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?

I’m counting down the minutes to leaving my office later today to begin my favorite weekend of the year – the first weekend of the NCAA Tournament!  Even though my bubble was bursted on Selection Sunday – my team didn’t make it this year – I am always thrilled by the drama of tourney time and watching unpaid athletes play their hearts out hoping to bask in their one shining moment.  Incidentally, not a single team from Wisconsin made the tournament?  When was the last time that ever happened?  To take that even a step further, when was the last time not a single team from Minnesota, Iowa, or Wisconsin was in the tournament?  That must be a rarity.

There have always been a number of trademark issues surrounding the tournament – whether it’s a team’s name or mascot, the rights of a student-athlete, or using NCAA marks in any advertisement.

I’ll just get this well-worn recommendation out of the way – MARCH MADNESS, unless you’re a paid sponsor of the NCAA, don’t use it.  Not on an ad.  Not on a beer-themed bracket, like this one from last year (and I didn’t find one yet for this year on the site).  Not even as MARKDOWN MADNESS for something as seemingly unrelated to basketball tournaments as automobile dealership services or MUNCH MADNESS for providing information about restaurants; restaurant reviews; and an online tournament allowing people to rank restaurants.  (Psst…the NCAA even owns the mark MUNCH MADNESS, after it was transferred from a NY Times entity).

Unless you’re an official NCAA bracket game, you may even want to avoid using the word BRACKET in advertisements during this time.  Yes, the NCAA recently challenged a filing for DON’T LET ONE TEAM BUST YOUR BRACKET only on the basis of their alleged continuous use of “images of brackets, and marks consisting of or referring to the term BRACKET, in commerce in connection with entertainment services, and related promotional and sponsorship services.”  After two years, the applicant withdrew the application.

Since the NCAA purchased the trademark registrations, and associated rights, to MARCH MADNESS in 2010 (yes, can you believe DuetsBlog has been around longer than that?) purportedly for about $17 million, the NCAA has taken legal action against more than a dozen other marks, like MARCH WAGNESS, and likely many others through demand letters and discussions.

Aside from not using the NCAA’s marks and purchasing rights to protect your marks, there are a couple other important trademark considerations that the NCAA tourney tips off:

Meddle with unitary marks with caution (and preferably not at all). Despite all they hoopla (haha) about MARCH MADNESS, the NCAA filed an application for MARCH TO THE MADNESS, inserting two small but critical words into the well-known MARCH MADNESS mark.  It’s a clever play on the mark, but in some circumstances could ultimately could serve to weaken the strength of MARCH MADNESS.

– Employment contracts can impact trademark rights.  A CBS Sports reporter and online columnist filed an application for THIS IS MARCH. for apparel.  Employment agreements – as well as legal precedence with respect to the employee-employer relationship – often deem any intellectual property related to the employee’s work for the employer as being owned by the employer.  Given the discussion about paying student athletes (and the scandal surrounding payments or favors surreptitiously made to court high school players), could players potentially be “employees” thereby creating questions of ownership of player-related trademarks like Anthony Davis’ UNI-BROW?

Enjoy the games this week – the best week of the year!

 

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

Credit

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

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

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

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

Credit

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

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

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

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

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

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

Well, it was fun while it lasted. Some incredible moments last longer than others, and when the stars are all lined up, they can even translate into a movement. Yet, the blistering loss in Philly proved that our hope of being more than a host for Super Bowl LII, wasn’t meant to be.

Minnesota was seriously buzzing for the past week, following the incredible final-second touchdown score by Stefon Diggs, to launch the Vikings past the Saints, sending them to Philly to be favored as the likely NFC champion for Super Bowl LII. No more Dilly Dilly, Vikes couldn’t Bring it Home.

Sadly for the Minnesota Vikings and their fans across the country, the meaning of the Minnesota Miracle and Minneapolis Miracle phrases have been relegated to a brief moment in history — memorable no doubt, but memorable and meaningful for much less than most hoped for here.

Trademark filings reveal that the Minnesota Vikings hoped for more too, and likely hoped to cash in more too, within twenty-four hours of the infamous catch, the team sought to turn the meaning of Minnesota Miracle and Minneapolis Miracle into exclusive and proprietary trademark rights.

Team ownership filed a few used-based applications (here and here) and a pair of intent-to-use trademark and service mark applications (here and here) covering virtually every good/service known to men, women, and children, including the proverbial kitchen sink. Are you wondering how many of those items could withstand a challenge on the requisite bona fide intent? Let’s say I am.

It remains to be seen whether the USPTO will issue the increasingly common failure to function and informational refusals against the use-based applications.

It also remains to be seen whether the buzz around the Vikings several trademark applications concerning those phrases will last longer than our week of euphoria.

Perhaps even most interestingly, no one seems to be reporting about the apparent lack of alignment on who owns what surrounding the Minnesota Miracle and Minneapolis Miracle phrases, with quarterback Casey Keenum (a little slow on the draw) filing for both phrases as trademarks (two days after the Vikings did), and with Stefon Diggs apparently selling his own shirts, here:

This Friday, yours truly will be presenting “Making Your Business Blogging Visible” at SME (Sales and Marketing Executives of Minnesota), and you can learn about all of the details here.

Given the title, as you might have guessed, I’ll be sharing some perspectives on how DuetsBlog came to be, where we’ve been, how we’ve been doing what we do, and where we’re headed.

As you well know, we’re passionate about bringing lawyers and marketers together, much earlier in the creative process, and in the process we’ve shined a spotlight on the infamous Dr. No.

If you have been here from the beginning or if you have been curious enough to check out our inaugural post on March 5, 2009, you know that we believed our audience to be two-part:

“If you are a lawyer and you find yourself getting in the way more than facilitating the process, you need a regular dose of Duets Blog. If you have no formal legal training and your intellectual property lawyer prefers roadblocks over intelligent collaboration, join our conversation on Duets Blog.”

Nowadays, following my recent and invaluable work in Seth Godin’s altMBA workshop, I’m thinking it might make sense to reframe “who this is for” in this way:

“People who love brands that need intellectual property lawyers, whether they know it or not.”

While on this amazing journey of more than 2,200 blog posts (roughly 1/3 are from me), we’ve grown, evolved, and we’ve shared scores of guest posts from dozens of non-lawyer guest bloggers.

We’ve also enjoyed getting to know you, and we’ve enjoyed your countless published comments, your perspectives and blog ideas, and all of our amazing off-line conversations and friendships.

Although we haven’t yet reached the remarkable goal of 7,000 blog posts (like the one who is admired), each one of us has enrolled for this work and each one of us lives by this sage guidance:

“I write every word. I don’t understand outsourcing something this personal, a privilege this important.”

Here’s a question, is it really a blog post, if the person’s name next to the title is not the actual, the real author? Blogging is really personal, even if individuals are writing on a team or group blog.

As I mentioned in the promotional video for this Friday’s SME luncheon event, “I’m looking forward to meeting you, this is a dialogue you will not want to miss, see you soon!”

UPDATE: Use promo code BAIRD for the bargain SME rate of $39.

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.

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.

Love the new Minnesota State Lottery advertising slogan: I’MN. Or, as one of my college age sons often says, when he’s in agreement with someone’s idea or proposal, I’m down.

The lottery slogan cleverly plays off the affirmative and adoptive slang phrase “I’m in” (i.e., “Count me in”) — it also plays off the MN abbreviation for Minnesota. Congrats, Periscope.

How long before we start to see brand owners saying “count me in” when it comes to using the similar meaning “I’m down” phrase as a meaningful adoptive rally cry for action?

Maybe a more direct and hip version of Apple’s I’m a Mac campaign? Or, is the I’m Down phrase, simply too confusing (and assumed negative) across the general consuming public?

Dear readers and especially our beloved marketing types, who’s down for sharing their wisdom on the subject?

Earlier this year, we contemplated a suitable, accurate, and efficient generic name for the service category created by the highly-disruptive Uber brand: App-Based Ride Service.

A visit to Chicago this past weekend, left me thinking that Ride-Share Service or Ride Sharing are suitable alternatives, that appear to be gaining some traction, as seen here:

RideSharePickUpSign

The sign appears to be designed by the hotel to steer drivers of these kinds of vehicles away from the apparently more-highly preferred and more traditional incoming taxi lane.

Especially interesting to me is that the hotel apparently opted to avoid a generic-looking informational sign with no brand names or logos, like the one at the Minneapolis airport:

App-BasedRideSign

Do you think the hotel knows that using more of another’s trademark than is necessary to fairly identify another’s brand disqualifies the user of the nominative fair use defense?

Conventional wisdom has been that using the visual style and/or logo of another brand is, in fact, more than needed to fairly communicate and refer to the brand by name only.

Does the sign above showing the Uber and Lyft logos suggest that conventional wisdom is eroding, perhaps indicating that a recognizable brand symbol is now nominative fair game?

Or, does using the actual logos suggest that the hotel has arrangements with Uber/Lyft?

If so, the third element of the nominative fair use test would be missing too, but unnecessary, if in fact, permission exists.

Does anyone happen to know if hotels might be paid by a ride share brand to promote their brand, kind of like product placement in a motion picture context?

RCBA CLE - First slide

It’s that time of year, for lawyers anyway, to make sure they are up to date on their continuing legal education hours, which includes the need for the all important 2.0 ethics credit hours.

For our local readers who happen to be lawyers in need of such credits, the Ramsey County Bar Association has an amazing program for you entitled “Issues and Trends in the Ethical Use of Social Media and Technology.

The speakers for this program include:

And, the esteemed moderator for the panel portion of this discussion is Leanne Fuith, Dean, Career and Professional Development, Mitchell Hamline School of Law.

Details are here on how to register for the May 24 program (in my humble opinion, it’s an amazing bargain at $35 for RCBA members and $50 for nonmembers), come one and all.

To the extent you’re not in need of ethics credits, much less continuing legal education credits, come for the behind the scenes remarks I’ll be sharing about the creation of DuetsBlog.