over the years, we’ve written much about trademark bullying. When the mantle fits, and when it doesn’t. When a brand has a realistic view of its rights, and when the claimed scope is bloated.

We’ve never before written about “Ruby Tuesday,” neither the Rolling Stones’ song nor the struggling restaurant chain, until now — and both at the same time, so thank you Techdirt.

As reported by Munchies, MusicFeeds, and Timothy Geigner of Techdirt, the Ruby Tuesday restaurant chain is threatening trademark litigation against an Australian band, Ruby Tuesdays.

In a twist of double irony, Techdirt hangs the pejorative “trademark bully” name on Ruby Tuesday, for copying the Rolling Stones’ song title and then bullying an Australian band from using it too.

While the reported facts are incomplete and insufficient for judging the merits, one of the lines from the restaurant chain’s demand letter caught my eye, as it appears to impute bad faith:

“[T]he knowing adoption of a mark intending to play off a well-established mark is among the most egregious of trademark violations, warranting courts to apply the harshest of consequences.”

If you’re humming to the lyrics “yesterday don’t matter if it’s gone,” please still consider reviewing an early blog post gem about imputing bad faith, When Intent Matters in Trademark Matters:

“One of the unfortunate aspects of trademark practice is the permission that exists in the law to challenge the motives and intentions of people.”

“[T]his permission is frequently abused . . . when the strength of a case doesn’t seem like enough without injecting an unhealthy dose of emotion into the matter.”

“Even the pejorative “trademark bully” label . . . garners public sympathy while imputing evil intentions to the trademark owner aiming to enforce its rights.”

“Less emotion and more objective facts should drive decisions on the question of likely confusion. If a case screams bad faith based on the objective facts, fine, make the case, but recognize this is likely a rare case.”

“Imputing motives and intentions to people is a messy, dangerous, and emotional business, trademark types should honor the law’s permission to to explore proof of bad faith intent, but not abuse it.”

In other words, initial demand letters shouldn’t attack motives, instead objective, unlawful actions.

And, those tempted to hang the pejorative trademark bully mantle before knowing the facts and law should pause and recognize that hanging the name and mantle also attacks motives.

Having said that, brands, when you really do overreach there are consequences.

Keep in mind, you might just find the infamous trademark bully mantle hanging around your neck, whether the actual merits of the facts and law warrant it or not.

Ain’t life unkind?

Goodbye, Ruby Tuesday, in more ways than one . . . .