Well, here we are — a mere ten years ago today — when we dove head first, or at least, dipped our collective toes into the vast intellectual property blogging pond.

Intellectual PropertyIP — is italicized today, because there is currently a belief among some of those we respect, that trademarks aren’t intellectual property.

According to our friend Ron Coleman of the Likelihood of Confusion blog:

“[N]othing about trademarks is brain-born other than what we might fairly call the ministerial choice to associate a given trademark with a good or service. That process may involve, and often does, a lot of thinking, creativity and intellection. But none of that invests the trademark itself — which may, in fact, be completely lacking in creativity (“Best,” “Ford,” “American”) — with the quality of intellectual, mental, creative or original content such that it should be deemed ‘intellectual property.’”

There’s a lot to unpack there, but until then, just so you know, I’m firmly on the other side of the fence, viewing trademarks as being a recognized subset of the convenient category label commonly referred to as “intellectual property.”

Stay tuned on this topic, there is much more to say, much more than there is time left in this 10th birthday to do the topic justice, but for now, I’ll simply rest with a notable quote from branding icon, Walter Landor:

“Products are made in the factory, but brands are created in the mind.”

While trademarks aren’t brands, not only can trademarks be bought, sold, licensed, and leveraged as property, trademarks protect brands, and they embody all the intangible goodwill of the portion of a business associated with a particular mark.

Dare I say there is nothing ministerial about the brain-born brilliance Landor brought to his craft as a designer, nor is there mere ministerial contribution to the brilliance and creativity that our many non-lawyer guest bloggers have brought to their work over the last decade. Aaron? James? Mark? Agree?

We’ve written a lot over the years about picking a side, the art of taking a position, not waffling; one of the things we love about Ron is he is unafraid to take a position, to plant his flag firmly in the ground — that’s what we’ve tried to do too, and what we intend to continue to do going forward.


 

Here’s a question, what purpose is served by excluding trademarks from the definition of what constitutes intellectual property? Here’s another, who gets to decide?

Recently, I attended the University of Minnesota’s celebration of “40 Years of Gopher Justice,” an event honoring the institution’s University Student Legal Service (“USLS”), a non-profit organization that provides UMN students with free legal services. The celebration included a panel on a contemporary topic in student advocacy: “revenge porn.” The topic isn’t relevant just for students, though. One may recall that just last year Hulk Hogan successfully sued the now-defunct gossip news site Gawker for its dissemination of a sex tape depicting him and another woman. Hulk Hogan eventually settled the case with Gawker for $31M.

Hulk Hogan testifies in his suit against Gawker. Image credit: Slate.

The USLS celebration panel hosted three experts on revenge porn, including two attorneys knowledgeable about Minnesota’s new suite of civil and criminal remedies that went into effect in late-summer 2016. See Minn. Stat. §§ 604.31 (civil), 617.261 (criminal). In response to my question about the civil action, one of the attorneys remarked that he believed the Minnesota law created a “copyright” to one’s image, enabling that person to prevent unwanted dissemination and exploitation of pictures and recordings depicting the person in a sexual way. For the sake of persons hoping to prevent and recover damages for unwanted dissemination under Minnesota’s new law, I hope he’s incorrect; after all, the Copyright Act preempts all state laws that overlap with federal protections over the subject matter of copyright, see 17 U.S.C. § 301(a)—which includes photographs and videos, see 17 U.S.C. § 102(a)(5)-(6).

In order to bring a civil action for non-consensual dissemination of private images (the “revenge porn civil action”) in Minnesota, (1) the defendant must have disseminated a private image without the plaintiff’s consent, (2) the image must have been of a sexual character, (3) the plaintiff must have been identifiable in the image, and (4) the image must have been obtained or created under circumstances in which the plaintiff had a reasonable expectation of privacy. See § 604.31, subd. 1. If these four elements are shown, the plaintiff may recover general and special damages, including financial losses resulting from the dissemination of an image and damages for mental anguish, disgorgement of profits made from dissemination, civil penalties, and attorneys’ fees. See § 604.31, subd. 3. See the Minnesota Senate’s overview of this law for more general information about the revenge porn civil action.

What’s interesting about this cause of action is that it’s a blend of both (1) the right to privacy and (2) an intellectual property right called the right of publicity. Right to privacy claims (for invasion of privacy) typically remedy the unjustified exploitation of one’s personality and injury to privacy interests that are emotive or reputational. Right of publicity claims, on the other hand, combat the unauthorized use of one’s identity in commercial advertising and compensate persons for the value of the commercial use of that identity and/or reductions in the value of the cultivated identity. Minnesota’s revenge porn civil action appears to be a specific hybrid of both kinds of claims; it protects both privacy and property interests in a person’s identity and provides relief in the form of both reputational and economic damages, as well as injunctive relief.

Coincidentally, when Minnesota passed its revenge porn bill in 2016, it was also considering the codification of the right of publicity under a bill entitled the “Personal Rights In Names Can Endure” (“PRINCE”) Act. But the bill’s sponsor later pulled his draft after critics expressed concerns about the bill’s broad language. One commentator questioned whether such a bill was necessary in light of Hulk Hogan’s victory. Minnesota’s revenge porn civil action arguably combined two separate claims into one, but it also expanded the scope of recovery under either claim so as to now include multiple forms of relief.

Whether the revenge porn civil action will be utilized to any significant degree is as of yet uncertain. The USLS celebration panelists noted—and a brief case search confirms—that courts have yet to extensively apply and interpret the law. From the face of the law, though, it appears that Minnesota is now a hospitable forum for victims of revenge porn, especially celebrities with economically-valuable identities. And due to the state’s broad remedial scheme, I would not be surprised if we eventually see large cases like Hulk Hogan’s in Minnesota courts.

On this Cyber Monday, I’m left wondering, will we ever have a day when the metrics and automated tools available are so accurate and reliable that intangible assets like brands (and trademarks) regularly will be valued, bought, and sold online?

At rock bottom, a brand’s value is at least what another — in an arm’s length transaction — is willing to pay for it.

At least, because at any given moment, there may be no buyers willing to pay the brand owner’s lowest price, so in that instance, the owner values it more than others and keeps it, at least for the time being, until a buyer emerges who shares the same value determination.

The far more difficult question to answer is to put an actual number on the value of a brand, explaining exactly what factors must be considered to determine value.

No doubt, accountants play an important role in deciding, but they cannot and should not do so in a vacuum without collaboration from other relevant disciplines.

To that point, just last week, Branding Strategy Insider published an interesting piece on Brand Equity and the Center of Value. Last month Brad VanAuken also wrote at BSI about brand value: “Ultimately, brand value is a perception. It is a perception of the ratio between benefits and cost.”

Yet, Seth Godin appears to be skeptical of many beliefs about brand value:

“The vast majority of products that are sold are treated as generic by just about everyone except the naive producer, who believes he has a brand of value.”

“If we (the user or the observer) can’t tell who made it, then there’s no brand. That’s the distinction between generic and specific…”

Actually, that is one more place where trademark types might differ, because in our world, knowing who puts out a product under a certain trademark is not required to own the legal right to exclude others. Trademarks exist even when their owner is anonymous or unknown.

And, while the value of an underlying trademark is not necessarily coextensive with the brand’s overall value, it must be considered, as one of the important intangible assets forming the ultimate value of a brand.

As Brad Walz articulated here earlier this month, a trademark strength analysis is an important consideration to determining a brand’s value. Part of trademark strength would be the legal ability to expand the use of a brand name and should be considered too.

In addition, the extent and validity of registered rights must be considered. For example, if a brand owner has begun to expand with sales and distribution overseas, and it has laid the legal foundation for not being excluded from using the brand name in those countries (by winning the race to the trademark office in those countries), these valuable legal rights must be considered in the overall value of a brand.

At a minimum, it seems to me, marketing types, trademark types, and other intellectual property types, must be part of the team to determine a brand’s value.

Who else must be represented at the accountant’s table to arrive at an accurate and reliable number for a brand’s value?

NoPhotosWell, it is opening day at the 2015 Minnesota State Fair, it was a great day, perfect weather, thank you very much!

Happy to see that Lulu’s Public House is going strong, she appears to have some new food items this year, and they look amazing — a Minnesota Wild Rice Benedict Muffin and a Mac & Cheese Cupcake! Can’t wait to try them.

We’re not sure what happened to the lawsuit, the trademark infringement suit that was filed last year by Lulu’s Market & Deli from St. Paul, anyone know?

As you know, from following this blog over the past more than six years, intellectual property issues abound at the State Fair, so I couldn’t resist defying the signage at one vendor in the West End, and snapping the above shot to make a point.

Having said that, as a courtesy, I respectfully cropped out the yard and exterior sculptures that I presume the sign was intended to address — such things can, of course, be subject to both design patent protection and copyright protection, and even non-traditional trademark protection, assuming the configuration and/or trade dress is non-functional and distinctive.

Trade secrets would not apply since these sculptures are on public display. I’m thinking the vendor probably is focused on copyright, if so, the sign doesn’t constitute a valid copyright notice, but most probably get the point. Please is present perhaps in recognition of fair use?

The ultimate point here is, everyone is thinking about intellectual property these days, but few understand it, that’s why we’re here, so thank you for spending time with us.

Those three words are pretty bold, especially when we’ve only been around just over 6 years:

“‘Of all time’ is used to make a comparison, stating that something is the best throughout the ages.”

We’re pleased to report that DuetsBlog continues to be recognized as one of the top twenty-five intellectual property law blogs “of all time” — or, we might way, “throughout the ages.”

Hat tip to the Copyright Litigation Blog:

“Justia’s Blawgsearch Ranks the “Most Popular” intellectual property law blogs.  Out of 461 intellectual property law blogs listed in total by Justia, here are the top 25 of “all time.”  Visiting each one shows you just how alive thinking is in patent, trademark, copyright and related fields and how the blogosphere opened up this field of interest to public scrutiny and healthy debate.”

And another hat tip, to our friend Ron Coleman over at his Likelihood of Confusion blog.

We’re honored, as the graduating-kindergartner among the bunch, to be included in such impressive and adult company of lawyers . . . .

We’re not too shabby when it comes to rankings in the branding world either (top thirty “at the moment”) . . . . and no worries, we have no intention of resting on our laurels.

That was the substance of my talk last Friday in St. Louis at the Public Relations Society of America’s 2015 Midwest District Conference. A great conference, lots of talent in the house.

One of the attendees had very high praise, remarking afterwards that it was “the best presentation on IP” she has experienced — “very substantive, but understandable.” Thanks!

If you’d like a copy of my slides, just let me know. Better yet, if your organization would like to have a lunch and learn around this topic, let’s try to get it on the calendar soon.

The highlight of the two day conference, for me, was Fred Cook’s keynote address called “Improvise: Unconventional Career Advice from an Unlikely CEO,” — Cook is CEO of Golin.

Loved Cook’s advice to “play it by ear,” “go all in,” and “improvise” by taking something ordinary and making is special, and the Golin “unternship” was nothing less than inspiring.

Tom Wilson, Monsanto VP Global Communication and Corporate Marketing, also delivered a powerful and candid presentation about “Engaging With Audiences Beyond Your Customers.

Sandi Straetker, APR, Principal of PRiority Relations, LLC pitched high energy and practical advice on “How to Win with the Media,” complete with numerous baseball metaphors.

Kate Bushnell, President of the Grossman Group gracefully delivered helpful advice and valuable insights in her “Top Ten Consulting Mistakes Communicators Make” presentation.

Ron Waterman, VP of Communications for the St. Louis Cardinals, demonstrated the highly successful use of today’s communications tools to connect, inform and engage Cardinals fans.

Debra Bethard-Caplick, MS, MBA, APR, and Managing Partner at QuickSilver Edge Strategic Communications, persuasively explained how to create behavior change, while discarding the all-too-common “we want to raise awareness” reason for a PR campaign.

The most difficult and challenging aspect of the two day conference was trying to decide between 3-4 amazing breakout sessions at the same time, so if I didn’t mention your session, I’m sure it was great too, but I probably just missed it!

We’ve spilled a lot of digital ink here over the past several years discussing the protection of non-traditional trademarks. We’ve also written about the importance of layering various intellectual property rights (trademark, copyright, and patent) to accomplish the competitive goals of a business. And, we’ve enjoyed writing about non-traditional vodka branding here and here. Today, we have it all come together at once.

A federal lawsuit filed in Minnesota a couple of weeks ago illustrates very nicely the creative layering of intellectual property rights that are available to many brand owners, not just distilled spirit and vodka brand owners.

In Globefill Inc. v. Maud Borup, Inc. (complaint is here and exhibits are here), Globefill (who sells vodka in skull-shaped bottles) brought several IP claims against Maud Borup (who apparently sells cocktail mixers and hot sauces in skull-shaped bottles). I suspect the lawsuit resulted from Maud Borup’s recent Halloween features.

Globefill asserted infringement of its federally-registered skull bottle trade dress rights and its common law rights in the skull bottle trade dress, in addition to infringement of its registered copyright in the 3 dimensional sculpture embodied in the vodka bottle packaging, and infringement of the ornamental design features covered by a design patent (all issued rights shown in the exhibits attached to the complaint).

Specimen for U.S. Trademark Reg. No. 4,043,730
U.S. Trademark Reg. No. 4,043,730

The beauty of the layering of IP rights lies in the fact that each asserted IP right offers a different path to accomplish the same end goals of ending the infringement and unfair competition while also providing a monetary award to the brand owner.

For example, having copyright and patent rights will serve as a strong basis for injunctive relief even if there is no likelihood of confusion (which is required to establish trade dress infringement), so for those IP claims, no need to focus on whether hot sauce and vodka are sufficiently related to establish the requisite confusion for the trade dress claims.

Since the trade dress is federally-registered, the burden shifts to Maud Borup if it wants to defend the trade dress claims on functionality grounds. Without a registration, Globefill would have had the burden of establishing non-functionality of the skull design vodka bottle.

To establish copyright infringement Globefill will need to prove Maud Borup’s access to Globefill’s bottle and substantial similarity of the three dimensional skull works. This uniquely then opens the door to statutory damages and an award of attorneys fees to the prevailing party. On the other hand, with the patent and trademark claims, actual damages must be proven (as opposed to more easily obtained copyright statutory damages), and an award of attorneys fees is only possible for exceptional cases with patent and trademark claims, merely prevailing it not enough (as it is with copyright claims).

And, let’s not forget the boxcar numbers that can result from proving design patent infringement.

Of course, the different proofs and remedies resulting from Globefill’s intelligent layering of IP rights on a single product is far more complex than what I’ve noted here, but I think you get the point — there’s more than one way to obtain injunctive relief and more than one way to obtain monetary relief, based on essentially the same conduct by the defendant.

So, creative layering can be a beautiful sight, but just yesterday, John Welch, over at the TTABlog highlighted a case where the layering of IP rights didn’t go as well for the brand owner.

In that case, the brand owner fell into the all-too-common trap we have warned about for a long time, touting function over form, while trying to obtain non-traditional trademark rights — basically, it was a failed attempt to go beyond the copyright and utility patent rights the brand owner already had secured.

In short, word to the wise, there is far more art than science to an intelligent layering of intellectual property rights.

When life gives you a cease and desist letter, make lemonade. Or, depending on your profession, maybe some beer. That’s what Jeff Britton, owner of the Exit 6 Pub and Brewery in Cottleville, Missouri chose to do after receiving a cease and desist letter on behalf of Starbucks.

The owner penned a humorous response that is definitely worth a read. Among other things, Mr. Britton promised that he would no longer use “Frappicino,” but instead opt simply for “The F Word.” He also sent Mr. Bucks a check for six dollars. The story spread with incredible speed. The letter appears to have been written on December 23 and, less than two weeks later, the story has appeared across major media outlets such as ABC News, CNN, Fox News, NPR, Time magazine online, USA Today, as well as web-based media like Gawker, Huffington Post, and legal blog Above the Law.

The Exit 6 Pub sold both a vanilla cream ale and a coffee stout that, when mixed, tasted like a Starbrucks brand Frappuccino® coffee drink.  Starbucks’ attorney was concerned that if the Frappuccino® were to be used by the business as a type of beer that it might cause confusion as to whether there was some affiliation with Starbucks. Starbucks would be on pretty solid ground with such a claim, considering it has its own brand of coffee liqueur and also (unbeknownst to me) because Starbucks operates a couple dozen locations around the country that serve beer and wine (branded as Starbucks Evenings). Combine this with the strength and fame of the mark, there is a more than reasonable argument in support of a likelihood of confusion if the brewery had used this “Frappicino” mark for its beer.

But the brewery never used the mark. Instead, three of its patrons labelled the beer “Frappicino” on Untappd, a user-driven website/social app for ranking beers.  A user can label the beer anything they want, as evidenced by the claim by Paul S. that he was recently enjoying a Starbucks-McDonalds-Coca-Cola-Marlboro Honey Lager.

For me, the take-away here is not that Starbucks was making questionable legal claims or sending unnecessary and intimidating cease and desist letters. Likelihood of confusion aside, Starbucks certainly has the right (and some might say duty) to correct misuse of the Frappuccino® mark in order to prevent the mark from becoming a generic name for a particular coffee-based beverage. Instead, it is another reminder that regardless of how big a client’s brand may be, any cease and desist letter should be carefully scrutinized for tone, appropriateness of any demand, and whether the evidence supports the assertions contained in the letter.

In this instance, it appears that there was a disconnect between the evidence and the demand. Starbucks could have spent a bit more time to investigate the evidence or instead temper its “demand” to a request for more information. Had either occurred, perhaps the tongue-in-cheek response never would have been created (so I guess I’m happy things turned out the way they did). Thankfully for Starbucks, the media coverage (social and traditional) hasn’t vilified the company like other instances of other David versus Goliath story.  But I doubt that Starbucks has seen any positive results from the coverage, so I would guess they would have preferred it not happen at all.

In the end, Starbucks got what it wanted – the offending posts were removed from Untappd.com and the brewery promised not to use “Frappicino.” And, in the process, Exit 6 Pub and Brewery got a Venti®-sized amount of free publicity. Mr. Britton apparently is selling t-shirts featuring the six-dollar check and his most recent batch of The F Word beer sold out in three hours. He is currently considering increased production. Starbucks can keep their coffee, I think Mr. Britton is more than happy with his lemonade.

 

 

What best describes your work? Inexpensive? Cost effective? Robotic? Low budget? High volume?

Or, do you deliver excellence — unique, distinctive, valuable, sculpted, tailored, and handmade  solutions with your wealth of professional skill and expertise?

If your main focus is on delivering the lowest possible cost, you best be selling a commodity.

Creating and protecting valuable intellectual property is not commodity work for assembly lines.

So, what level of craft would you say was involved in creating this chocolate-flavored tagline?

Might the answer be different depending on whether you’re a marketing or trademark type?

At least from the perspective of a trademark type, “Handcrafted in Small Batches” is hopelessly and most certainly merely descriptive of chocolates (assuming it is not deceptive or misdescriptive), which explains why the registration symbol, in this case, signifies registration on the Supplemental Register as opposed to the Principal Register.

When it comes to protecting intellectual property, creative counsel with a handcrafted approach is required, especially when corners are cut during the creation of a merely decriptive tagline.

Any predictions on how easy it will be to move the “Handcrafted in Small Batches” tagline from the Supplemental Register to the Principal Register with this kind of reinforcing merely descriptive use?

Here’s to celebrating and rewarding the handcrafted creation and protection of valuable intellectual property assets, especially those made and protected in small batches, in 2014!

Over Thanksgiving weekend, I had the pleasure of visiting my grandmother’s farmhouse in northwest Iowa. I don’t think I had been there in probably five years, as she had been living in California for most of that time.

Upon entering, I was immediately taken back to my childhood. Nearly everything was exactly the same. The only noticeable change was that the old 24 inch tube television in the corner of the living room had now been replaced with a 24 inch flatscreen television. I guess there was also a new VCR/DVD combo, but the sizable library of “time shifted” VHS tapes were still there (thanks Sony v. Universal!).

I have a lot of childhood memories from visiting that place, but one thing that has always stuck with me is watching the David Copperfield specials on that 24 inch television. My absolute favorite, both as a kid and an adult, was where he made an entire Orient Express train car elevate and then disappear.

After returning home from Thanksgiving, I had to watch it again. Thanks to YouTube, it was pretty easy to find. You can watch it here. I quickly was sucked into the internet wormhole looking for more information about David Copperfield. Turns out, David Copperfield recently filed an intent-to-use trademark for logo, a DC and Design mark, shown below:

The application sets forth a number of goods and services: various entertainment services in class 41, magic kits and other toys in class 28, clothing and shoes in class 25, and  a number of paper goods in class 16, including calendars, books, color pencils, school supplies, and comic books.

And poof goes the dynamite, er, chances of avoiding a likelihood of confusion refusal. Although the design elements are distinct, the literal element of David Copperfield’s logo is identical to a number of registered DC and Design marks owned by DC Comics (you might have heard of them), including Reg. No. 1,084,736, Reg. No. 3,336,223, and Reg. No. 4,415,431 for DC DC COMICS and Design. Oh, and don’t forget Reg. No. 1,003,409 for a standard character DC mark for comic books. It’s probably not helpful that the standard character mark has a first use date of 1940, 16 years before David Copperfield was born.

Unsurprisingly, an Office Action was issued on Dec. 1. Surprisingly, though,  the examiner “found no conflicting marks that would bar registration under Trademark Act Section 2(d).” The DC Comics registrations were not cited, nor were any of the DC / DC SHOES marks cited based on David Copperfield’s inclusion of shoes, athletic shoes, and “skateboarding boots.”

Apparently this is David Copperfield’s “make records of registrations disappear” illusion. Not quite as dramatic as a train car, but impressive nonetheless.

We’ll pay attention to see if the application is approved for publication. If it is, forget the summer blockbuster movies. Grab your popcorn and let’s watch magic take on might as David Copperfield battles Superman, Batman, and the rest of the D.C. Comics universe. My money is on DC Comics, but maybe David Copperfield can pull a bunny out of his hat (or an amendment to his identification of goods…).