Unless you’ve been living under a rock this past week, you likely heard the story of Donald Sterling–vile racist billionaire NBA franchise owner–versus Adam Silver–white knight commish of the NBA working to free the world from the clutches of tyranny and racial oppression.  As usual, the full story is somewhat more complicated.  Sterling was a known quantity in the NBA for quite some time (i.e. everyone knew he was a racist, misogynistic jerk), but that never stopped players from playing for him, coaches from coaching for him, or minority women from dating him.  As for the commissioner’s office, while Silver is relatively new to his current position, he’s been working for the NBA since 1992 and working directly under prior commissioner David Stern until Stern’s retirement in February of this year.  Despite Sterling’s prior transgressions, nothing was done to discipline him within the NBA until this high-publicity event forced the league to take firm and decisive action lest it alienate a large portion of its fan base.

That, ladies and gentlemen, is the power of the market.  And we, the people, are the market.  Over the past three months, we, the people, have both witnessed and caused the “public execution” of two high profile businessmen.  In addition to Donald Sterling, there was also Brendan Eich-now deposed CEO of Mozilla.  Simply put, when we, the people, become enraged, the companies and organizations associated with the wrong-doers act.  Unlike petitioning our government (which seems to have become increasingly futile over the past decade), our voices are quickly heard and quickly responded to in the market.  It is an awesome power.

But with great power comes great responsibility.  The more power we have, the more reluctant and circumspect we must be in exercising this power.  Were Donald Sterling’s comments ignorant and offensive?  Yes.  Does Donald Sterling deserve public ridicule? Absolutely.  Does Donald Sterling deserve to be stripped of a billion dollar franchise that he has owned and built for 33 years based on these comments?  That’s a tougher question, as noted by many columnists, including prominent African-American columnists.  As viewed by J.A. Adande, kicking Sterling out of the league made it easier for everyone to avoid harder questions and soul-searching about the problem Sterling represents:

In the process, Silver let everyone off the hook for this episode. Deep inside, that’s what everyone wanted, as much as or even more than punishment for Sterling. The other owners won’t have to explain why they kept him in their midst — or, in some cases, why Sterling had a better record of hiring African-American head coaches and executives than they did. The Clippers players don’t have to explain why they’re still playing for him … or why they ever signed on to do so in the first place. Fans won’t have to rationalize subsidizing Sterling by paying for tickets.

Jason Whitlock noted that Sterling was essentially the victim of privacy invasion and mob-justice, and his ouster wouldn’t do anything to fix the underlying issues that allow racism to persist.  Whitlock also noted the possibility of dangerous precedent:

A right to privacy is at the very foundation of American freedoms. It’s a core value. It’s a mistake to undermine a core value because we don’t like the way a billionaire exercises it. What happens when a disgruntled lover gives TMZ a tape of a millionaire athlete expressing a homophobic or anti-Semitic or anti-white perspective?

A local African-American radio columnist in L.A., Larry Elder, went so far as saying it “completely unfair” for Sterling to lose his team over this.

Ultimately, as represenatives of “the market,” we need to make sure we are cognizant of the precedent our actions and outrage set.  By calling for Sterling’s head based on some backwards and offensive statements he expressed in private, we might be unwittingly creating some precedents that we’d rather not face in future circumstances.

– Derek Allen, Attorney –

When NBA owner Donald Sterling’s racist comments came out last weekend, they led to a lot of things, among them the decision by the NBA to finally release its previously secret constitution and by-laws.  (As an aside, it was particularly terrible to hear that someone at the highest levels of basketball holds such repulsive views.  I grew up in a small, rural town in Wisconsin (read: almost everybody in my town was middle-class and white) and I credit the game of basketball–which I spent way too much time playing growing up–with introducing to me to a diverse group of people that I might not otherwise have met, let alone shared blood, sweat, and tears with.  You would hope the people in charge of the sport would promote that type of thing, not throw sand in its face.)

While many people parsed the document to determine what type of punishment Commissioner Adam Silver could dole out to Donald Sterling, I immediately jumped to the part that explained how I could fulfill my life long dream of owning an NBA team, or at least receive a rejection letter from that NBA that I can frame and put in my office.

First, under Article 4(a), I have to “make a written application to the Commissioner specifying the city that the applicant wishes to represent in the Association.”  I love you Northeast Minneapolis, but Las Vegas here I (and my team) come!

Next, in clause (b), I’m told that “the Association shall have no obligation to consider any application that is submitted under this Article.”  No problem.  Once they hear that I’ve won dozens of titles as a GM on the NBA2k video game series, something tells me they are going to consider my application.  Plus the Commissioner and I went to the same law school, so I’m pretty sure we’d be tight if we ever met.

Clause (c) says that I have to agree to be bound by the NBA’s rules.  Unless there are rules against perming your hair, wearing track suits every day, and sporting gold chains so big that even Mr. T would be ashamed, I think I’m good here.

Under clause (d), I need to be “approved by the affirmative vote of not less than three-fourths (3/4)” of the owners already in the league.  I like to pride myself on my ability to, in the words of Jalen Rose, champagne and campaign, so three-fourths doesn’t seem like much of a barrier if I can get in a room with these guys.  After all, they did let Donald Sterling stay in the league for three decades.

That leaves only one clause, so sorry duetskateers, but it looks like my blogging days are over.  Let’s see:  clause (e) says that “each application for Membership shall be accompanied by a certified check in the amount of $1,000,000 (the ‘Application Fee’).”

Well then.  Steve, it looks like I’m going to need to insist on getting paid for these posts and I’m going to need a salary advance.  Don’t worry, it’s for a good cause.

–Ben Kwan, Attorney

Sure, I’ve indulged in the occasional “selfie.” (From now on, without quotation marks because, let’s face it, if Oxford called it the word of the year in 2013, it’s here to stay.)  But each one still gives me some measure of pause.

I sometimes ask, “why am I doing this?”  If we subscribe to the James Fanco school of thought, it’s for attention.  “And attention seems to be the name of the game when it comes to social networking.”

A Forbes contribution by David Sturt and Todd Nordstrom yesterday concurs.  The two endeavored to find statistical data about why some people love to hate the selfie – which would explain why selfies give me minor fits of reservation from time to time.  Needless to say, the two didn’t find much data.  But what they did cobble together was enough to reinforce a rather basic notion about human psychology.  The selfie illustrates that human beings like to be appreciated and recognized.  Sturt and Nordstrom, who regularly write about how people and leaders achieve extraordinary results, appear to give their stamp of approval to what the selfie can teach us about others (and the importance of that lesson in the workplace).

Funny how there’s an oxymoronic quality to that last statement.  The selfie teaches us about others.  Does that mean others are going to expect selfies from us?  In other words, if you aren’t taking selfies already, must you?

Again, James Franco, from his New York Times piece:

 “I am actually turned off when I look at an account and don’t see any selfies, because I want to know whom I’m dealing with. In our age of social networking, the selfie is the new way to look someone right in the eye and say, “Hello, this is me.”

So how often should a professional—like a lawyer/blogger with public Twitter and Instagram accounts—say “hello” with a selfie?  While those accounts may be more for personal publication and consumption rather than professional, it’s inevitable that professional counterparts will be checking out those feeds from time to time.

Franco writes that he subscribes to the “one for them” and “one for yourself” approach (in other words, a selfie every-other-post).  But that’s excessive for a non-celebrity.  My advice, if a bit nebulous: practice moderation.  Just like our boy, James Franco, I, too, would like to see who you are.  A smile and a look into the eyes can do a lot for a person’s image and brand.  So why not promote your approachability?  Display your cheer? Highlight your warmth?  Exhibit your engagement with interests and hobbies?

The trick is to not go overboard.  I follow a lot of my former colleagues and peers from the television news business on Instagram.  I think some of them go too far.  Admittedly, it’s a tight line to walk.  The television news business requires a fair amount of vanity.  The conventional wisdom there: look sharp, clean, and crisp so as to not distract your audience from the journalism (a trial lawyer should do the same).  But with any visual mass medium, there’s an element of wide recognition that comes with the territory (okay, I’m being euphemistic.  We’re talking about local celebrity!)  Some television personalities use Instagram as an outlet for their personal brand as local celebrities.  Ninety percent of their posts seem to be selfies.  Others use the social network as an extension of their craft – the occasional selfie but mostly posts about the subjects and stories they’re covering.  There’s probably a healthy balance that’s not one-for-one, but maybe something like one selfie for every three to four posts based on the journalist’s work.  For the record, I’m not being critical because there is an extreme tension for television news reporters.  In  a sense, their images are part and parcel to their employers’ brands.  But a journalistic tenet to which many adhere is “you are not the story.”

I’m not going to propose a ratio of selfies-to-non-selfies for lawyers.  It could get disgustingly indignant and preachy really quickly.  Just remember to keep toeing that line, acknowledging that too much vanity (or the mere appearance thereof) isn’t good for your brand, but lending a little bit of recognition of yourself to others is good for your brand.

With that, I bid you all “hello!”

A Selfie, err, #Selfie can be a good way to say hello in today’s highly visual digital world. But you should take a cue from me and be careful where you snap that picture — you might just reveal that you’re working from home at nearly 10 a.m. on a Wednesday.

– Aaron Keller, Managing Principal, Capsule

You may have plenty of excuses for missing FUSE this year. Perhaps budgets were cut in favor of quarterly earnings, learning is no longer important to your organization, or inspiration has been limited to watching TED videos between meetings. Whatever the reason, we’re not judging, just looking to help fill your knowledge gap on what you missed. So here it is: the slightly amusing and even more slightly inspiring version of the events at FUSE 2014.

Design Thinker as Economic Contributor: the economic value of design was pushed up from several fronts. The DMI economic value study was discussed in significant detail and other thinkers brought forth further evidence of the contribution design makes to the economic engine.

Wicked Speed of Retail: Design an Adaptive Behavior: Dave Moore spoke on the adaptive nature of running marketing, brand and design for Ethan Allen. Then, Simon Doonan, Creative Ambassador, Barneys gave the audience a retrospective on his window designs for retail, showing us all how he has adapted to culture and retail.

Decades of Design Innovation: the legacy of Nike in the world of design, innovation and creative thought is already written. Tinker Hatfield, VP Creative Concepts faced the audience by video conference and gave us a peak inside the large shoes he filled in the history of Nike. And, in a speech Phil Duncan, Global Design Officer at P&G gave us a great view inside the “chief” suite along with lessons on how we can keep the C-seat warm.

If this wasn’t enough, the CEO and Chief Design Officer of Pepsi Co, Indra Nooyi and Mauro Porcini (and his red shoes) made a visit to the FUSE stage. And, the most authentic representation of the Chipotle brand in William Espy’s speech on how they are changing the economics of better food sourced from better origins. Add to this list, The Associated Press, Gilt.com, David Carson, Colgate, SC Johnson, and many others.

After going back over this list of memories, photos, tweets and blog posts it occurs to me that the FUSE conference packs more inspiration for the investment than any other design, innovation or brand conference. Bold? Yes. Rational argument for attending next year? We hope. If you don’t agree yet, read the blog, browse the tweets. If you’re still suspicious, call or email me: 612-702-6286, akeller@capsule.us and I’ll talk you through this year and the previous three years of this inspired gathering of thinkers, leaders, academics and activists in design.

A couple of months ago you will recall that the USPTO’s Trademark Trial and Appeal Board (TTAB) held “Pretzel Crisps” generic for pretzel crackers.

Here are links to our previous coverage of the case:

It appears the TTAB’s decision will not be the final word on the matter, as last week, Princeton Vanguard gave notice it is appealing that unfavorable decision to the U.S. Court of Appeals for the Federal Circuit (CAFC).

The decision to appeal to the CAFC (as opposed to asking for a de novo trial in federal district court) is an interesting one given the CAFC’s SCREENWIPE genericness precedent — I’m thinking that will be a difficult case and precedent to avoid, but we’ll see how it goes.

Another consequence of selecting the CAFC as the reviewing court is the inability of either side to introduce further evidence in the case.

Our friend John Welch over at the TTABlog efficiently explains the CAFC’s genericness precedent this way (albeit in the ex parte context):

“[T]he PTO’s evidentiary burden in establishing genericness ‘is different depending on the type of mark an applicant seeks to register.’ For compound terms, it is sufficient to produce evidence ‘that each of the constituent words is generic, and that the separate words retain their generic significance when joined to form a compound that has ‘a meaning identical to the meaning common usage would ascribe to those words as a compound.'” In re Gould Paper Corp., 5 USPQ2d 1110, 1111-1112 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens). However, when a mark is “more in the nature of a phrase, the PTO ‘must provide evidence of the meaning of the composite mark as a whole.'” In re American Fertility Society, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999) (SOCIETY FOR REPRODUCTIVE MEDICINE not generic for association services in the field of reproductive medicine because where the mark is a phrase evidence that each separate term is generic is not sufficient).”

I’m calling “Pretzel Crisps” a compound term governed by In re Gould Paper Corp., not a phrase governed by In re American Fertility Society, do you agree?

In the end, I’m not sure it really matters, as the TTAB also held it would have found “Pretzel Crisps” generic under either test, given all the evidence of record.

How do you come down on this one?

Will the US Supreme Court’s decision in Daimler A.G. v. Bauman affect where a plaintiff can sue a defendant for trademark infringement? In general, plaintiff’s prefer to sue defendants in their backyard. Specific jurisdiction could be based on a defendant’s “minimum contacts” with a state so long as the claim asserted relates to those activities and even though the defendant lacked a physical presence in the state. General jurisdiction was not based on minimum contacts and only existed when a foreign company’s continuous corporate operations within a state are so substantial and of such a nature as to justify suit against it on causes of action arising from dealings entirely distinct from those activities.

The Court’s decision in Daimler changed the standard for general jurisdiction, which now requires that the defendant’s operations within a state make it “at home” in the state. What level of operations make a defendant “at home” will be determined in the courts in subsequent years. However, one territory is certain, a defendant is “at home” in its state of incorporation.

Because of the territorial rule in Dawn Donut, general jurisdiction generally does not apply to a trademark infringement case. However, whether courts will look to the heightened standard in general jurisdiction when deciding specific jurisdiction remains to be seen. Jurisdiction used to be an issue that was taken for granted. After the Daimler decision, it is an issue that needs to be explored in detail when conducting any litigation planning.

Today is Take Our Daughters to Work Day, which I thought was a lost day but apparently has been re-branded to the more gender-neutral “Take Our Daughters and Sons to Work Day.”  Upon discovering that I happened to select this day for one of my blogposts during the year my dad retires, this post seemed destined for something a little different.  I hope you’ll indulge me.

When I am downtown Minneapolis, I am often reminded about dad & daughter days at the office – and there were many more visits other than just the fourth Thursday in April.

For much of the time, “dad’s office” was one of Minneapolis’ “Mad Men” agencies in the 1980s & 1990s. There were lavish parties (even for us kids), a classic Porsche installed in the office lobby with a crane before the building was finished, free fountain soda(!), free magazine subscriptions, typewriters where I would practice my keystrokes on envelopes for Kelly and Marti – and incredibly talented people proudly doing creative for a really spectacular list of clients.  The picture below is from an Adweek story in 1992 (I’m credited simply as “daughter”), and it is one of my favorite pictures of me and my hipster, bike-commuting father.   The gavel on the legal pad also is an eerie foreshadowing of “collaborations in creativity and the law.”

Friends routinely ask me if I watch Mad Men, and they often draw parallels between the show and their perceptions about scotch-drinking lawyers.  My answer is “I did at first, but it hits a little too close to home.”  From a young age, I saw the fast-paced, cutthroat environment of the ad agency world.  In real life, these are people who say things like “it’s not enough to be the winner, there also has to be a loser,” as if they are in a court battle. I watched and overheard stories about people who lived the Mad Men lifestyle, and I saw the real consequences of that life.  If my dad were not the man that he is, my life easily could have been much different, as Mad Men reminds me. I am grateful for the experiences of observing my dad at work. Dad taught me a lot about working in a fast-paced, “Mad Men” world – without being Don Draper. Here are a few things that I’ve learned:

  • Family always comes first.  
    Whenever my sister or I would call my dad’s office and my dad was in a meeting, apparently my dad would abruptly end the meeting to call us back and then reconvene.
  • Anytime you put your brand on something, it should be done thoughtfully, with purpose, and without editing.  
    My dad has been known to be a bit of a “logo cop.”  He ensures brands are used consistently and demands excellence in effort.  It takes years of effort to build a strong brand, and one small misstep to set it back.  This goes not only for your client’s brand, but for your company and your own personal brand.
  • Never sacrifice your principles for your paycheck.  
    One of the things that I admire about my dad is his integrity and his willingness to always do what he believes is in the best interest of the company or others, even if it is unpopular.  My dad once told his boss that he would never work on campaigns for cigarettes or for gambling (at least that’s how I remember it – maybe this was really a lesson in disguise about how to avoid being grounded for life).  I’m not sure whether Don Draper really had any principles to sacrifice, and he certainly needed the Lucky Strike campaign.
  • Understand that you and those you work with probably have been “raised by wolves” at some point. 
    My dad is fond of saying that he was “raised by wolves,” for instance after leaving the fast-paced ad agency lifestyle for a marketing director position on Main Street in Red Wing.  We are all products of our experiences, and inevitably in a high pressure work environment like the creative world or the legal one, you pick up certain “skills.”  You know, like not wanting to use a seemingly dead language in every brief.  That prior training may lead to some conversations that may not be well received, or some decisions that may make more less than others.  Understanding that they may have been raised by wolves, you can move past the puffery and get to real solutions.

In a few weeks, the only office of my dad’s that I will be visiting will be his office in the basement at my parents’ home (well, and Target Field) — but maybe we’ll soon have to create a Take Our Dad to Work Day.

The James Bond franchise is one of the most well-known and successful movie franchises in history. There are few characters who reappear in 23 full length movies, let alone have the 23rd movie reach the top of the box office charts. The James Bond franchise, however, has obtained a unique status among average viewers and movie critics alike and the current owner of the rights to Ian Fleming’s creations, Danjaq, LLC, rightfully protects the intellectual property associated with the film. Just a few weeks ago, Danjaq played the part of Dr. No, and filed a lawsuit against Universal Studios based on Universal’s reported development of a spy movie script entitled Section 6. The script is set in the early 1900s and spotlights a British spy as the British intelligence agencies create what is to become MI-6. Universal Studios purchased the script from Aaron Berg.

Danjaq contends that, based upon the initial script as purchased, that the script infringes upon Danjaq’s rights in the James Bond movies, scripts, and characters. Danjaq goes so far as to say that the script is a “knockoff” and a “bootleg.” Although the movie (or script) has not been finalized, let alone produced, Danjaq has requested damages and a preliminary injunction to halt the pre-production of the film.

Whether a creative expression constitutes copyright infringement is a notoriously difficult inquiry. The basic test requires the court to make an objective comparison of the two works to determine whether the protectable elements of the works are substantially similar. Courts asks whether the total concept and feel of the work are substantially similar, examining the theme, setting, characters, plot, pace, time sequence, and any other relevant elements. However, copyright protection does not extend to ideas nor to basic general plot points that flow directly from a particular concept or idea. For example, the Second Circuit rejected a claim that the Jurassic Park novel infringed an earlier written children’s book series entitled Dinosaur World, reasoning that “although both works share a setting of a dinosaur zoo or adventure park, with electrified fences, automated tours, dinosaur nurseries, and uniformed works, these settings are classic scenes a faire that flow from the uncopyrightable concept of a dinosaur zoo.”

How strong is Danjaq’s case against Section 6? The complaint is heavily redacted, so it is difficult to say. A number of the claimed substantial similarities fall squarely within the scenes a faire category. The fact that the main character is a “tuxedo-clad British secret agent. . . on a mission to save England from the diabolical plot of a megalomaniacal villain” necessarily flows from the unprotectable idea of a British spy story. The use of characters such as the “head of British Intelligence,” gadget-developing scientists, the villain’s henchmen, and “young beautiful women” are also common characters. The Complaint also points out in the script, the main character introduces himself by his last name first: Duncan. Alex Duncan.

However Danjaq can take some solace (may I suggest, a quantum?) in a few specific portions of the dialogue in the allegedly infringing script. The Complaint suggests that the script uses the phrases “license to kill,” “his majesty’s secret service,” and reference to the spy as a “double-o agent.” According to Danjaq, this terminology is not based on any historical use, instead, they claim, Ian Flemming originated each of the phrases.

After taking out all of the unprotectable expression, are these similarities sufficient to support a finding of “substantial similarity?” It’s certainly possible, depending upon how the movie portrays them. Yet if the claimed infringement is merely the original Section 6 script, it seems highly unlikely. Perhaps if the phrases referenced above are used prominently and repeatedly throughout the script, in a manner that makes them integral to the story, then perhaps. However based on the redacted complaint, the scripts share little more than many of the other spy novels, movies, and television shows, from The Bourne Identity and Red, to Tinker, Tailor, Soldier, Spy and Get Smart. Each of these put their own unique spin on the traditional spy story. Section 6 is described as telling the story of the development of MI-6, set in the early 1900s between the two World Wars. The setting and plot are likely to depart dramatically from the cold war stories of the James Bond franchise.

There are likely numerous other spy movies and novels that include a number of the same elements. Feel free to prove your status as a movie/novel buff by posting the most similar non-James Bond spy story in the comments. Or you could post your own opinion as to whether Danjaq has a case for substantial similarity between the works. Personally, unless there is something else in the redacted portions which were for the court’s eyes only, I think Danjaq is reaching. Over Reaching.

– Brent Carlson-Lee

To quote Mark Prus, Principal at NameFlash, Frankenames are “names created by slamming two or more word parts together to make a new name. This would include a name like “Toasterrific” (toaster + terrific).” See full article here.

Despite his warning, the proliferation of Frankenames continues.

In fact, I am an owner of a Frankename trademark, Pretzel’tizers. While I don’t love the name, consumers quickly and easily understood the meaning. It’s an appetizer made out of pretzels. I also tested Pretzioli (Pretzel Ravioli) which was quickly understood by only about 50% of the consumers. The other 50% didn’t grasp the meaning and didn’t put in any effort to do so. And to quote Mark again “no matter how clever you think you are being, consumers really don’t care and won’t work to get the meaning.”

Here are some particularly bad Frankenames I have encountered recently.

If you need to define your name in parentheses, it’s probably not a good name.

I didn’t know frying pans could be organic.

Why?

On April 30, 2014, the Supreme Court will be hearing oral argument in the case of Limelight Networks, Inc. v. Akamai Technologies.  The question presented and to be decided is incredibly significant for future patent infringement cases:

Whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under § 271(a).
(See QP Report here.)  As you can see from the docket report, numerous amicus briefs have been filed, demonstrating the significant interests at stake in this case.  Since 2007, patent infringement law has required that all steps of a method patent be performed by a single entity for there to be infringement.  A party was liable for direct infringement where it performed all steps of the method itself, and a party was liable for inducing infringement where it induced another individual actor to perform all steps of the method.  Suffice it to say, this led to a gigantic loophole where one person or entity would perform the first, say, three steps of a method patent, and a final end-user would perform the last step.   In the Akamai case, the Federal Circuit held for the first time that a party could induce infringement by performing some of the method steps itself, and then directing the end user to perform the final steps, if the person directing the end user was aware that there would be infringement:
Limelight would be liable for inducing infringement if the patentee could show that (1) Limelight knew of Akamai’s patent, (2) it performed all but one of the steps of the method claimed in the patent, (3) it induced the content providers to perform the final step of the claimed method, and (4) the content providers in fact performed that final step.
(Full decision here.)
While the expansion of the induced infringement standard created by the Federal Circuit in Akamai seems to make logical sense, there is concern in the industry that it will unseat settled expectations in the marketplace.  This could be particularly disruptive in industries that rely heavily on method patents, such as internet technology and financial services.  The argument and the subsequent decision will be much anticipated events.