Comcast Adopts NBC Peacock Logo

In 2011, Comcast purchased 51% of NBC Universal.  Now, it appears as if Comcast decided to use the NBC Peacock logo as part of its logo.  Comcast's prior logo and the NBC Peacock looked like this:

 

Now, Comcast's logo looks like this:

 

 So far, I have not seen the outrage for the new logo that occurred with University of California's attempt to update its logo.  My guess is that the lack of outrage has to do with the use of a logo without changing it--although the NBC peacock used with Comcast will take some getting used to I am sure.   

UC Logo Flushed, Apple Embroiled in More Trademark Disputes in South America

Well, the year is coming to an end and this seems like the perfect time to reflect and review the year.  Here are some updates to some of my prior blog posts:

The hideous new UC Logo is no now no longer.  The University of California decided to revert to the traditional book and light seal and avoid any more uproar over the new logo.

Now that Apple purchased its iPad trademark from a Chinese company, it appears as if there is trouble brewing for Apple in Brazil.  A Brazilian electronics maker, IGB Eletronica SA, appears to have used the trademark "IPHONE" since 2000--six years before Apple tried to register the same name in Brazil.  IGB Eletronica SA used the trademark on a smartphone running the Google Android OS named "IPHONE Neo One."  As best I can tell, no lawsuit is pending at the present. 

Apple has found itself embroiled in another battle over the mark "IFONE" in Mexico, as well.  A Mexican telecommunications equipment company registered the trademark "IFONE" in 2003 and Apple sued to invalidate that mark in 2009.  The Mexican company responded to Apple's lawsuit by countersuing and seeking a portion of Apple's profits in damages. Thus far, two lower courts in Mexico ruled against Apple, but Mexico's Supreme Court will hear Apple's appeal.

Uproar Over the New University of California Logo

I have written several articles about the pitfalls of changing one's logo and the power of the consumers to hate it so  much that the company changes it back.    Well, not to be left out, the venerable University of California has decided to update its logo, make it sleeker, more modern, more marketable:

Of course, alumni, students, and almost everyone else have flooded the social media airwaves to express their hatred for this new look logo.  Many believe that it is not sophisticated enough to represent the University of California system. When viewed next to the "old" logo, it is easy to see the detractors' point:

Those who hate the new logo believe that it is not as prestigious or elegant as the old logo.  As with all new brands, change can be hard, especially when the change is so drastic.  University of California officials explained that the change was due, in part, because the old logo did not reproduce well for internet uses and that the logo caused confusion among the various campus' version of the UC logo. 

While the idea of modernizing a logo is not necessarily a bad idea, care must be taken to be sure to send the right message with your logo.  For a university system that boasts that it "leads the world," it probably would have been better to go with a less drastic change.  Of course, much of this may be much ado about nothing if the new logo begins to grow on people as they get used to it.  Only time will tell if the new logo will suffer the same fate as the Coca-Cola cans or the "new" Gap logo. 

Senate Updates Digital Privacy Law

It looks like the Petraeus affair has prompted a Senate panel to finally propose an update the 1986 Electronic Communications Privacy Act ("ECPA").  The ECPA, as the name implies, was written before the advent of the internet, e-mail, social media, and the like.  Thus, it is no surprise that the ECPA, as written, did not handle the explosion of the use of the internet, e-mail, and social media well.  A very broad overview of the ECPA and its sister statute:

The first part of the ECPA is essentially a prohibition against wiretapping.  In other words, it prohibits the interception of electronic communications without consent of one of  the parties transmitting the communication. The second part of the ECPA is the Stored Communications Act ("SCA").    The SCA prohibits a person from improperly accessing a "facility through which an electronic communication service is provided."  In other words, accessing e-mails stored on an ISP's server which store the communications.  There is also the Computer Fraud and Abuse Act ("CFAA"), enacted in 1984. 


The CFAA, enacted in 1984, addresses computer crimes such as hacking.  That is, it provides a list of computer-related crimes, including intentionally accessing a computer without authorization (or exceeding authorized access) and thereby obtaining confidential information or anything of value, perpetrating a fraud, or causing damage.  

Thus, each of these statutes prohibit different areas of electronic communication: the interception during transmission (ECPA), the unauthorized access to the facility storing the communication (SCA), and the unauthorized access of a computer storing the communication (CFAA). 

Back to the Senate proposal.  The Senate panel proposed requiring the government to obtain a search warrant before secretly gaining access to e-mail and other electronic communications of a person.  As one may expect, the impetus for this change is to protect a person's privacy and personal information.  This is particularly important given the current upswing in identity theft, computer fraud, and theft of trade secret or proprietary information.  In my humble opinion, the time is ripe to update each of these statutes to both protect the privacy of individuals, yet still allow law enforcement a method for gaining access to evidence. 

Trademarking the Term "TEBOWING"

Tim Tebow, the infamous Jets quarterback, who created the "TEBOWING" phenomenon is trying to get control of the term "TEBOWING."  For those who may not know, "TEBOWING" is the pose adopted by Tim Tebow during football games where he kneels and prays:

An apparent fan of Tim Tebow, Jason Vollmer, applied for a trademark of the term "TEBOWING" when Tim got wise and sought his own.  If you've read this blog before, particularly, the trademark primer you would know that one cannot simply obtain a trademark for a term, but must be using that term in connection with goods or services.  So, what are the goods and services that Tim Tebow is associating with the mark? Well, his applications list football-related CDs/DVDs, educational services, clothing, hats, posters, and the like.  Mr. Vollmer was using and selling a line of clothing, among other items, featuring the Tebow posture.  According to Tim Tebow's application, he has not begun to use the mark in commerce, yet (they are intent-to-use applications).  And, according to an article in the Los Angeles Times, Mr. Tebow wants to control of the mark in order to make sure that it is "used the right way."  

What makes this scenario interesting is that it seems obvious that Tim Tebow had no designs on doing anything (i.e. selling shirts, DVDs, etc.) with the term until another sought to take advantage of it.  Tim Tebow has learned from the San Francisco Giants' mistake with respect to his "trademark."  However, at some point, Tim Tebow will have to start using the mark "TEBOWING" in commerce, so it looks like his company, XV Enterprises LLC, will soon be in the business of selling "TEBOWING" paraphernalia. 

The Apple Does Not Fall Far From the Tree

It is well known that Steve Jobs "borrowed" the Graphical User Interface ("GUI") for its Mac from Xerox.  Legend has it that he also "borrowed" the mouse from Xerox, too.  Apparently, Steve Jobs visited Xerox who was showing off their GUI, but decided not to exploit it. So, Steve Jobs exploited the idea and made Apple's Mac a household name.  Now, with the launch of the iPhone 5, it appears that Apple may have "borrowed" the clock of the Swiss rail company for its iPad/iPhone clock app.  Swiss Federal Railways licenses the clock design from watchmaker, Mondaine. 

Here is the iconic Swiss rail clock: 

 

And, Apple's new clock app clock:

Needless to say, the Swiss Federal Railways are suing Apple for trademark infringement.  Just another lawsuit to add to the litany of them involving Apple.  Seems a bit ironic that Apple owes much of its "innovation" to others, but seems hellbent on chasing Samsung all over the world with lawsuits.  Steve Jobs proclaimed that Google's Android was a "stolen product," meaning that he accused Google of stealing his smartphone. 

A purpose of intellectual property law is to foster innovation and creativity by allowing someone to take advantage of their innovation for a limited time.  Then, it falls into the  "public domain" so that others can use that innovation and improve upon it.  Sometimes it is just a fine line between stealing another's intellectual property and innovation. 

Ben & Jerry's Upset at Being "Ben & Jerry-ed"

Ben & Jerry's who names its ice cream flavors by playing off names and words recently filed a lawsuit against a pornography studio, Caballero Video ("Caballero") for titling its films by playing off the flavors of Ben & Jerry's ice creams.  For example, Caballero boasts titles such as "Boston Cream Thighs," "Peanut Butter D-Cups," and "Chocolate Fudge Babes."  Ben & Jerry's ice cream flavors include "Boston Cream Pies," "Peanut Butter Cups," and "Chocolate Fudge Brownie."  The lawsuit includes other aspects of Ben & Jerry's intellectual property, but what caught my interest was the suing Caballero for doing essentially what Ben & Jerry does in naming its flavors. My guess would be if it was not a pornography company doing the "Ben & Jerry-ing" Ben & Jerry's would not be as upset.

The Lanham Act provides additional protection for "famous" trademarks by way of dilution.  Dilution refers to the unauthorized acts that tend to blur or tarnish the famous trademark by using it in a disparaging or unsavory way.  As you may imagine, this cause of action often targets the pornography industry.  One of the elements of a dilution cause of action is that the use of the trademark by the defendant (Caballero) dilutes the quality of plaintiff's (Ben & Jerry's) trademark by diminishing the capacity of the plaintiff's mark to identify and distinguish plaintiff's goods and services.  For a refresher on trademark basics go here. 

Needless to say, Ben & Jerry's succeeded in obtaining an injunction to stop Caballero from selling its Ben & Jerry series of titles.  However, Ben & Jerry's will still need to prove that Caballero's titles "dilute" its trademarks.  Because Caballero "borrowed" other aspects of Ben & Jerry's labeling, it may have an easier time showing dilution. 

SimsSocial v. The Ville

Electronic Arts, Inc. recently sued Zynga for copyright infringement alleging that Zynga copied the design choices, animations, visual arrangements, and character actions/movement from Electronic Arts's Sims Social game.  Sims Social released about ten months before Zynga's The Ville.  Apparently, Zynga is not new to such lawsuits.  There have been others involving Mafia Wars, CityVille, and FrontierVille.  Zynga settled all of these lawsuits.

As more and more of these types of games become prevalent and more and more uses find themselves absorbed in these games or other virtual worlds, there will be bigger competition to keep a user's attention.  Based on Facebook friends alone, the life cycle for users to play these games is about a year or so.  Which means that it is important to grab new players and keep their interest by coming out with new games or features.  For the unscrupulous, this would mean copying another's work rather than creating it independently.  By the time that a company created the new feature or game, the game may be passe.

I am not familiar with either Sims Social or The Ville, but I am sure that there will be updates on this case.  Stay tuned. 

Beastie Boys Rapper Says No to Turning His Music Into an Advertisement Jingle in His Will

I just read an article about the recently-deceased Adam Yauch's (of Beastie Boys fame) will which contains a provision prohibiting his songs from being used in an ad.  As I wrote earlier, branding is changing and companies are now trying to find new ways to get their brands before a consumer. So, it is no wonder that some artists are doing something similar with their art.  I have been guilty of looking up the name of a song I heard in a commercial, or recalling fondly a song from my youth playing in a commercial.  And, who could not appreciate this little gem from Honda, or this one?  And another favorite for mixing two different genres in a commercial. 

Yet, in some artists' minds (like Mr. Yauch) the use of one's song in a commercial cheapens the song.  I guess this is the other side of the coin that we see with fan fiction where a fan creates fiction based on another author's characters.  As I wrote earlier here and here, some artists embrace these fans' work thinking that it enhances their work (and, presumably, creates additional interest in the original work).  Other artists try to shut down these fan sites seeing it as an infringement on their intellectual property and ripping them off.  Now, as we see from the Adam Yauch article and the commercials linked above, there are two schools of thought with regard to the use of music in an advertisement.  Some artists despise it and will not allow their work to be featured in an ad, while others appear to embrace it. 

In my personal experience, I have searched for and purchased songs that I have heard on a commercial on several occasions.  Or, I have dusted off my old albums and put them in my Playlist de Jour because I heard a snippet of a song in a commercial.  What do you think?

A Cease and Desist Letter Written With Honey, Not Vinegar

Over the course of my practice, I have often had clients come to me after receiving a cease and desist letter.  Usually, the cease and desist letter, written by an attorney trained by or from one of the "Big Firms," promises hellfire and damnation to my client unless it immediately acquiesces to their client's laundry list of demands.  The demands are lengthy, and often include requiring my clients their first and second born.  I am not a big fan of these types of letters, in firing off cease and desist letters indiscriminately, or such intellectual policing tactics.  Unfortunately, sometimes such tactics are necessary when the other side is simply unreasonable and uncooperative.

As I often counsel my clients when they want me to send a cease and desist for them, it is usually better to try the nice approach first rather than immediately going for the mean approach.  In fact, I often try to get the client to agree to ending the cease and desist letter with an offer to have a dialogue about the issues raised in the letter in the hopes of avoiding having to litigate.  Other times, I try to get the client to think of ways to turn the issue into a "win-win," for my client and the other party. For many small business (and some medium businesses), litigation is bad business--well, except for us litigation attorneys who usually will get paid regardless of result. 

So, when I ran across this article about the attorney for Jack Daniels sending a cease and desist letter to author Patrick Wensick over his book cover art, I was impressed.  I disagree with the article saying that such a letter is "unlawyerly," since the letter gets across the conundrum that every intellectual property owner faces:  if you do not protect it, you can lose it.  Apparently, Mr. Wensick was impressed with the letter because he posted it on his website.  I am sure that Jack Daniels did not expect, but does welcome the free good publicity.  Moreover, as an intellectual property owner himself, Mr. Wensick clearly understands the issues and does not need a nasty letter telling him that he going straight to hell for infringing on Jack Daniels' label design.

Three cheers to Jack Daniels' attorney and a big thank you for reminding us that sometimes you can catch more bees with honey than with vinegar! 

 

Apple v. Samsung Over Galaxy and a Schizophrenic UK Court Ruling

 In another chapter of the international legal saga between Apple and Samsung over their intellectual property relating to their tablets (iPad and Galaxy), a UK court made an interesting ruling.  While the UK judge found that there was no infringement by Samsung of Apple's design rights, he also will allow Apple to opine that Samsung infringed its design rights.  What? Yes, you read that correctly, but wait, it gets better.  The same judge ordered Apple to pay for ads in various UK media and on Apple's website to correct the impression that Samsung violated Apple's design rights in the iPad.

From what I understand of this ruling, it is about as schizophrenic as any ruling I have ever seen.  On the one hand, the court finds that there is no infringement of Apple's design, requires Apple to place ads stating that Samsung's Galaxy tablets do not copy Apple's iPad design, but allows Apple to claim, as an opinion, that Samsung infringed the design of the iPad.  Of course, Apple states that it plans to appeal this ruling.  It will be interesting to see if the ruling withstands the appeal.

Settling with Proview Bought Apple Two New Lawsuits in China

Well, after settling with Proview for its iPad name, Apple appears to have bought two more lawsuits over its intellectual property in China.  Thursday, a company named Zhi Zhen Internet Technology sued Apple over Siri.  Zhi Zhen alleges that Siri infringes its voice assistant service patents named Ziao i Robot. According to reports, Zhi Zhen applied for its patent in 2004.  Apple recently announced adding Mandarin and Cantonese versions of Siri which undoubtedly is what caught Zhi Zhen's attention.  Of course, the recent $ 60 million settlement with Proview must have caught Zhi Zhen's eye, as well. 

Jiangsu Xuebao is also suing Apple for allegedly infringing its Snow Leopard trademark. Apparently, Jiangsu registered the Chinese equivalent of Snow Leopard in 2000.  In 2008, Apple tried to register that same word, but the Chinese trademark authority refused to register that name.  Presumably, the denial of registration stemmed from Jiangsu's prior registration.  Jiangsu seeks $ 80,000 and an apology.  The timing of this lawsuit is curious, indeed.

It seems as if Apple is caught in the Chinese conundrum.  It is a huge potential market.  It also is ambivalent to intellectual property protection.  I am sure there will be more to these stories.

Apple Buys iPad Name from Proview

As I wrote a few months ago, a Chinese Company, Proview Technologies, was the purported owner of the iPad name in China.  Well, as suspected, Apple was essentially left with no choice, but to pay to get the iPad name back.  According to reports, after a round of mediation, Apple settled its dispute in the Chinese courts by transferring $ 60 million to an account the court designated.

As you may recall with regard to the dispute, Apple thought it had purchased the global rights to the iPad trademark when it bought Proview's parent company.  Proview, a financially troubled company, disagreed and embarked upon attempting to secure payment for its mark through several lawsuits.  After two years rumbling through the Chinese Courts, Apple finally succumbed.  Apple now owns the iPad trademark in China and may continue with its planned expansion into that market. 

Regular Joes Are Making an Impact on Patent Litigation and Advertising

Two articles I read recently discussed how companies are saving costs by enlisting people "off the streets" to assist them.  The first article discussed how Silicon Valley companies who face exorbitant costs of patent litigation seek the help from the masses to conduct prior art searches. 

This is how it works:  a company called Article One Partners LLC allows a company like Apple, Microsoft, etc. post a description of the technology for which they are being sued and allowing them to post awards for those who find the prior art.  The award is larger the better the prior art.  Article One then hires students, techies, and others on a part-time basis to search for the elusive prior art.  These people submit photographs, literary references, foreign patents, and other obscure documents which they hope is enough to convince the technology company that it can invalidate the patent being enforced against it. 

I was involved in a patent case which cost hundreds of thousands of dollars for the patent validity search alone.  I recall the attorney who conducted the search (a very thorough guy) filled a room full of bankers boxes worth of items which could or could not be prior art.  Article One Partners puts the search in the hands of amateurs who do not charge the hourly rates of the attorneys.  The company's attorneys undoubtedly review the submitted prior art, but utilizing the services of Article One Partners can save a technology company a boatload in attorneys' fees and costs.  While Article One Partners services big companies, it could be an invaluable tool for a small startup company facing a patent lawsuit from a huge conglomerate. 

The second article discussed a company called Poptent, Inc. which appears to have gathered inspiration from the Doritos Crash the Super Bowl Contest from a few years back.  In case you forgot, Doritos held a contest asking amateurs to create and submit a commercial with the best one(s) being shown during the Super Bowl.  The winning commercial cost the group of filmmakers who created it $ 12.  The cost of using Poptent's stable of students, hobbyists, and film school graduates to create a television commercial costs a company about ten percent of the cost of using a traditional advertising firm.  That is a huge savings. 

The lesson learned from these articles is that a company should think about utilizing other resources rather than the "traditional" ones which may be outside of that company's budget.  In my practice, I am always trying to work with my clients to achieve a quality product that fits within their budget. 

Ford Mortgaged Its Logo and Got It Back

In 2006, Ford sought to borrow money to restructure and streamline its operations.  In order to do so, Ford secured the loan with most of its assets, including its trademarks.  This move by Ford let it survive the downturn in 2008 and 2009 without filing for bankruptcy or seeking a federal bailout.

In order for Ford to get its trademarks back, it needed two companies to upgrade its credit.  Fitch Ratings upgraded Ford's credit rating in April.  Moody's Investors upgraded Ford's credit rating at the end of last month.  Apparently, these two companies were impressed enough with Ford's efforts and turnaround to make it possible for Ford to regain its assets.

As we become more brand driven, it is no wonder that Ford's trademarks were collateral for a hefty loan which ultimately saved the company from the economic disaster that was 2008-2009.  Even a small company may think about using its intellectual property for collateral in order to get funds to help it grow.

In fact, I represented some Angel Investors once who sought the patent of the company in which they invested when they discovered that the company had not been entirely forthcoming with information during the investor meetings (pitches).  They all specifically stated that they invested their money based on the technology of the patent.  Of course, this was pretty much the only asset of the company, but it is just more proof that a company should really think about leveraging its intellectual property to its advantage.

Served Via Facebook

I just came across an older article that discussed Flo Rida being served with a lawsuit by way of a post on his Facebook wall.  Normally, when a plaintiff cannot find a defendant, s/he can seek an order from the court to serve that person by publication.  I am sure you have seen the publications in your local newspaper--assuming you still read an actual newspaper (ahh, there is nothing like the black ink left on your fingers from actually turning pages rather than flicking a screen). 

Now, in this case, an Australian judge allowed the plaintiff to serve Flo Rida by Facebook.  Apparently, this is not an uncommon occurrence in Australia.  I am unaware of service by Facebook in the United States, but who knows, maybe it is on its way.  So, the next time you check your Facebook account, be careful because you just may get served. 

Nike Unloads Two Brands

Recently, Nike announced that it would be selling its Cole Haan and Umbro brands. Nike claims the move is to allow it to concentrate on its namesake and other related brands.  This is just another example of a company realizing that more brands is not necessarily "more better."  See the recent dropping of brands by the American automakers. 

This makes sense for Nike given that its Nike and Jordan brands serve Nike's core consumers.  Higher end dress shoes and accessories (Cole Haan) and soccer equipment and apparel (Umbro) do not complement those brands with Nike's consumers as well as Converse and Hurley which are two other brands that Nike will be trying to grow. 

Indeed, if the recent design for the U.S. soccer national teams is any indication, Nike should probably just get out of the soccer arena altogether.  I do not understand how a company who can design decent looking jerseys for the likes of Arsenal, Barcelona, Juventus, Portugal, and Brasil cannot seem to create a good looking jersey for the United States.  Ah, but I digress . . .

Nike's decision underscores the need to understand the strengths and weaknesses of your trademarks and how they fit within the strengths and weaknesses of your business.  It is always a good idea to review your company's intellectual property to determine if changes need to be made.  In addition, a periodic intellectual property review can also find underused or under protected intellectual property.  This, in turn, could lead to a revision (strengthening) of your company's intellectual property protection plan.  An intellectual property attorney can assist you in conducting such a review. 

Google is Learning the Hard Way About the Need to Build an IP Portfolio

Silicon Valley exploded with the concomitant explosion of the value of intellectual property.  In fact, Silicon Valley companies often use their patent portfolios to use against rivals.  Sometimes this manifests itself in a cross-license of patents, or the wrangling of a license fee, or some other type of concession from a company's rivals.  Because these companies realized the value of intellectual property, oftentimes a business strategy is to "collect" intellectual property (by buying them along with a company, or obtaining them from a company that files for bankruptcy). 

Amazingly, Google did not stockpile intellectual property--even in the smartphone arena.  That strategy (or lack thereof) has now lead to Google being the subject of many lawsuits by Apple and others all over the world.  As consumers are shifting from desktops to mobile devices, this may cost Google dearly. 

Apparently, Google has learned its lesson because it is now trying to build its intellectual property (especially patent) portfolio.  The problem is that with so much litigation against it by some very big companies, Google's failure to capture the right intellectual property could cause its Android phones to become pricey.  Litigation is costly. 

Hopefully, if you are a fledgling technology company, you are keeping an eye out for intellectual property that can help you build your business and trying to obtain it or get rights to it before being sued.

Potential Employers are Asking for Social Media Passwords

It is becoming more and more common for potential employers to ask job applicants for their social media passwords (especially Facebook passwords) as part of the vetting process.  Employers want to get a little more insight into the applicant before offering them a position.  Public agencies use the information to make sure that there are no gang connections or photos of illegal activity (especially for law enforcement applicants).  Can they do that?

Yes, they can.  Interview questions that are discriminatory in nature are prohibited.  Asking for a Facebook password is not discriminatory in nature.  Does that mean that the candidate must supply the password?  No.  Of course, not supplying the password may be a deal breaker and you risk not getting the job. Given that even "deleted" Facebook photos remain on Facebook's servers for three years, the employer may be able to access those photos.  Granted, to access them, the employer would need the direct link address.  Several Facebook users see this as a violation of their privacy rights, but is it private when the user posted the photo themselves in the first place?  There has been many recent articles regarding the privacy policy of several social media sites.  So, a Facebook user should not expect much to be private when they post it.

However, that does not necessarily mean that a prospective employee should feel compelled to provide their password.  This is another warning to be careful what you post on social media sites.

LinkedIn, Twitter and Facebook Accounts Redux

There appears to be an increasing amount of litigation over an employee's social media account for the company.  In an earlier blog post, I discussed the case of PhoneDog v. Noah Kravitz.  Another case involves custody over a LinkedIn account.  Edcomm (employer) and Linda Eagle (former employee) are suing over who owns the Ms. Eagle's LinkedIn account.  As with the Kravitz case, the employer is arguing that the "connections" are trade secrets.  The court was not persuaded by this argument, but the lawsuit is ongoing.

Again, it behooves a company to put in place policies regarding an employee's use of and creation of these social media accounts on behalf of the company.  The clearer the policy the more likely that the matter can resolve without resort to litigation.

Employment and Personal Gadgets and Social Network Accounts

Employees are using their personal smartphones and tablets for work more and more.  While this allows the employee to stay connected to work, even during "off hours," it can cause some issues if the gadgets are not properly secured.  Those gadgets are prime targets for hackers seeking to access business data or confidential/trade secret information. 

So, what do employers do? Well, as of now, there is a range of ways employers handle the situation.  They either ban all personal gadgets for work use, require that the employee allow the employer remote access to the gadgets in order to allow the employer to wipe it clean, or do nothing (because they are not sure what to do). 

What should employers do?  This is a difficult question because it not only raises privacy and confidentiality issues, but it also implicates issues involving the need to allow a third party suing the company access to the employee's personal devices and questions about who owns the e-mail, work twitter account, or work facebook account, etc.  Allowing employees to use personal gadgets rather than employer issued (and paid for) ones saves companies substantial costs.  Not to mention that employees do not want to tote around two phones, two laptops, or two tablets (one work issued and one personal).  Of course, the use of a personal gadget for work means that the employee will also access personal social media sites and others which are targeted by hackers. 

An employer must be creative in dealing with these issues in order to protect its trade secret information.  It may be as simple as requiring the employee to allow the company to install protections on the gadget.  Or, to further limit access to information from a smartphone or tablet.  Each company should research how their employees are using their personal gadgets for work and how to best protect the company's information.  As with most trade secret/confidential information protection schemes, there really is no one size fits all solution. 

Pinterest And Copyright Infringement

One would think that after the Napster ordeal, the explosion of the internet, and the constant reminders about copyright and trademark infringement issues with regard to the use of images and logos from another's website, that a company like Pinterest would have been better at anticipating the problem with having people "pin" items to their site.  For those of you who do not know, Pinterest is an electronic scrapbook wherein users "pin" images the website.

At first, Pinterest did nothing to help stave off the infringement that would undoubtedly occur when it encouraged people to "pin" images to the site.  It took a user of the site to blog about why she removed the images she pinned--the user is both a photographer and an attorney.  The blog apparently went viral and spurred Pinterest to contact her in order to begin the process of putting in place a policy to avoid the obvious legal issues. 

Yes, the copyright law may be a bit behind the technology, but it caught up with Napster and it will catch up with Pinterest.  It is simply hard to believe that an internet startup company would not consider the legal implications of encouraging people to post photos found on other sites.  Very disappointing to say the least. 

Nevertheless, it now appears that Pinterest is trying to do what it should have done in the first place. That is good especially given that Pinterest is growing quickly.  Hopefully, they will get some solid legal advice on what to do and protect "pinners" and copyright owners. 

Another College Football Trademark Dispute

About two years ago, the University of Southern California asserted its rights to use "USC" against University of South Carolina who wanted to use the those letters on its athletic uniforms.  Southern California prevailed and South Carolina cannot use those letters even though those letters are the initials of the school.

Now, the University of Alabama has been in a long battle with an artist named Daniel Moore.  Mr. Moore is an artist in Alabama who depicts scenes from the University of Alabama football games. The dispute revolves around Mr. Moore's use of Alabama's Crimson and White colors.  The Crimson Tide have spent an enormous amount of money in legal expenses against Mr. Moore.  Mr. Moore won the first round in the District Court which ruled that he had a First Amendment right to paint the scenes, but it did not allow him to use his paintings in other mediums (i.e. mugs, t-shirts, etc.).

Both sides appealed and are now awaiting a ruling from the 11th Circuit Court of Appeal.  This is not the first time that a District Court of Appeal had to decide an intellectual property issue between an artist and a sports team/person.  In 2003, Tiger Woods sued an artist to prevent him from selling prints derived from his painting of Tiger Woods winning the 1997 Masters.  That court, the 6th Circuit, essentially held that the First Amendment trumped Mr. Woods intellectual property rights.

Interestingly, Bear Bryant asked Mr. Moore to commemorate Mr. Bryant's bypassing the record of Amos Alonzo Stagg for coaching victories.  Several of Mr. Moore's paintings are on display at the Paul W. Bryant Museum on Alabama's campus.  Clearly, Mr. Moore is not only an artist, but he is a fan.

So, what is going on here?  Big money is.  College football has become such a huge moneymaker that the teams are doing everything they can to capitalize on and control the use of their logos, image, and colors. Should the 11th Circuit side with the Tide, it could lead to a chilling of news or magazine reporting of Colleges or games.  Could a newspaper print a photo from the game when reporting on the team?  Maybe not.  That seems like it would be gutting the First Amendment in favor of intellectual property rights.  Stay tuned. 

Amazingly, Lululemon Turned Yoga Apparel Into a Must Have Item

For various reasons, none of which really have to do with the quality of the product, I am not a huge fan of Lululemon ("Lulu") wear.  I prefer Lucy.  But, judging from the the Lulu to Lucy ratio at my gym alone, I think Lulu is the apparel of choice.  According to a recent Wall Street Journal article, Lulu has been growing at an exponential pace--posting nine quarters of a 30% increase in sales over the past three years.  Also, according to the article, Lulu does not use conventional marketing techniques to increase demand for its products.  Instead, Lulu uses good ol' fashion customer contact to create an aura of scarcity of their products in order to encourage the customers to keep their products flying off the shelves. Lulu's Chief Executive spends hours in stores observing customers, listening to their complaints and suggestions and using that information to change products or stores.

In addition, Lulu places its product folding areas near the fitting rooms in order to eavesdrop on customers and Lulu has a has a large chalkboard for customers to write their complaints.  The complaints are then relayed to headquarters. 

Lulu execs thing that the company's growth will slow down due to the fact that the brand grew so fast--at some point, it has to slow down.  However, in its most recent quarter growth softened from 29-16% which is still above the norms of the industry.  Lulu creates a sense of scarcity for products in order to sell its product at full price.  New colors and seasonal items can expect to be in a store only 3-12 weeks in order to keep the stores "fresh."  The constant changeover also keeps Lulu customers coming back often to get the "latest and greatest."  Moreover, Lulu has a very strict return policy.  They definitely are not Nordstrom in that regard. 

True Religion Goes After Chinese Counterfeiters

The saga continues.  True Religion jeans maker just obtained a $864 million judgment against online Chinese counterfeiters.  About 280 Chinese websites using domain names like truereligion4cheap.com, were selling counterfeit goods and infringing on True Religions' trademarks.  Not surprisingly, the Chinese companies did not appear in court.  As such, the New York Federal Court issued a default judgment for the $864 million amount, as well as ordered that the companies shut down the infringing websites, or any other websites that they created in the future to infringe upon True Religion's marks or to sell counterfeit True Religion products. 

Of course, the trick for True Religion will be to collect on the judgment.  This is probably simply more of an ongoing problem with Chinese companies who are paid by American companies to make their goods because the labor costs are cheaper in China.  Those Chinese companies then take the information provided by the American companies to make counterfeit goods.  Kudos to True Religion for standing up for their rights.

Now, if only they made jeans for us soccer player types!

Nissan is Bringing Back the Datsun Brand

A long time ago, I wrote an article for the local Chamber of Commerce publication discussing how Silver Oak Winery had such a strong brand for its Cabernet that it did not want to use it for its Merlot.  The article can be found here:  http://www.mcclimanlawfirm.com/pdf/June.2004-ICC%20Article.pdf 

Recently, Nissan has done something similar with its Datsun brand.  For those of you who are old enough to remember the Datsun 240, 260, and 280Z or the Datsun 510, you may remember the seemingly strange decision by Nissan to phase out the Datsun brand.  Indeed, even now several auto makers have a multitude of lines of brands (Toyota/Lexus, Cadillac/Chevrolet/GMC/Buick, Ford/Lincoln, etc.).  Even Nissan reversed course and began selling its luxury cars under the Infinity brand just a few years after it phased out the Datsun brand.

Well, now after over 30 years in hibernation (since 1981), the Datsun brand is coming back.  Albeit, Nissan is limiting the Datsun brand to developing markets because the Datsun vehicles will be small, inexpensive cars made to appeal to those markets.  Nissan certainly does not want its no frills vehicles tarnishing or lessening the reputation of the Nissan name.  Now, for those of you who may pine for the 240-280Z, you will be sad to hear that Nissan does not plan to bring back those cars any time soon. 

Just another example of how one's own marketing strategies or branding can come full circle.  It is always a good idea to evaluate your brands to ensure that they are as strong as a Cabernet.  

A Lawsuit Claims that Wiz Khalifa Stole "Black and Yellow"

One of my favorite songs to spin to was a remix of Wiz Khalifa's song, "Black and Yellow."  Now, according to a lawsuit filed by Max Gregory Warren, the song was not Khalifa's but Warren's.  Warren claims that he wrote a song entitled "Pink and Yellow," in November, 2007.  In February, 2008, he obtained a copyright registration for the song.  Warren seeks over $ 2 million in damages.

An early question in the lawsuit is whether Warren still owns the copyright for his song.  Usually, songwriters sign over any of their copyright rights when they sign with a recording label.  After that, the question will turn to whether the songs are actually substantially similar enough to warrant a finding of infringement.  Having heard both songs, there are some similarities.  Are there enough similarities?  Only a judge and jury will be able to tell us that.

Dog Owner Must Take Down Billboard Depicting Dog Dressed As Ellen

Sometimes I think that intellectual property attorneys have no sense of humor.  A lawyer for a billboard company made a dog owner trying to get her dog on the Ellen DeGeneres show take down her billboard depicting her dog dressed like Ellen.  The billboard attorney claims that the Ellen DeGeneres show asked to have the billboard taken down, but representatives for the show said they did not know about the sign.  Another interesting twist is that some billboard salesmen recommended that the dog owner dress her dog as Ellen rather than Elvis--her initial plan was the Elvis idea.  Based on their recommendation that an Ellen dog would more likely succeed in getting on Ms. DeGeneres' show, she changed her plan. 

It would be one thing if Ms. DeGeneres wanted the sign taken down.  And, yes, the billboard company may be held contributorily liable for infringement of Ms. DeGeneres' name and likeness, but it seems to me that Ms. DeGeneres should be the one to make that call.  Who knows? Maybe Ms. DeGeneres appreciates the free publicity and thinks the sign is funny rather than offensive?

Holy Copyrights, Batman! The Batmobile is Copyrightable!

DC Comics sued the owner of Gotham Garage over the look of the Batmobile.  Apparently, Gotham Garage creates replica Batmobiles to comic book fans with disposable cash.  DC Comics and its parent company, Warner Brothers, sued Gotham Garage over these replicas.  DC Comics and Warner Brothers argues that the replicas violate their copyrights and trademarks. 

In a preliminary ruling, a Federal judge said that the design elements of the car are not functional, and therefore, may be the subject of copyright protection.  Now, that DC and Warner have overcome this preliminary obstacle, they must now convince the judge that they own a valid copyright in the design to the Batmobile.  That is, of course, if Gotham Garage still puts up a fight.  Presumably, DC and Warner have a bigger war chest than Gotham Garage. 

Tune again for an update . . . Same Bat-time, same Bat-channel . . .

Chinese Company Owns iPad Trademark

In another twist in China's continuing unabashed intellectual property infringement, a Chinese company has registered the trademark "iPad" in China.  Its registration allowed it to have authorities seize the ubiquitous tablet from store shelves in Northern China.  The Chinese company is Proview Technology.

Apple is fairly aggressive in protecting its intellectual property--it has chased Samsung with patent infringement lawsuits all over the world.  Unsurprisingly, Apple filed suit in a Chinese court to reclaim its iPad name.  The Court rejected Apple's lawsuit.  According to Proview, Apple did not follow Chinese law, and therefore, it is confident in its ability to succeed in the numerous lawsuits Proview filed against Apple over the name.  Proview has filed the lawsuits all over China.

Apparently, Proview registered the iPad name in several Asian countries, Mexico, and in Europe as early as 2000.  Proview, a Taiwanese company that primarily manufactures  flat screen displays, sought to launch its own tablet under the name.  The launch proved unsuccessful and it owes creditors several hundred million dollars. Not to mention that Proview's chairman filed for bankruptcy. This means that Proview is looking to make money with these seizures.  Apple is enjoying world-wide growth in the tablet area.  Thus, it is a perfect target for a company like Proview to use the Chinese courts to extort settlement payments from Apple.  At least, that is my guess as to what Proview is doing. 

Given the value of the iPad name to Apple, Apple may have no choice but to acquiesce to Proview.  In fact, apparently believing in the strength of its position, Proview sued in a California state court accusing Apple of forming an company in England for the purpose of registering the "iPad" name for Apple.  Proview claims that such conduct by Apple is fraud based on Proview's allegation that the London company sought to purchase (not license) the "iPad" name from Proview.  Proview believes that the London company should have disclosed the fact that it was seeking the name for Apple or that the name would be used for a tablet computer.  Notably, this lawsuit is not framed as one involving trademark infringement.  It is definitely creative and keeps the matter out of Federal Court.

Clearly, Proview is seeking to get Apple to pay it ot settle these lawsuits. 

Chinese Consumers Are Losing Their Appetite for Fakes

As I blogged earlier regarding counterfeit wines, Chinese consumers, especially upwardly mobile ones, are consuming higher end goods.  Well, a recent article in the Wall Street Journal reports that some Chinese consumers are losing their appetite for fake or counterfeit items.  This is news given that the Chinese have been the headliners for intellectual property theft for quite some time.  Indeed, many a blog post on this particular blog discusses the rampant piracy and counterfeiting occurring in China.

According to the article, there is shift in tastes from the widely popular and available counterfeit goods to authentic goods.  The article, surprisingly to this author, states that 95% of women between the ages of 28 and 35 express that they would be embarrassed to carry counterfeit handbags.  What is surprising is that counterfeits seem to be a way of life for the Chinese, and therefore, consumers caring about authenticity of goods seems to be a non sequitur.  They manufacture most of the top goods (see Apple), and therefore, are able to obtain important information about those products in order to replicate them with much cheaper materials.  So, counterfeits seemed to be (and is) a part of the Chinese culture.  Nevertheless, as China's economic power grows, so does their taste for authentic goods.

This can be very good news for American companies because it opens another substantial market for their authentic goods and may lead to a change in attitude towards intellectual property by China.  Okay, that last part may be a pipe dream right now, but a girl can dream can't she?  The Wall Street article says that the change in attitudes by the Chinese consumers is encouraging American companies to expand into that market.  Of course, those companies should make such expansion cautiously given China's recent and immediate past with intellectual property.

Of course, given China's counterfeiting past, these companies would do well to make sure that they put into place a method or system for allowing consumers to differentiate between authentic and counterfeit.

Who Owns a Twitter Account? The Employer or the Employee?

An employee starts a Twitter account on behalf of himself and his employer.  The Twitter account bears the name of the employee and the employer.  Over the years that the employee is employed at the company, the Twitter account takes off and he amasses several thousand follows.  When the employee quits, who gets to keep the Twitter account???

Well, there is currently pending a lawsuit in California over essentially these facts.  Noah Kravitz a former employee of PhoneDog.com which sells phones and manages a blog is the defendant in a legal battle over the Twitter account.  According to PhoneDog the Twitter account is a customer list, and therefore, is its intellectual property--namely, its trade secret.  As PhoneDog sees it, it invested the costs and resources in growing its fans and followers on social media.  This, so the argument goes, further builds PhoneDog's brand awareness.

So, who's account is it? Well, of course the answer is not clear.  Apparently, the dispute hinges on whether Mr. Kravitz opened the account for his benefit or that of his employer at the time, PhoneDog.  The facts are not clear cut, and that is probably why this has ended up in our court system rather than being resolved earlier.  Mr. Kravitz claims that he opened the account, linked it to his personal e-mail, and made both personal and professional tweets.  Shockingly, PhoneDog has no "Twitter Policy" to address this question.  PhoneDog has, by way of its pleadings, made these questions more pertinent than the ultimate question: can followers of a Twitter account be a trade secret?

For those of you who have read some of my earlier postings, you should recall that in order to qualify as a trade secret information must: (1) have value in being a secret to both the holder of the secret and its competitors and (2) subject to reasonable efforts to maintain the secrecy of the information.  Clearly, the list of followers is not a "secret" because they are easily determined. Indeed, PhoneDog appears to understand this point when it claims in its complaint that the password to the account is the "secret."

It is also hard to see how the password to the account containing the customer list is the actual trade secret.  Ultimately, this will be a very expensive lesson to PhoneDog.  I suspect that PhoneDog has or will shortly develop a policy regarding social media and/or put a clause regarding it in their employment agreements.  Such a policy will most likely set out who owns which accounts and make sure that employees use the company's social media accounts for company business.  Every small business should learn from PhoneDog's mistakes.  With technology advancing, it is imperative that companies seek to review the new technology and try to anticipate any issues that may arise from the company's or an employee's use of the new technology.  Then, the company should work to use policies and contracts to avoid the pitfall that that ensnared PhoneDog.

In-N-Out Burger Copied in China

As if the Chinese counterfeiters were bad enough, a company should also protect themselves against employees and former employees.  Apparently, some former employees took the concept from In-N-Out Burger to Shanghai, China.  With the Chinese showing an affinity for McDonalds Big Macs and Burger King Whoppers, some former employees of the Irvine-based In-N-Out thought they would try their hand at bringing In-N-Out to China.  The problem was that they did it without the blessing of In-N-Out and copied In-N-Out's trademarks and trade dress (and may have taken some trade secrets).

This is just another reminder that a company should protect itself against intellectual property theft by its current and former employees.  Depending on the company's size and intellectual property, the ways to protect against such theft varies.  Usually, it will start with an intellectual property audit (see earlier post) and result in building an intellectual property plan tailored to your company. 

Speaking of the Super Bowl and Branding . . .

In 2016, the NFL's big game will be its 50th.  If the NFL maintains its use of Roman numerals to denote the number, then that Super Bowl will be Super Bowl "L."  Yes, "L" as in "Loser" or the "L-word."  Not a connotation that the macho NFL will necessarily want.  It is not like it is the sexy Super Bowl "XXX" of 1996 or the suggestive Super Bowl "LIX" of 2025.  According to a recent Wall Street Journal article, the NFL is already starting to think about the unfortunate use of "L" for its 2016 game.  My prior post makes clear that the NFL takes its "Super Bowl [insert Roman numeral]" brand very seriously.

The NFL has a few years to come up with a solution.  Will it abandon the Roman numerals for that year? Will it embrace the "L" in a manner similar to the way that World Wrestling Entertainment did after losing a trademark action to the World Wildlife Fund?  After losing, WWE (previously known as "WWF") ran advertisements saying: "Get the 'F" Out" as a way to embrace the change from "WWF" to "WWE."  A good example of making lemonade out of lemons, in my opinion.  Will it try to utilize the "L" with something else (e.g. the location of the game)?  Will it try to give the "L" a different association than the current one? 

With the NFL's astronomical popularity and television ratings, its decision with regard to the 50th Super Bowl will have an impact on its viewers.  I can't wait to see what the NFL does with this one.

Aggressive Trademark Policing Can Expand Your Protection and is Like Winning the "Super Bowl"

A while ago, a friend of a friend asked me for some advice regarding a cease and desist letter their organization received from the owner of the trademark "Iron Man" (World Triathlon Organization).  Their organization held team races which used the term "Iron Man" descriptively (i.e. to denote that the race would not include any substitutions, so that each person on the team had to "iron man" the race).  Not surprisingly, when I looked into this matter, it was easy to see that the trademark owner was using its superior resources (it is a big company) and stable of high-paid attorneys to shut down anyone from using the term whether it was in a trademark sense or not. The trademark owner went after every person/entity trying to use the term for their goods or services despite the goods and services having no relation to those promoted by WTO.  In one instance, WTO challenged the use of "Iron Man" in association with scientific measuring instruments causing the registrant to abandon its application.  Not sure how measuring instruments can be confused with triathlon-related activities, but clearly WTO does not want anyone to use "Iron Man."

My advice to this small organization was to just give up using the term because litigation would financially ruin the organization and there was no doubt that World Triathlon Organization ("WTO") had the resources to see the litigation out to its conclusion.  While legally, there was a strong argument that the small organization was not doing anything wrong, testing that theory would undoubtedly take years and hundreds of thousands of dollars in litigation costs.
 
Remember, trademarks are supposed to identify source and not confuse consumers, but not to take words or phrases out of the lexicon.  That is to say, a person should be able to use a term to describe a product even if the term is the trademark of another (e.g. I am wearing Nike shoes).  As long as the person or entity is not inferring that it is a sponsor or affiliate of the trademark owner, then from a strictly legal sense that should be okay.

Unfortunately, some companies, like the owner of "Iron Man" aggressively fire off cease and desist letters, oppose trademark registrations, or file lawsuits to those using their trademarked name legitimately.  The most recent example of this is the NFL's aggressiveness in not allowing those not authorized by the NFL to use the term "Super Bowl."  Look at the advertisements from companies not from "official sponsors" of the event, they will advertise deals for the "big game" or "super" savings, but will not use the term "Super Bowl."  That is because the NFL polices any such use and has the means to drive many of the smaller entities out of business with litigation, or make life miserable for the bigger companies who'd rather spend their money on promotions or building their business and not litigation.

As a trademark attorney, I advocate strongly for my clients to ensure that their rights are protected.  But, on the other side sometimes legality should give way to reality so that my clients can continue to grow their businesses.  

Right of Publicity and Amateur Athletes

There is currently pending in a Northern California Federal Court a dispute between college athletes and Electronic Arts, the NCAA, and the Collegiate Licensing Company a right of publicity suit over the use of a college athlete's name and likeness in video games.  Collegiate athletes are not allowed to receive certain types of benefits for playing.  However, many states recognize the ability of a person to use their name and likeness, or more appropriately, to prohibit others from using their name and likeness.  The right of publicity stems from a person's right to privacy.

On the other side of the coin is the venerable First Amendment.  Oftentimes, the First Amendment is a valuable tool in combating against claims of theft of intellectual property (trademark, copyright, right of publicity).  To overcome the First Amendment defense, those seeking to assert their right to publicity will need to show that their right trumps the defendants' right to Free Speech.

It seems to me that the way forward for the athletes is to convince the Court that the use of the likenesses of the athletes is a significant aspect of defendants' ability to profit from their endeavors.  Of course, the schools and the NCAA already profit greatly from exploiting their athletes, but that is a blog for another time.

Foreign Works Yanked from the Public Domain

The Supreme Court recently upheld the law granting copyright protection to several foreign works which were in the public domain--meaning they were available to the public. The law came about in order to bring the United States in compliance with the Berne Convention.  The law granted copyright protection for foreign works that never received protection in the United States because they were published in countries that had lacked copyright relations with the United States.  It also provides copyright protection to works in the public domain due to technical defects in meeting the requirements of the Copyright Act.  In a 6-2 ruling, the Supreme Court held that Congress acted within its powers in enacting this law. Congress reasoned that full participation in the Berne Convention best served the interests of the United States. 

The movie, music, and publishing industries believe that the Supreme Court's ruling will open the door for them to obtain reciprocal rights overseas.  However, the ruling does create some chaos in that there are now works which persons did not have to pay for and now will have to pay to use those works. I am also not sure about the reciprocity idea, but I guess the proof is in the pudding on that issue.

On the other side of the issue were orchestra conductors, performers, educators, among others, who believed that Congress exceeded its powers to take away works that they could perform or share freely because they were in the public domain.  Not surprisingly, Google was also on this side of the argument. 

The Supreme Court's ruling is another in a series of others giving Congress broad discretion with regard to enacting Copyright laws. Indeed, it appears as if Congress over the last few years has worked to increase copyright protection in response to pressure from the entertainment industry.  With the expansion of the technology sector (especially the "new" media like Google, Facebook, etc.), Congress will now have to walk a tightrope to satisfy both sides.  The perfect example of the tension between the two sectors can be found in the recent fight over SOPA and PIPA. 

The way we share works and information is changing and Congress should work harder to balance the interests of all.  The overriding purpose of intellectual property laws (like the Copyright Act) is to "promote the Progress of Science and useful Arts." (U.S. Const., Art. I, Sec. 8)  In order to promote the arts, Congress should allow authors to utilize and use works after they have fallen in the public domain.  Continually providing for longer protection or yanking works out of the public domain, in my opinion, does just the opposite--it stifles creation.

China Now Is Knocking Off Fine Wines

Well, I guess it was just a matter of time until the resourceful knock off artists targeted high end wines.  Given that China's upwardly mobile citizens are quick to show off their new wealth and supposed sophistication.  The Chinese are apparently using their new wealth to consume imported wine and other luxuries.  This, in turn, has led foreign producers into looking to unlock the lucrative Chinese market.  According to the Wine Institute, China is the fifth largest foreign market for wines.  Even Yao Ming, the former NBA basketball star, is getting into the wine business by importing a Napa Valley Cabernet that retails for almost $ 300 a bottle. 

All of this opens the way for knock off artists.  The Chinese market is particularly vulnerable to the knock offs because the allure is more about the label and less about the way the wine pairs with the meal.  As relatively newcomers to the higher end wines, the Chinese in general have a less well developed palate.  Also helping the counterfeiters is China's inconsistent enforcement (that is no surprise). 

You have to give it to the counterfeiters.  They found a weakness in the consuming public, in enforcement, and an easy way to knock off high end wines.  The two primary ways that the counterfeiters do their work is to purchase or obtain emptied bottles of high end wines and refilling them or tweaking the label slightly.  Not much different than the way they counterfeit almost anything else.  So, when in China, be careful when ordering that imported wine.  

Facebook's "Sponsored Stories" Are Facing a Court Challenge

Last year, Facebook began utilizing ads it called "Sponsored Stories."  When a Facebook friend clicked "Like" on a product, page, or company, Facebook automatically created an ad for that site including the friend's name and photo.  Because California is one of the few states that has a right of publicity law (i.e. making it illegal to use a person's name, image, or likeness without consent), several Facebook users sued Facebook claiming misappropriation of their name and image.

 Facebook argued that the ads fit within the "newsworthy" exception, and therefore, Facebook did not require consent of the users.  The exception applies to the use of another's name, image, or likeness without consent if done "in connection with any news, public affairs, or sports broadcast or account, or any political campaign."  Facebook's argument was that the users were "public figures" to their Facebook friends.  A thin argument, indeed.

The judge was not impressed and ruled against Facebook stating that the exception did not apply to purely commercial uses of  newsworthy actions.  Interestingly, the court appeared to not fully understand that there are "Facebook friends," and then there are "Facebook friends." There are those who are Facebook friends with people they barely know, and therefore, it cannot be that the users are "public figures" to that category of Facebook friends.

Nevertheless, an appeal is most likely imminent.  Stay tuned.

Ex-Employee Sues James Cameron Alleging Theft of Avatar Script

When submitting an idea to a producer, it is always a good idea to get a non-disclosure agreement and an acknowledgement that the person understands that the idea is yours.  Too many times, inventors or authors simply submit their ideas blindly to producers in the hopes of selling or licensing the idea to an entity with the resources to see it through to market.  Because of this, many companies will not open and will return any mail that appears to have an idea submission without some sort of agreement between the parties about the use or ownership of it.

The situation changes slightly when the person submitting the idea is an employee of the producer and that person's job description includes creation of such ideas.  Employees who invent something or create an idea as part of their employment generally do not own their rights to that invention or idea (this is somewhat of an oversimplification) because employers will have what is called a "shop right" in the invention or idea.  A "shop right" is essentially a license created by law from the employee to the employer.

Given the foregoing, it is interesting that a former employee of a production company is suing James Cameron and his former employer, Lightstorm, for "stealing" his story about an "environmentally-themed 3-D epic about a corporation's colonization and plundering of a distant moon's lush and wondrous natural setting."  Hmmmm, sure sounds like the plot for Avatar.

Now, before jumping to conclusions, it is conceivable that James Cameron or one of his "people" came up with the idea independently of the Lightstorm's employee, and therefore, there would be no copyright infringement.  This one may be a fun one to keep an eye on.

Vera Wang Rebrands Herself

A while ago, I wrote an article about how Silver Oak Vineyards used a "pseudo-brand" for its Merlot because it did not want to dilute its Silver Oak brand which was known for its Cabernet.  If you are interested, the article can be found here:  http://mcclimanlawfirm.com/pdf/June.2004-ICC Article.pdf

Now, it appears as if Vera Wang is doing the exact opposite in an effort to strengthen her brand.  Apparently, Ms. Wang is looking to rebrand her ready-to-wear line (currently, "Lavender") to "Vera Wang" which is her bridal gown brand.  She is also trying to broaden her brand's reach to include men's fashion and teen clothing.

Clearly, Ms. Wang and her team have figured out that the middle-level brands are what will allow her company to grow in this tough economy.  Although, it is no secret that she is using the strength of her Vera Wang brand for her bridal gown line to bolster these other lines.

Of course, this strategy does not come without risks.  As with Silver Oak, she risks diluting her brand and/or confusing customers about the source or quality of her products bearing her well-known brand.  In fact, Ms. Wang shut down her Lavender collection during the economic downturn.  Interestingly, Ms. Wang's lower end lines (sold in Kohl's) are doing well.  This may be an indication of how the economy has affected consumers as much as Ms. Wang's lines.

Only time will tell if Ms. Wang's strategy for her brand will work or not.

Facebook Follies at Work

In the age of increased social media where many more are embracing and putting their lives and thoughts on Facebook, Twitter, and other social media avenues, employees beware.  Everyone at some point complains about their job, their bosses, or their co-workers.  Just keep in mind when those complaints appear in the social media realm, it is not "private."  Here are some ways not to cause a career implosion on social media.

First, do not insult your clients or your customers.  More importantly, do not use profane language to describe the clients or customers.  There have been many who have lost their jobs because of complaints put in cyberspace via Twitter or Facebook.

Second, do not insult your employer even if you are about  to give notice or leave.  Burning bridges is never a good idea, but to do so in a more permanent forum is even worse. 

Third, be cognizant of the photos you post.  Posting all the photos of you at parties with drink in hand and a face that says "drunk off my booty," is probably not the best idea.  And, definitely learn from Anthony Weiner's mistakes and don't post risque photos or other inappropriate photos of yourself.

Fourth, if it is your company's, your client's, or anyone else's confidential information, then please do not post it in a public forum.

Fifth, posting offensive comments about your employer or others will not reflect well on your character.

While certain types of comments are acceptable, discretion is always the better part of valor.  When you post, keep in mind that Big Brother, Big Sister, and Employer may be watching and post accordingly.