December 8, 2014—This past weekend, my wife and I were fortunate enough to take in the sights and sounds of NYC.  Included on our stops was the world famous Rockefeller Center Christmas tree.  The tree was lit on December 3.  Despite the cold, the rain, the wind, and the protests over the recent Eric Garner case, we were able to brave the elements and get several nice snapshots, including some selfies.

Because I can’t really just enjoy the moment without slipping my brain into intellectual property mode, the taking of this picture raised a question for me?  Is my taking of this photo and my use of it in this post an act of copyright infringement?  What about the sculpture below the tree?

The answer might surprise you.  A lot of people generally think that anything displayed in public can be photographed and used with impunity.  But that’s not really the case.  As a general matter, sculptural works in the U.S. are copyright protected, and along with that protection generally comes derivative works protection which would include the right to control photographs of the sculptural work.

Here, I’m probably safe because this is obviously non-commercial use intended to facilitate a discussion on the parameters of copyright law.  I’m pretty comfortable that it constitutes fair use and I’m also comfortable that even if it did not, the fine folks at Rockefeller would let this one slide.  However, that probably wouldn’t be the case if I started running this photo through a printing press and selling reasonably priced postcards on my favorite New York City street corner.

So, a word of advice to any “photogs” out there who may be in the business of selling their photographs.  Make sure to consider copyrights of any potentially protected works that are captured in your photographs.  That should help you stay off the “naughty” list this holiday season.

December 3, 2014—Video games have come a long way since I was a kid. I grew up with a pixelated plumber with a frozen facial expression jumping on turtles. Sometimes it is hard to believe how far video games have developed, with games like Call of Duty and Grand Theft Auto providing massive digital worlds that mimic and recreate everything from the precise recoil and smoke from an Uzi versus a handgun, to the minute details of Los Angeles, from the fancy high rise buildings to the adult dance clubs. What may be even more surprising is that these video games fall squarely within the protection of the First Amendment.

One of the most successful video game franchises of recent years is Activision’s Call of Duty games. In 2013, Activision released Call of Duty: Ghosts. One of the most popular elements of Call of Duty is the multiplayer mode, where players can play with players both in their own house and across the world.

In the multiplayer mode, you can customize your characters with particular weapons, gear, and “patches” – insignia that some users select in order to create an allegiance to a particular group. The option accurately reflects the use of “morale patches” by actual military members, a practice that goes back at least to the second world war. They can identify specific units, special operations groups, or nothing at all. Most are not sanctioned by the military, though.

In Call of Duty: Ghosts, the selection screen looks like this:

Unfortunately for Activision, one of these patches was a bit too close to real-life for one Mil-Spec Monkey Inc. (“Mil-Spec”) and the company sued Activision for trademark and copyright infringement (the complaint is viewable here). Mil-Spec sells the “Angry Monkey” patch shown below (and others) on their website for a bargain at $4:

Mil-Spec has been selling the patch since 2007, and owns a trademark registration for the design in connection with retail store services featuring clothing, patches, and other gear.  The patch could be popular among military members. It happened to be included on the board of morale patches in the first article Google found regarding the history of morale patches, if limited anecdotal evidence means anything (the complaint made no claim as to amount of sales, third-party publicity, etc.).

Activision filed a Motion for Partial Summary Judgment on the trademark infringement claims, claiming that its use was protected by the First Amendment. For expressive works, the Ninth Circuit follows the Rogers v. Grimaldi test to determine whether an infringement claim is barred by the First Amendment. Courts have repeatedly found that video games constitute an expressive work, so the court applied the two-prong Grimaldi test, which asks:

1. Does the use of the mark have “no artistic relevance to the underlying work whatsoever;” and
2. if there is some relevance, does the use still explicitly mislead consumers as to the source or content of the work.

If the answer to either prong is yes, the First Amendment will not protect the use.

As you might guess, the protection for expressive works is strong, as “no artistic relevance whatsoever” is a tough standard for trademark infringement plaintiffs to overcome. Activision argued that there was a need to make the game have a “look and feel” that accurately reflected military missions. Because both parties agreed that “morale patches are popular among military personnel and are often worn in unofficial contexts to allow the wearer to express a sense of personal identity,” the court concluded that the use of the patch had some artistic relevance.

The court then asked whether any other facts suggested that consumers would be misled into thinking that Mil-Spec had endorsed the game through the use of the Angry Monkey patch. However, this prong requires affirmative action and Mil-Spec could not put forth any such action. The game clearly identified Activision as the creator and source of the game. Mil-Spec could not identify any fact other than the use of the mark itself. The court therefore concluded that Activision had not explicitly misled consumers.

Consequently, the court granted Activision’s Motion for Partial Summary Judgment. Mil-Spec still has its claims of copyright infringement, though. But we’ll have to wait and see how that shakes out. If you’re interested in coming to your own conclusion, two patches are compared side-by-side below.

Feel free to make your own predictions as to the copyright claim in the comments. We’ll be sure to follow up in the event the parties don’t reach a settlement.

November 28, 2014—Now that Thanksgiving is over, Americans across the country are taking some time to relax, reflect, and digest. I know I will be doing all three, after enjoying a wonderful Thanksgiving Day surrounded by family, friends, food, and, yes, trademarks.

Even in the midst of one of the most significant holidays I still couldn’t quite get away from trademarks. While we weren’t discussing res judicata, trade dress protection, or comparative advertising, our discussion still underlined a very important (and sometimes overlooked) principle of trademark law: context is everything.

Context is what kept consumers being from confused yesterday as to whether the Lions were doubling up the Chicago Bears, the California Golden Bears, the Baylor Bears, or the Hershey Bears. The NFL association, uniforms, use of other wording, and many other contextual clues all contribute to consumers ability to distinguish between the various Bears.

Context is also what turns an otherwise descriptive name into a distinctive trademark. “Apple” is merely descriptive of food products, but for computers that descriptive meaning is lost. And while the phrase “Thanksgiving Day” is a holiday that is not likely registrable for a number of goods, when used in the context of pet food, it’s distinctive and registered:

And context is very important for those brands fighting off potential genericide, i.e., when a brand name loses its trademark significance by becoming the generic term for the goods. When you were around the dinner table, did you ask for Cool Whip® or non-dairy whipped topping? Jell-O® or gelatin? Did you cook your casserole in a Crock Pot® or a slow cooker? And when your guests went home with leftovers, did you put them in Tupperware® or containers? And with the cold weather, did you make sure to put on your Chapstick® or did you use lip balm?

Yes,  context is everything. It matters for brands and it matters for a lot of things your family and friends might say at the dinner table during a long, stressful holiday. And sometimes context is as simple as geography. The issue that brought all of this up for my family was whether some of the dishes we were preparing was a “casserole” or a “hot dish.” Being from Iowa, I was obviously on Team Casserole. As you can probably infer, we had someone from up Nord representing Team Hot Dish. But again, context is everything. And in this context, whether it was hot dish or casserole, it was still Thanksgiving.

Hope you all had a Happy Thanksgiving!

November 12, 2014—It isn’t often that Forbes and Arcade Sushi are reporting on the same story. But some news is so big, so ground breaking, and so important that all media outlets cannot, in good moral consciousness, fail to comply with their duty to inform the public. Obviously, I’m talking about Microsoft’s potential reboot of the Battletoads franchise.

For those of you who wasted away the early 1990s not playing video games, (shame!) the Battletoads video game franchise centered around three mutant toads (Rash, Zitz, and Pimple), trained in marital arts, who fought against evil doers. And I can assure you that any and all similarities between these characters and the Teenage Mutant Ninja Turtles are purely a coincidence. The video game’s developer, Rare, has said so and they certainly would have no incentive to lie.

The game was first released in 1991 on the original Nintendo (of the Entertainment System, or NES, variety).  And it was a big hit. Gamers loved it, even though it is considered one of the most difficult video games to beat, even still today. Yet despite the popularity, the last home console video game was released in 1993, while the last Battletoads video game ever was released in 1994 as an arcade machine. And then, nothing.

But the fans continued to praise the game. From 2010 onward, gamers and media organizations continued to place Battletoads as one of the top games that should be remade on a new system. Among the advocates were Game Informer, Maxim, GameRevolution, SiliconEra, and yes, even Forbes. Sounds like a great idea. But who owns the rights to the game?

Turns out, Microsoft – maybe. Rare, the game’s original developer, is a British game developer that has been around since 1985. However the company was purchased by Microsoft in 2002 for $375 million. And now, after 12 years of waiting, Microsoft may be bringing the Battletoads back. Where is all the speculation coming from? Well, it turns out that just last week, Microsoft filed an application to register the mark BATTLETOADS in connection with video game software. And let the rumor mills begin (and continue, and continue).

The response from Microsoft when reached for comment?

Microsoft often acquires various trademarks as part of its ongoing business strategy, but beyond that we have no comment.

So, case closed. Microsoft owns Battletoads. Probably. They presumably purchased all of Rare’s copyrights and trademarks, even if Rare/Microsoft hasn’t produced a Battletoads video game in exactly 20 years. Which of course raises the question of whether the trademark had been abandoned. Could a rival game-maker have produced their own video game last year and called it Battletoads?

Under the Lanham Act, abandonment occurs when “its use has been discontinued with intent not to resume such use.” 15 U.S.C. § 1127. However, three years of non-use creates a presumption of abandonment. Well, by my lawyer math: 20 > 3. But of course, there are always exceptions. For example, continued sales of older products can constitute use of the trademark, attempts to license or sell products or the rights to the trademark can also weigh in favor of a finding of non-abandonment.

Some courts treat the issue as whether there is “continuing recognition” of the mark by the public. This is more common with out-of-production automobiles, in part due to their expensive nature, continued production of parts, and continued provision of repair services.  Those factors aren’t quite so strong with video games. However, based on the continued public outcry for more Battletoads, it is hard to deny there isn’t any continuing consumer recognition or residual goodwill in the Battletoads mark.  So maybe, just maybe, it was a good idea I didn’t quit my job last year to release my own Battletoads video game. It would have been fun, but I avoided a potential trademark battle (along with likely claims of copyright infringement, too, for the Battletoads characters…).

Over the last few years, American business appears to be in love with recycling. We’ve seen remakes for nearly every super hero movie (even remakes of remakes with Spiderman and the Hulk). Dodge has resurrected the Challenger. And now Microsoft has brought the Battletoads back to life. Will this be the start of a new rush to buy up rights to old video game titles?

I’m not sure. But my guess is that it will be difficult to buy copies of Battletoads on eBay for a while. Almost as difficult as beating the game.

November 10, 2014—Unless you’ve been living under a rock this past week, you’ve likely heard the story of new viral sensation “Alex from Target.”  Apparently, some teenage girl took a picture of him bagging items at Target, tweeted it, and watched the entire world fall head over heels for no apparent reason.  According to TMZ (which is actually a surprisingly accurate source on many occasions), Alex has now taken a trip out to “Hollywood” and is considering various offers that would potentially capitalize on his curious and new found fame.  There’s even been an advertising start-up–Breakr–that initially took credit and then backpedaled after Alex and the girl that took the picture said they’d never even heard of Breakr.  There was also, of course, speculation that Target itself was behind the internet sensation.

Welcome, ladies and gentlemen, to the wild wild west of social media branding.  Or, as I like to call it, the internet of lies (Note:  I’m sure I did not originate this phrase, but I like the way it sounds so I’m going to adopt it).  I may be a bit of a curmudgeon, but I tend to disagree with those that think social media “buzz” is ultimately going to be an enduring component of an effective branding strategy.  I think companies like Breakr are bound to and should fail.  Don’t get me wrong, I think every company should have a social media presence where it directly communicates its own message to its consumers and fans.  However, the notion that a company can expect to consistently generate value by so-called guerilla marketing and viral campaigns seems pretty far-fetched to me for a number of reasons.  First, you can’t “make” something go viral.  And second, people are becoming conditioned to distrust much of what is on social media; you don’t want people distrusting your brand.

I think too often, people see branding and marketing as being  equivalent to generating “buzz.”  However, as a trademark lawyer, I look at branding from a different perspective, and in my view, its all about credibility.  “Buzz” may give a brand short terms gains, but credibility is what allows a brand to endure.  When you look at brands from this perspective, you also have to consider whether viral internet “buzz” is a detriment because of the distrust it may engender.  Even though Target claims they have nothing to do with the Alex from Target phenomenon, and I have no reason to disbelieve them, I remain suspicious.  If I’m Target, I don’t think customer suspicion is a good thing.

This entire campaign reminded me of a viral campaign Bluetooth engineered several years ago.   The video showed people popping popcorn by placing it between cell phones and then calling the phones.  The subliminal message was that you probably don’t want to have something that can pop popcorn next to your brain, so you should buy a headset.  I think people were rightfully pissed when they found out the truth.

If I have a point in all this rambling, I think it’s this:  There is no shortcut to enduring brand success, and viral “buzz” campaigns can have as many risks as there are rewards.  Moreover, I expect any rewards may be short-lived.  If you want to build or maintain an enduring brand, I think you’re best served by directly and openly communicating your messages to your consumers.  After all, who wants to put something as precious as their brand message in the hands of social media aficionados–the 21st century equivalent of the fickle mob.

November 6, 2014—Long suffering Vikings fans–a population of which I am a proud/depressed member–received emotionally confusing news earlier this week.  Adrian Peterson, scourge of the NFL, pled out of his felony child abuse case for a lesser charge, thereby concluding his case and avoiding jail time.  This news was emotionally confusing because, while Peterson is a superlative football player that could make my beloved Vikings a more formidable team, something just doesn’t feel right about cheering for a player who did what he did.

Vikings fans are not the only ones wandering around with the overwhelming melodramatic angst of Dawson’s Creek characters.  Vikings management is undoubtedly racking their brains about how to handle this development without alienating and disappointing their fans and their “corporate partners”–groups with somewhat different opinions.

Frankly, the Vikings couldn’t have handled the Peterson situation worse when the allegations initially came to light.  After putting Peterson on the inactive list and then promptly getting stomped by the New England Patriots, the Vikings reversed course and reinstated Peterson while lauding the importance of “due process.”  Of course, if due process was their goal, there was no meaningful reason to deactivate Peterson in the first place.  While the Vikings dithered about, the actions of their advertisers were swift and decisive.  Radisson cut ties with the Vikings, Nike suspended its contract with Peterson, and Target and other retailers removed all of its Peterson related clothing.

All of this creates an interesting stew to consider.  The speculation has been that Peterson is unlikely to face any further suspension from the NFL because he has already missed 8 games.  This is two games more than the 6 game suspension called for by the NFL’s recently instituted domestic violence policy.  That means he could very well be available to play within the next two weeks.  If the Vikings put him on the field immediately, they potentially face the ire (again) of corporate sponsors that want nothing to do with Peterson.  But if they don’t play him, they potentially face the outrage of their core fan base who, I suspect, is responsible for a substantially greater portion of their revenue than their corporate sponsors.  I suppose its at least possible that the Vikings will at least solicit input from their sponsors prior to making a decision so they can at least begin to assess the financial impact of whatever decision they make.  Regardless, it should be some interesting “brand watching” over the next several weeks.

November 5, 2014—It’s no secret that the advertising industry relies heavily on physical appearance to sell products, especially for clothing, accessories, and even cheeseburgers. About a year ago, Brent Lorentz (of the fellow Duets Blogger fame) discussed the prevalence of unrealistic expectations of beauty in advertising. As Brent mentioned, while ethical standards are applied to all sorts of industries, there seems to be little discussion of any ethics in advertising. Sure, some academics, activists and other groups might complain now and then, but the complaints don’t seem to result in any meaningful action or change.

As an anecdotal example, when Hardees / Carl’s Jr. came out with its first “pretty ladies in very little clothing cheeseburger ad,” the Parents Television Council objected. They released a public statement chiding the restaurant chain stating “The Paris Hilton/Carl’s Jr. commercial is nothing but a sleazy attempt on Carl’s Jr. part to make money selling burgers with pornography.” The response from Andy Pudzer, CEO of the chain? “Get a life.”

Against this backdrop, American Eagle took a risk with it’s “Aerie” chain of lingerie stores, choosing to not photoshop the models in its advertisements. The brand’s decision is particularly noteworthy due to the chain’s target market: 15-21 year old females. Here is one of their summer ads:

The fact that one brand has made this commitment isn’t big news. After all, companies have an occasional bout of conscientiousness quite frequently. I haven’t heard any announcement from any other brand. No, the real news is that the ad campaign is not just a “feel good” moment, but is actually making American Eagle more money. Sales of the Aerie brand shot up 9% over the last quarter. Sure, it could be coincidence or it could be that people simply hadn’t heard of the Aerie brand until these ad campaigns. Regardless of the “why,” there is at least anecdotal evidence that consumers will positively respond (with their wallets) to more ethical, realistic beauty standards for women.

To be sure, professional models don’t provide a truly realistic expectation of beauty either. But it is a step in the right direction. I doubt that the entire industry will follow suit and, honestly, I’m not sure that it would be necessary. The primary problem, for me, is that realistic body images were never portrayed in advertisements. The idea, I suppose, is that companies think that consumers see the advertisement and on some subconscious level think that they’ll be just as beautiful if they buy that swimsuit/wear that perfume/ eat that jalapeno chili cheeseburger. By extension, choosing to not make the women in the advertisements as beautiful as possible would presumably have less of an effect on the viewer because they don’t want to be average, they want to be beautiful. Even if companies didn’t believe it, it likely wasn’t worth the risk. But Aerie’s ads question these assumptions. Here’s to hoping at least some companies follow suit.