If you’ve paid attention to any billboards in the Twin Cities over the last year or so, you’re probably wondering why I haven’t discussed this one yet, knowing my passion for billboard ads:

The Kris Lindahl billboard ads — especially this one —  are hard to ignore. They are almost as ubiquitous as a certain iPhone Xs ad. Plus, this one strikes a pretty distinctive wingspan pose.

Apparently there is an art or science behind poses for real estate agents, but as far as I can tell from a Google search, none appear to cry out “wingspan” like Kris’ does, so is the pose ownable?

Seems pretty clear from how his name is used as a mark on this billboard that Mr. Lindahl’s eponymous Lindahl Realty firm is on the way to registering his personal name as a service mark.

While it isn’t always a cake walk, in obtaining federally-registered service mark rights in a personal name, what I’d really like to see Mr. Lindahl attempt next is registration of his wingspan pose.

What would you rate his chances, putting aside whether you like the above billboard ad or not?

A few months ago, a federal district court in New York held that several publishers violated a photographer’s copyright when they embedded a photograph from one of the photographer’s Twitter posts. Goldman v. Breitbart News Network, No. 17-CV-3144 (KBF) (S.D.N.Y. Feb. 15, 2018). The photographer, Justin Goldman, had sued Breitbart News Network, TIME Inc., The Boston Globe and other online publishers last year for copyright infringement, alleging they displayed in various online news stories, without permission, a photograph he took of New England Patriots quarterback Tom Brady, which he had posted on Twitter.

In their defense, the publishers invoked the “Server Test,” based on the prominent Ninth Circuit decision, Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), which held that the unauthorized display of Google Image search engine results, of photographs stored on third-party servers, did not constitute copyright infringement, provided that such images were not hosted on Google’s servers. Essentially, the Server Test provides that website publishers are not liable for copyright infringement if they embed content hosted on third-party servers, but not their own servers.

But in the Goldman case, the New York court (under the jurisdiction of the Second Circuit), questioned the validity of the Ninth Circuit rule, because the court concluded that the Copyright Act does not require physical possession of the copyrighted material. The court relied on Supreme Court precedent supporting that merely transmitting copyrighted material can constitute infringement, regardless of “invisible” technical distinctions regarding the means of the infringing display or distribution, see American Broadcasting Co.s, Inc. v. Aereo, Inc., 134 S. Ct. 2498 (2014). Therefore, the court declined to apply the Server Test, and concluded that the publisher defendants “violated plaintiff’s exclusive display right [and] the fact that the image was hosted on a server owned and operated by an unrelated third party (Twitter) does not shield them from this result.”

Furthermore, the court emphasized a “critical” distinction with Perfect 10 regarding the “paramount” role of the user. The web users in Perfect 10 were required to click on the thumbnail images in the Google Image search, in order to see the full-size images hosted on third-party servers. By contrast, in the Goldman case, visitors to the defendants’ websites would immediately see the full-size image, without any volitional act of clicking to connect to a third-party server.

On March 19, the district court granted the publisher defendants’ motion to certify the decision for interlocutory appeal to the Second Circuit, acknowledging the parties’ representations that the decision created “uncertainty for online publishers” with a significant “impact beyond this case” due to the popularity of Twitter and “retweeting.” Some commentators, such as the Electronic Frontier Foundation, suggest that the Goldman decision threatens in-line linking and, if followed by other courts, could require monumental changes to online news publishing. One amicus brief in the New York case also predicted that the Goldman ruling will “transform the internet as we know it.” While some of these gloomy predictions may be overstated based on a single district court decision, the appeal to the Second Circuit will certainly be closely watched, so stay tuned for updates.

 

What would Mother’s Day be, at least in Minnesota, without the fishing opener near by?

What would another fishing opener be without Rapala’s distinctive slate of billboard ads?

Here is an engaging pair of billboard ads currently running, if you’ve seen others, let us know:

My personal favorite between them would be Wassup, dock? — love the double meaning and nod to the Warner Brothers and Bugs Bunny trademark saying to Elmer Fudd, What’s Up Doc?

What’s the other meaning to Wassup, dock? One of my sons tells me that bass like to hang around under docks, so the friendly little crank bait is just getting acquainted with his/her surroundings.

Which one do you like better, lighting aside? And, by the way, what is your all-time favorite from the annual Rapala line up that we’ve been covering for a whole ten seasons now?

Rapala’s “More Hits Than Google” Billboard Update (Photo Included) (2009)

Good Bye Google, Hello Whudjagiddumon? (2010)

Rapala Taunts a Monster? (2011)

Rapala: Happy Fishing on Mother’s Day (2012)

Rapala Billboard Ads Continue to Engage (2013)

Eat More Walleye? (2014)

Top Ten Questions About Rapala Minnocchio (2015)

I Get It, Rapala Will Fill Up Your Fish Cooler! (2016)

Rapala’s Public Service Announcement? (2017)

What would this time of year be without us sharing and discussing the Rapala billboard ads?

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?

Remember this North Memorial Health billboard ad — sporting a plain and literal Google reference — that we wrote about a few months ago, where nominative fair use was pretty clear to me?

Well, a new set of North Memorial billboard ads rolled into to the Minneapolis skyway system, just in time for Super Bowl LII, with essentially the same message, but without a Google mention.

Do you think Google was behind North Memorial’s move away from the Google reference, or was it part of the original plan to grab attention, then migrate to a more generic online search mention?

Does North Memorial showing it is able to communicate essentially the same idea without Google’s help impact the nominative fair use analysis? So, how do you come down on this one?

In case you’re wondering why I’m not writing about Super Bowl LII and the television commercials, as has been typical here on the day after, let’s say I’m still letting it sink in, so stay tuned.

North Memorial Health must be spending significant advertising dollars at the moment, with a variety of ads appearing all over the Minneapolis skyway system, above is one current example.

In addition, there are a series of humorous and sarcastic TV ads that were designed to poke the bear of our broken health care system, congrats to Brandfire on their creative work here.

The current ad campaign follows the health system’s rebrand and slight truncation earlier this year, from North Memorial Health Care to North Memorial Health:

“The brand campaign consists of TV, out of home, digital and print advertisements. It pokes fun at the industry by showing experiences of customers and attitudes of healthcare that are universally frustrating.  The print and outdoor advertisements also demonstrate that North Memorial Health accepts its share of the blame, but commits to working harder to deliver an unmatched experience for the customer.”

So, I guess, if patients admit to having Googled their symptons prior to their appointment, they will no longer be scolded for doing so by doctors, nurses, and other health care providers, right?

But, what about the glaring Google reference in the above skyway ad, did North Memorial Health need permission from Google for the gratuitous reference?

You may recall, a few years back I wrote about Google surviving a genericness challenge (Tucker and Jessica have provided updates), drawing attention to possible meanings of the word Google:

“The word google has four possible meanings in this case: (1) a trademark designating the Google search engine; (2) a verb referring to the act of searching on the internet using the Google search engine; (3) a verb referring to the act of searching on the internet using any search engine; and (4) a common descriptive term for search engines in general.”

Seems to me, in the North Memorial Health ad shown above, Google could be understood as the verb meanings in both (2) and (3), as the capitalization doesn’t point uniquely to Google.

There is little doubt that no Google permission is required for the ad, because nominative fair use ought to apply, given the plausible, but not required meaning of the above definition in (2).

More interesting to me though, is the question of whether classic fair use could apply as well to the Google use, given the plausible, but not required meaning of Google in definition (3) above.

If so, I’m not sure I’ve encountered an example or case before where both classic and nominative fair use applied, perhaps this is a first, so what do you really think, without Googling it, of course?

— Jessica Gutierrez Alm, Attorney

Many of us have been eagerly waiting to see whether the Supreme Court would consider Google’s potential genericness.

As Martha explained, the case began in 2012, after petitioners Chris Gillespie and David Elliot attempted to register hundreds of web domains that included the word “Google” together with a variety of different people, products, and brands (i.e., googlestarbucks.com).  Google objected to the registrations, and Elliot filed a complaint (joined by Gillespie) in federal district court.  Elliot and Gillespie argued that “google” had become a generic term due to its common use as a verb.  The district court ruled against Elliot and Gillespie on summary judgment.

On appeal, the Ninth Circuit affirmed the lower court’s opinion.  As Tucker discussed recently, the Ninth Circuit held that “verb use does not automatically constitute generic use.”  The court clarified that the mere act of using the term as a verb does not render the mark generic unless it is used to refer to a type of good or service (i.e. an internet search generally).

Without comment, the Supreme Court denied Elliot’s and Gillespie’s petition for review.  (Notably, of the 7,000-8,000 petitions filed each year, the Supreme Court grants and hears argument in only about 80 of them.)

While Google is surely celebrating the Supreme Court’s refusal to hear the case, Band-Aid, Xerox, and Rollerblade are cheering right along with them, while cellophane, aspirin, and thermos look on with envy.

Well, it’s official, the 2017 Minnesota State Fair is almost in the books now, it came and went, without the longstanding Original Deep Fried Cheese Curds stand (notwithstanding a heroic #savethecurds campaign); it was instead replaced by Big Fat Bacon, shown above.

Love the prominent use of the TM on the signage, even if it isn’t backed by a federal trademark application, notwithstanding a multitude of other Big Fat players in the trademark world, including, but not limited to, Big Fat Lye for soap, Big Fat Pita for a restaurant, Big Fat Cookies for cookies, Big Fat Burritos for a restaurant, My Big Fat Greek for a restaurant, and Big Fat Sausage for sausage, all enjoying peacefully-coexisting federally-registered status.

I’m left wondering whether the Big Fat Bacon team might be apprehensive about seeking federal registration in light of the Big Fat Sausage registration, if so, let’s just say, where there’s a will there’s a way. Another suggestion, for the suggestion box, next year, how about a well-done crispy Big Fat Bacon option, needing no stick or other pork-belly support?

And, the business of recycling branded product containers remains alive and well at the Minnesota State Fair, apparently not time for night, night yet:

Finally, a pair of his and hers Google t-shirts — unlikely to both be worn, at least peacefully, in the same home at the same time:

We couldn’t find a third option, and passed. For the latest on the trademark challenge to the Google trademark, on genericness grounds, check out the report at Trademarkology.