Trademark disputes involving breweries are nothing new, with breweries battling each other, wineries, and even cities over trademarks. We can now add estates of dead celebrities to the mix, as the Estate of Elvis Presley continues its battle against UK-based BrewDog over its ELVIS JUICE I.P.A.

The Elvis Estate first attempted to resolve the dispute through a cease and desist letter. In response, BrewDog’s owners, James Watt and Martin Dickie, changed their first names to “Elvis.”

And before you ask, yes, the above picture is just a marketing version of the official name change document. Although the battle has been waged for decades with the U.K. Employment Agency, “Beer Pirate” is not yet an officially recognized title. For the potential Elvis fans with the proclivity toward belief in aliens and other conspiracies, the official documents are also available here.

When BrewDog failed to heed the Estate’s demand of “Don’t,” the Estate brought an action against BrewDog at the U.K. Intellectual Property Office. Apparently the UKIPO was unmoved by the Elvis Brothers’ claims and, in July of 2017, the Estate prevailed.  But before Elvis could leave the building, BrewDog appealed. Apparently the appellate body had a few more suspicious minds. Just last week, the appellate body reversed the prior decision, concluding:

On balance I do not think that the hearing officer was entitled to take judicial notice that beer consumers who see the word Elvis will always think of Elvis Presley. The two marks are too different for there to be direct confusion. Even with imperfect recollection the average consumer will not mistake Brewdog Elvis Juice for Elvis. Put simply, the common element of Elvis is not enough on its own to make consumers think there is a link between the mark Elvis and Brewdog Elvis Juice.

As the quote suggests, the UKIPO’s decision was based specifically on a trademark that includes the brewery’s house brand BREWDOG. This may mean some extra steps for the brewery to ensure that BREWDOG always appears in close proximity to the ELVIS JUICE trademark, but the steps may be worth it to protect BrewDog’s growing investment in the name. BrewDog recently expanded operations, opening a satellite brewery in the United States near Columbus, Ohio. On top of that, BrewDog even won a bronze medal in its first appearance at the Great American Beer Festival last year.

Although the Elvis Estate may be licking its wounds somewhere in the heartbreak hotel, the war isn’t over yet. As you might expect, the UKIPO’s office has no authority here in the U.S. In fact, BrewDog has a pending application for the mark BREWDOG ELVIS JUICE that was approved for registration by the U.S. Trademark Office. On December 27, the company that manages the intellectual property on behalf of the Elvis Estate filed a Request for Extension of Time to Oppose the application. Will the recent loss temper the Estate’s position? Or is it now or never for the Elvis Estate to make a stand? We might have a better idea after April 25, when the Estate’s first extension request runs out.

As of the date of publication, there is no word on whether Elvis Costello also objects to BrewDog’s beer.

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.

The question for the day is not, why did the chicken cross the road, but rather, why did the chicken file an ex parte Letter of Protest with the Office of the Deputy Commissioner for Trademark Examination Policy at the United States Patent and Trademark Office (USPTO), just a few months ago?

To get to the other side of the USPTO?  To avoid an inter partes, direct and face-to-face trademark opposition with its adversary? Because we’re talking about a chicken after all, right?

Or, perhaps no cowardice or clandestine motives at all, but instead, to conserve resources by letting the USPTO do its bidding? Or maybe, better yet, to avoid fanning the flames of negative trademark enforcement publicity? Or, how about, because it can? Other possibilities?

As you may recall, back in November of last year, we covered the trademark bullying allegations against Chick-fil-A — asserting its “Eat Mor Chikin” tagline and trademarks against Vermont resident Robert “Bo” Muller-Moore’s “Eat More Kale” tagline and trademark. So did Techdirt, Brandgeek, and IPBiz, among others, none feeling any love for Chick-fil-A’s apparent concerns.

Then, a week later, the New York Times covered the dispute too, confirming the wild chicken legs of this story. So, why hasn’t anyone yet mentioned in all this coverage, Jerry Jeff Walker’s “Taking it As it Comes” recording in 1984, with the playful “Eat More Possum, God Bless John Wayne” chorus, apparently quite popular, at least in certain circles, more than a decade prior to Chick-fil-A’s earliest claimed first use date for “Eat Mor Chikin” in 1995? Hat tip to our good friend Doug Farrow for this clever observation.

In any event, lately, I’ve been wondering about the status of the “Eat More Kale” dispute, wondering whether a law suit has been filed (none that I’ve seen, to date), whether the USPTO has refused registration of Muller-Moore’s “Eat More Kale” trademark application based on Chick-fil-A’s “Eat Mor Chikin” rights, and if not, whether a trademark opposition has been filed.

So, in preparation for an upcoming March 6th Strafford Publications webinar on the ever-popular Trademark Bullying topic, I took a quick look at the status of the “Eat More Kale” trademark application, and honestly, I was not very surprised to find that the assigned USPTO Examining Attorney found no basis for refusing registration of “Eat More Kale” on likelihood of confusion grounds, writing December 18, 2011:

“The Office records have been searched and there are no similar registered or pending marks that would bar registration  under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.”

In fact, Mintz Levin’s Copyright & Trademark Matters blog also noted this development in an update on December 18, 2011.

What is much more interesting from the present state of the file history– and far less common — is correspondence from the Office of the Deputy Commissioner for Trademark Examination Policy, dated four days later, on December 22, 2011, granting an ex parte Letter of Protest with these instructions to the assigned USPTO Examining Attorney:

“A Letter of Protest filed before publication has been granted. It has been determined that the evidence submitted by the protester is relevant and may support a reasonable ground for refusal appropriate in ex parte examination. Therefore, you must consider the following and make an independent determination whether to issue a requirement or refusal based on the objections raised in the Letter of Protest.”

Then the correspondence goes on to identify three prior registrations brought to the USPTO’s attention by the un-named protester: U.S. Reg. Nos. 2,062,809, 2,197,973, 2,538,050.

Hmmm, I wonder who the mysterious un-named stealth protester is, since the three registrations are for the “Eat Mor Chikin” marks owned by Chick-fil-A?

Of course, we could request a copy of the Letter of Protest and supporting evidence from the USPTO, using a Freedom of Information Act (FOIA) request, to be sure, but I’m thinking I’ll save the stamp. Indeed, I’d be shocked if Chick-fil-A were not behind the Letter of Protest submission and stealth strategy.

Actually, this is a pretty smart strategy, given the particular facts and circumstances of this dispute — if it works, and a likelihood of confusion refusal is made by the USPTO and sustained, it would obviate the need for a formal and very public opposition with Mr. Muller-Moore and his moral and financial supporters.

Of course, hind sight is always twenty-twenty, and here, if the registration refusal is made, I suspect Chick-fil-A will wish it had quietly filed the Letter of Protest before sending Mr. Muller-Moore the cease and desist letter. I also suspect the media attention on this one might have been more favorable to Chick-fil-A had the USPTO issued a refusal by the time it sent a cease and desist letter, even if it were discovered later that the refusal was prompted by a Chick-fil-A stealth filing.

So, stay tuned to learn how the assigned Examining Attorney exercises his “independent” judgment on this one, and whether he actually refuses registration of “Eat More Kale” based on Section 2(d) of the Lanham Act and Chick-fil-A’s “Eat Mor Chikin” registrations. What are your predictions?

There was a time when a certain kind of small business owner — strapped for cash — with a meager promotional budget, easily could be tempted to adopt a “clever” name, as a “short-cut,” to “play off” a well-known, iconic brand, but in the end, he or she probably was convinced by counsel that doing so would be foolish: It would be certain to draw a long, distracting, losing, and costly fight.

One tried and true way of effectively steering a business to avoid this kind of fire has been to have it “put the shoe on the other foot.” In other words, having those involved answer the hard question of what they’d honestly do if they managed the famous brand in question and someone came along doing exactly what they are proposing to do. Often yielding: “Oh, now I get it.”

Nowadays though, with the hungry media’s fascination over the ever-popular “trademark bullying” accusation, the juicy David v. Goliath story-lines, and the prevalence of mysterious litigation settlements with undisclosed terms, as well as a growing appreciation that large brand owners would prefer to avoid the shaming label altogether, there is a growing and legitimate concern that small business owners may be more and more inclined to bait large brand owners into fights for the publicity — to help launch their new product — and eventual confidential settlement.

If not actual bait, then at least these David-style “benefits” unfortunately appear to be factored into the trademark decision-making under the present trademark landscape.

Now, I certainly don’t know the true motivation behind the latest trademark to trigger an iconic brand owner’s legitimate objection, but based on what I’ve seen thus far, I do tend to believe that the latest brand to undeservingly wear the pejorative and media-baiting “trademark bully” label is: Tootsie Roll.

Over the weekend, CNNMoney reported the filing of a trademark lawsuit by Tootsie Roll Industries, LLC, owner of the more than century old Tootsie Roll confection brand, against Rollashoe, LLC, a small business based in Miami Beach, Florida, selling women’s footwear under the Footzyrolls name and mark.

The owners of Rollashoe, were quoted applying the trademark bully label to their adversary:

“This lawsuit it completely frivolous and has no merit,” Rolloshoe owners Sarah Caplan, 28, and Jenifer Caplan, 34, said in a statement. “This is just another example of Tootsie Roll trying to bully a minority-owned women’s small business.”

I couldn’t help but notice the absence of quotes that the Caplans were shocked to hear from Tootsie Roll. Didn’t the Caplans have to know they were walking into a serious fight with a major brand owner?

And not a frivolous trademark fight either: Tootsie Roll is a federally-registered trademark for clothing, a popular Halloween costume for babies and adults, the Tootsie Roll brand has been around more than 100 years, sixty-four million Tootsie Rolls are produced each day, and “tootsie” has a widely-known meaning for a person’s foot, putting aside the fact that the iconic Tootsie Roll brand is likely famous and trademark dilution requires no likelihood of confusion.

Giving the Caplans the benefit of the doubt, perhaps they had never heard of trademark dilution before, and maybe they truly thought confusion was the test and impossible.

Yet, at the close of 2010, Tootsie Roll reported to shareholders record sales of $517 million, as detailed in its Annual Report, specifically noting: “Our key competitive advantage lies in our well known brands . . . .” It also identified “candy buying mothers 25-44 years of age, [as] a key Tootsie Roll demographic group.” These facts aren’t surprising and neither is Tootsie Roll’s objection.

Tootsie Roll wasn’t exactly trigger-happy on this one either, having expressed concern about the FOOTZYROLL mark back in 2009 and formally opposing registration of the mark in early 2010; it held off seeking injunctive relief in federal district court until now.

Again, when you’re tempted to mechanically apply the “trademark bully” label to a brand owner’s particular enforcement effort, it might be a good idea to ask the brand owner’s enforcement target what it would be like if the shoe were on the other foot.

Has anyone bothered to ask the Caplan sisters if they were surprised to hear from Tootsie Roll, and what they’d honestly do if the shoe were on the other tootsie?

 

Best Buy was the subject of some intense criticism at the end of last week when Chris Morran of The Consumerist Blog and Mike Masnick of the Techdirt Blog took Best Buy to task and Mike went so far as to label Best Buy a “trademark bully” for sending a cease and desist letter to Newegg for use of the “Geek On” logo shown above and for running a television advertisement poking fun at Best Buy who asserts the advertisement misleads consumers by portraying Best Buy employees as “slovenly and uninformed.”

We’ve previously questioned the scope of rights in Best Buy’s Geek Squad mark and whether it has sufficient scope to reach the use of other Geek marks by competitors, given the number of third party marks containing the term for similar goods and services.

In addition, Dan and I have both discussed the PR fallout relating to Best Buy’s previous God Squad trademark flap. I’ll have to say, this one leaves me continuing to wonder whether there is sufficient coordination/collaboration between Best Buy’s PR and Legal departments.

So, how do you come down on this one?

Is this legitimate trademark enforcement or another example of trademark bullying?

What about the complaint about the television advertisement, does that have merit?

It will be interesting to see whether Best Buy files a lawsuit on this one, so stay tuned.

 Okay, nobody wants to be a "loser," unless, of course, you happen to be the biggest one, but that’s beside the point, because that’s not the L-word I’m talking about today.

No, I’m talking about a much more traditionally positive L-word, as in "leader," but as I learned earlier this week, at an excellent breakfast seminar hosted at Padilla Speer Beardsley (PSB) headquarters in Minneapolis, entitled "Thinking Local in EMEA: The Next Wave in European Program Execution," if you’re a U.S. company doing or wanting to do business in the EMEA, and if you want to succeed or have a winning strategy there, you should strongly consider losing the "leader" word in your branding and corporate communications. It just doesn’t sell well there, especially coming from a U.S. company.

Apparently just about everyone purports to be the leader, of at least something. It is apparently perceived as a very over-used and tired term there — one that offers no differentiation, and perhaps, even a bit of alienation of those you might be trying to reach.

It kind of reminds me of Duets GuestBlogger Nancy Friedman’s previous recommendation to avoid the tired and meaningless P-word in branding communications. And, don’t forget to avoid the D-word for entirely another, yet important reason.

Another take away for me from the seminar was the importance of not ignoring or losing a "local" touch, when it comes to refining a U.S. company’s communications in the EMEA.

Probably the most laughter during the seminar came during Patrik Schober’s answer to my question about what pitfalls exist for those in regulated industries who want to use social media in the EMEA, when he revealed that "lawyers are not social!" Corinna Voss confirmed that the legal community is highly regulated and unable to advertise or promote themselves, so they generally avoid the use of social media.

She also offerred that medical device and pharmaceutical companies will typically avoid regulatory problems in using social media by focusing their communications on non-product information of interest to their targets, and she agreed with Matt Kucharski’s comment that they seem to focus on topics that demonstrate "thought leadership" — presumably on the theory that this kind of leader is accepted there.

Many thanks to Matt Kucharski, Senior Vice President of PSB, who did a very nice job of "leading" and moderating a dynamic panel discussion with Corinna Voss (of Munich-based HBI Helga Bailey GmbH, Imma Folch Lazaro (of Barcelona-based LF Channel S.L.), and Patrik Schober (of Prague-based PRAM Consulting).

Come to think of it, I’m not sure this L-word is any more differentiating in the U.S., with more than 800 live trademark applications and registrations containing the term.

How would you communicate leadership without using the L-word?

There has been a recent (over the last two years) rash of lawsuits by former NCAA athletes alleging a right to recover money arising from the exploitation of their likenesses in video games. Recently, the Ninth Circuit heard arguments in the case Keller v. Electronic Arts, Inc. (complaint here). For a summary of the case and arguments, see this AP article.

Frankly, I don’t see how NCAA athletes are in any different position than the professional athletes who receive compensation in the form of licenses through their respective players’ unions. Given this ready corollary, any argument that is being lodged against the athletes in the college context would seem pretty weak.

One common and obnoxious counter is the concept of the “amateur” athlete; an argument which permeates every conversation about the NCAA’s monopoly. However, regardless of the merits to this argument (and it is oft-criticized), the validity of the argument ceases when the athletes leave college. 

The other argument regarding the “parade of horribles” that will arise because "documentarians, biographers, filmmakers, novelists, photographers, and songwriters" will not be able to "create expressive works that realistically depict individuals and/or refer to them by their actual names," is borderline frivolous. First, there is a specific legal doctrine to address this situation: i.e. fair use. Second, it’s not as if the college athletes are asserting a unique and novel right that has never been asserted before: it’s the same publicity right being exploited through EA’s licenses with the professional player’s unions.

Finally, it’s almost comical to consider who’s siding on the “fair use” type argument in this case: It’s the MPAA! Have there been more radical enemies to fair use than the MPAA and their members? I remember a story from law school where a documentary film-maker had to remove an entire scene from his film because there was a Simpson’s episode playing in the background.

At the end of the day, if the AP article provides the best available arguments and allies, I see trouble for EA.

It’s not every day you get a chance to use that phrase in a headline. But, what may become known as the "The Cayman Kerfuffle", presents the perfect opportunity.

Would a reasonable person find these confusingly similar?

         

 

$51,000 Blue Cayman                                                      $30 Blue Cayman

Let’s see, one is a sleek, pricey, well-engineered, high performance sports car that is available in a variety of colors, the other is a stubby, inexpensive, molded plastic clog-like sandal that is also available in a variety of colors. Hmmm.

Even though the Porsche vs. Crocs dust up was discussed widely in November 2009, the seeming inanity still grinds on my nerves. So I can’t resist another airing.

If you missed the coverage, here is the kerfuffle catalyst from the Crocs, Inc. Form 10-Q:

"On May 11, 2009, Crocs Europe B.V. received a letter from Dr. Ing. H.c.F. Porsche AG ("Porsche") claiming that the Company’s use of the "Cayman" shoe model designator infringes upon their Community Trademark Registration of the mark "CAYMAN" in class 25. Porsche is requesting that Crocs Europe B.V. immediately cease and desist use of the Cayman mark and pay Porsche’s attorney’s fees in conjunction with the issuance of the notice letter. On July 30, 2009 the Company was served with notice of an injunction against Crocs Europe BV’s use of the Cayman mark in Germany. The Company intends to vigorously defend itself against these claims."

Granted, Porsche has a registered trademark for "Cayman" in several international classes including 025, which does encompass footwear, and sells a line of Porsche Design shoes, although, apparently, not under the Cayman label.

I might understand Porsche being embarrassed by the possible association with the popular foam resin clogs spotted on the feet of celeb-kinder in Hollywood, South Beach, and other trendy locales. But infringement? Seriously? Shouldn’t Porsche be more embarrassed for making this an issue? Likelihood of confusion is doubtful, unless Porsche dramatically changes its fashion strategy.

Realistically, few people will confuse Crocs Cayman clogs for a Porsche Cayman sports car or one of their designer driving shoes. Fewer still will think they originate from Porsche. Should they, a quick check of the Crocs logo on the shoe itself would correct any incertitude.

Several thoughts arise: Since the Crocs Cayman line was available commercially as early as 2004, five years before the registration issue date of April 2009 for Porsche, does Crocs have prior rights? Should International Truck Intellectual Property Company, owner of the Cayman trademark in International Class 012, which includes sports cars, seek redress from Porsche for infringement? Should Lacoste file an amicus brief since they have an oblique interest? After all, a Cayman is a type of alligator, and should Porsche prevail — I don’t see how, but lets pretend – based on their interpretation of infringement and confusion, the Lacoste logo, shown below, would be a likely next target.

Stay with me on this. It is probable that people driving Porsche Caymans could also be wearing Lacoste clothing, so confusion of origin is surely immanent. Hey, is that a Cayman polo shirt you’re wearing?

On the subject of confusion, perhaps the Cayman Islands should pursue Porsche and Crocs for infringement. It is likely to find both products on the Islands, even at the same time and place, and wouldn’t the Cayman Islands have prior rights, if we follow the labyrinthic logic in this argument? Toss in people wearing Lacoste fashions, and since most can’t tell a Cayman from a run of the pond alligator, it could start a whole reptilian-brand confusion-fest and who knows where that would lead!

This could become a Trademark Infringement Smackdown with, say, Crocodile Dundee headlining. Although, come to think of it, this has certain "The Real Housewives of Intellectual Property" (surely an oxymoron) qualities to it and could spawn a new reality series on Bravo. The notion is no more ridiculous than the Porsche accusation — and indubitably more entertaining. 

OK, my tongue is tired of being in my cheek.

The old maxim "just because you can, doesn’t mean you should" seems apropos. The ill will engendered by overly aggressive enforcement, where likelihood of harm is not apparent, is damaging to a brand, even one as famous and resilient as Porsche. It will likely appear to consumers as needless bullying. That perception can cost far more to rectify than any possible impact of the perceived infringement.

Who’s the likely winner in this spat? Certainly not Porsche. Crocs stands to gain from the publicity generated by this action. It is not exactly the way a company wants to gain visibility, but as a creative guy managing brands, I’d take what I get and spin it into branding silk – at the expense of Porsche, of course.

Randall Hull, The Br@nd Ranch®

Taglines and advertising slogans can be wonderful branding and marketing tools, but I’m thinking (not Arby’s, by the way) that McDonald’s is probably not thinkin’ that its (likely) famous I’m lovin’ it tagline accurately describes its taste for the federal trademark infringement lawsuit that Twin Cities-based Lion’s Tap recently slapped on McDonald’s for its whopper of an advertising campaign — promoting its new Angus Third Pounders — served up with the clever and simple play-on-words advertising slogan and question: Who’s Your Patty?

No doubt, McDonald’s likely will not make a run for the border, instead, it likely will instruct its team of lawyers to think outside the bun in designing a successful legal defense and response strategy, in the hope of not hearing the court say to Lion’s Tap in the end, have it your way.

For your reading pleasure, here is a pdf copy of the complaint filed last Friday in Minnesota federal district court. As you will see from the Minnesota State Who’s Your Patty? Certificate of Registration (attached to the filed complaint), Lion’s Tap waited to register its claimed mark in Minnesota until August 18, 2009, ten days before filing suit. As a result, Lion’s Tap clearly did not register the tagline “four years ago,” or back in 2005 (the year it claims to have commenced use), as incorrectly reported ad nauseam, here, here, here, here, here, here, here, here, and here. Well, at least a couple of the media outlets covering the story avoided the mistake, and got the registration date right.

So, why is the date of registration significant? If McDonald’s didn’t know about Lion’s Tap’s use before rolling out its own use of “Who’s Your Patty?” — an entirely plausible scenario, since the mark was not registered, even in Minnesota, until well after and apparently in response to McDonald’s already commenced use — it starts to look like a much different case for Lion’s Tap (more un-Hamburglar-like), for reasons I’ll explain later.

Continue Reading All About Taglines and Advertising Slogans: Who’s Your Patty Anyway?

Hot on the heels of Dan Kelly’s prediction of the eventual fall of social networking sites, it seems that Facebook has embroiled itself in another controversy.  The upshot of the most recent story is that Facebook is essentially using its power of cyber eminent domain to sieze and use photos posted by users for advertisements unless they change their privacy settings.

For me, this raises two questions:  The first is, whether or not Facebook users might have an action under right of publicity laws.  Generally, a right of publicity claim requires the plaintiff prove that somebody (1) appropriated plaintiff’s name and likeness to their advantage, (2) without plaintiff’s consent; and (3) resulting injury to the plaintiff.  Typically, these claims are limited to celebrities because non-famous people usually don’t have value in their name and likeness that the misappropriation injures.  However, its not unthinkable to believe that there is a conceivable theory of injury for Facebook users to pursue these claims.  (On a side note, I’m sure Facebook’s terms of use give them some level of authorization to use photos, so that would be a likely hurdle as well.)  

The second question is, does Facebook really need this revenue?  It seems like the outcry from users would be pretty predictable.  Although the public expects and accepts a certain level of encroachment by advertisement, there’s a line.  If you cross that line, you risk alienating a substantial portion of your audience.  The stakes are even higher when the people you are alienating are responsible for the content on the site.  If Facebook really has to go this far, it would seem that social networking sites are doomed to fail.