Thursday, December 26, 2013

Angry Birds Knockout Angry Clubs

If you are not familiar with the Angry Birds logo and game by now, then you have been living under a rock for the last few years.  Indeed, Rovio's Angry Birds trademark and logo is well-recognized (I admit to having spent countless hours playing Angry Birds).  One of the many trademarks owned by Rovio is this little angry guy:
Mark Image

Note the eyebrows, the scowl (if birds could scowl, that would be what it looks like), and the angry eyes.  Now, consider this trademark from a company who makes golf clubs that apparently doubles as a swing trainer and equipment saver:

Angry Clubs  

Again, note the angry eyebrows and eyes, the red color of the "A," and the scowl.  Look familiar? It should.  Indeed, in the video promoting the Angry Club, the owner discusses killing "two birds with one stone."  Huh, maybe he is trying to evoke a certain angry Ave?   The idea is that the Angry Club works as a swing trainer to allow you to warm up before hitting the golf course.  Then, once on the golf course when you hit a bad shot, instead of damaging your equipment (e.g. breaking your club over your knee or throwing your bag into the water), you just slam the Angry club on the ground and it angrily berates your play. 

Needless to say, Rovio did not take too kindly to Indiegogo (the Angry Club company) using a trademark that evoked their beloved (and valuable) trademark.  Yes, you guessed it, they sued.  After all, Rovio could not have these duffers turned inventors diluting the value of their Angry Bird marks.  Ultimately, the lawsuit resolved by settlement wherein Indiegogo agreed not to use the name "Angry Clubs" or the "A" logo. 

This case illustrates the importance of being careful about how you go about choosing your trademark.  Now, after spending time and effort promoting the "Angry Club" name and using the "A" logo, Indiegogo is back to square one with regard to marketing its brand--it must now come up with another one which will not infringe upon or dilute another's intellectual property. 

My guess is that the inventor did not consult with a trademark attorney before deciding on the name and the logo for his golf swing trainer.  Had he done so, he probably would have avoided the lawsuit altogether.  Yes, attorneys are not necessarily cheap, but hiring an attorney at the front end usually saves you money by not having to hire one once litigation or a dispute arises. 

Tuesday, November 26, 2013

Another One for the No Good Deed Shall Go Unpunished File

For those who live in Southern California, you may recall reading about a bear who had an affinity for Costco meatballs (I mean, who wouldn't).  He loved them so much in fact that he would often return to Glendale after relocation to the Angeles National Forest in search of these frozen delicacies.  Hence, the residents of Glendale dubbed him "Meatball."  

Unfortunately, Meatball's repeated incursions to Glendale to forage for his food of choice (or maybe it was just his "comfort food?") landed him in line to be euthanized.  Well, one resident, Sarah Aujero, found that solution to be unbecoming and began a Twitter campaign to raise funds to find Meatball a more permanent home in this world.  The campaign Twitter moniker she chose was @TheGlendale Bear.  The effort became so successful, it included branded shirts, tote bags, and stickers which Ms. Aujero sold to pay for a new enclosure at Lions, Tigers & Bears sanctuary for Meatball.  She even obtained a trademark for the products bearing the Meatball name.  Ms. Aujero says that she would often use her own funds to bridge the gap between expenditures and donations and that she does not make money off of Meatball.  Meatball has been at the sanctuary for over a year.

Now, comes the legal part.  The sanctuary wants Ms. Aujero to hand full control of the Twitter account and assign all rights to the copyright to the sanctuary.  As you may expect, the sanctuary "lawyered up," and these lawyers took a fairly aggressive stance with Ms. Aujero.  So much so that when Ms. Aujero refused to sign over the rights to these items--although, she did tell the sanctuary it was free to use the name for fundraising efforts--the lawyers informed her that she would no longer be allowed on the sanctuary's property.  A somewhat childish response given that Ms. Aujero started the campaign to raise funds which went to the sanctuary. 

Ah, wait, it gets better.  Apparently, a publisher asked Ms. Aujero to right a children's book about Meatball.  She agreed and said that she would donate a portion of the proceeds to the sanctuary.  The sanctuary objects because they believe that Ms. Aujero is exploiting Meatball and they believe it is their job to protect the animals from exploitation.  What is clearly left unsaid by the sanctuary is that they would prefer to be the ones doing the exploitation.

By now, you are probably thinking why these two are fighting when they appear to be on the same side? My thoughts exactly, there has to be some way to resolve this without devolving into a long drawn out dispute.  In my practice, I am often asked for my legal advice on a matter to which I respond with discussing what my clients wish to achieve from a business perspective.  Maybe the sanctuary and their attorneys should have a similar conversation to figure out how best to raise funds for the sanctuary and Meatball instead of having to raise funds to pay attorneys' fees fighting this particular fight. 

Monday, November 4, 2013

Blurring the Lines Between Robin Thicke and Marvin Gaye: Marvin Gaye's family Sues Robin Thicke

Robin Thicke filed a declaratory judgment action against Marvin Gaye's family in order to have the court declare that his song, "Blurred Lines" did not infringe Marvin Gaye's copyright in the song "Got to Give It Up."  Notably, at the time of filing the lawsuit, the Gaye's were not asserting that "Blurred Lines" infringed their copyright.  One of the requirements of a declaratory judgment action is that there is an actual conflict between the parties over their rights/remedies.  This is certainly a case of some really awful legal advice on the part of those advising Robin Thicke.  Usually, a lawsuit would be a last resort option, not the first.  Also, if Mr. Thicke thought that his song would infringe, he may have been better served trying to work out a deal with the Gaye family to settle without resort to litigation.  Alas, he fired first.  

In response, and not unsurprisingly, the Gaye family sued Robin Thicke for stealing two of Marvin Gaye's songs.  The lawsuit includes an allegation that Robin Thicke has a "Marvin Gaye fixation," meaning that there may be other songs of Mr. Thicke's which "borrow" ("steal") Marvin Gaye's copyrighted material. 

Some music critics noted that "Blurred Lines" was influenced or reminiscent of "Got to Give It Up."  This may be what caused Thicke to file the declaratory judgment action.  There is a question as to whether a song is "influenced" or "reminiscent" of another's copyrighted material is sufficient to show infringement.  That will be what the court will determine in the not so near future.  

Tuesday, October 29, 2013

Harry Potter v. Whimsic Alley

Whimsic Alley, a store in Santa Monica (on the Miracle Mile), caters to the Harry Potter fans who want to purchase items which are reminiscent of (but not necessarily licensed from Warner Bros.) those in the movies.  Not surprisingly, it caught Warner Bros. attention and the two are engaged in litigation over the Harry Potter trademarks.  Apparently, this is the second time that Whimsic Alley has found itself on Warner Bros.' radar.  The first time concluded in a settlement agreement wherein Whimsic Alley agreed to stop using Harry Potter trademarks or other "confusingly similar" products.

Well, in looking at the website for Whimsic Alley, it appears as if Whimsic Alley is displaying items that are the same or similar products.  Now, that does not mean that Whimsic Alley did not license those products from Warner Bros., so those products may have been part of the first settlement and/or a license agreement.

What caught Warner Bros.' attention this time was Whimsic Alley's advertising a "wizard cruise."  Sounds fun, doesn't it? Well, Warner Bros. did not think so--especially since it has opened and has plans to open a Wizarding World of Harry Potter at Universal Studios around the world.

The case is set to go to trial in January, so stay tuned for a conclusion.  Nevertheless, this is another example of being careful where you tread in terms of another company's trademarks and products.  In particular, it is another example of being careful not to catch the attention of those companies who aggressively protect their trademarks. 

Tuesday, October 22, 2013

Sometimes Discretion is the Better Part of Valor When Confronted by a Trademark Bully

Believe it or not, if you want to try to turn water into wine, you may need to hire an attorney and not that "other guy." Recently, a new expensive bottled water ("Beverly Hills 90H20") caused a stir when it marketed its water as the "Champagne of waters."  And, at $ 5 a bottle or more in specialty retailers, gourmet markets, and restaurants, it seems as if such a claim was appropriate.  Needless to say, Champagne producers did not appreciate the reference.  The organization that represents growers and marketers of Champagne sent the Beverly Hills company a cease and desist letter asking it to drop references to Champagne in its marketing.  

According to the Beverly Hills water company ("Beverly Hills Drink, Co."), it enlisted the help of artisans to create a water that resembled wine in "bringing the notes out" of meals.  The water's recipe includes spring water and various minerals that occur naturally in water.  

The advocates for sparkling wine from the Champagne region are notoriously aggressive in protecting the Champagne name (word) and trademark--most notably, they denied those who make sparkling wine in other regions from using the "Champagne" nomenclature.  They have also fought to deny fashion houses, cigarette makers, soda makers, etc. from using the word on their products. If you follow this blog or understand trademark law even a little bit, you will understand that these others most likely would have a right to use the word "Champagne" on their products.  

These types of trademark bullies often are able to obliterate particular words from the marketing dictionary because they have the money and the stable of attorneys to bury any small business--they also have the attorneys and resources to cost the bigger business quite a bit.  This is a sad state of affairs, but sometimes it is about who has the resources and not who is legally correct.  Not surprisingly, Beverly Hills Drink, Co. decided that their resources were better spent on marketing and their product and not fighting the Champagne nazis . . . err, advocates.   
The lesson is that it is a good idea to try and figure out who these uber-aggressive trademark enforcers are before you spend the time and money on an ad campaign or trademark (I counseled a small company against fighting "Iron Man" even though that company was using the name descriptively and not in a trademark sense.  "Iron Man" was another brand which fought everyone and anyone using these words in any context).  While, as a youth, I subscribed to the theory that you should stand up to a bully, in the instance of standing up to these trademark bullies it is usually much easier and less costly to get off of their playground (radar). 

Tuesday, October 1, 2013

Apple is Now the Most Valuable Brand

A new report by Interbrand recently ranked Apple as the most valuable brand with Google a close second.  These two tech giants knocked Coca Cola from its 13-year perch at the top.  According to Interbrand, it ranks brands by looking at brand loyalty and financial performance.  It also only ranks a company's brand if it has a presence in at least three major continents--so, don't expect to see that wonderful mom and pop shop down the street that you and everyone else adores in Interbrand's rankings. 

According to the report, Interbrand believes that the Apple brand is worth $ 98.3 billion, Google's is worth $ 93.2 billion, and Coca Cola's is worth $ 79.2 billion.  Is it at all surprising that both Apple and Google leapfrogged one of the most enduring brands in existence for over a century?  Probably not.

What I found interesting about the report is that it talked about Apple's "ethos."  This is something that every company should think about.  I recently taught a business law class at a local community college and one of the lectures discussed just that--a company's ethos.  It is not just about putting out great products or providing great services anymore.  Yes, that is still important, but now a company must think about how it projects its guiding beliefs or how it will distinguish its character from a competitor.

Doing so will allow that company to grow its brand. 

Tuesday, September 24, 2013

Another Reason Not to Trust Yelp

Yelp is suing a San Diego Law Firm for trying to rig its reviews.  Yes, you read that correctly, Yelp is suing a law firm for using staff and other friends of the firm to submit glowing review of the law firm.  How is that different than any other company who "works" the Yelp system? It is not.  However, according to the principal of the law firm,Yelp's lawsuit is really retaliation for the law firm having the audacity to sue Yelp in small claims court. 

The law firm obtained a $ 2,700 judgment against Yelp.  The basis for the breach of contract lawsuit was that Yelp apparently promised the law firm 1,200 impressions per month if the firm paid Yelp $540 per month.  According to the lawsuit, Yelp did not deliver the 1,200 impressions.  Although, the representative for Yelp claimed that the law firm did not understand how it measured such impressions and that Yelp actually "over delivered" on the ad impressions as promised.  A likely story, indeed.

Of course, Yelp is not only suing the law firm, it is also "filtering" all of the law firm's reviews.  According to several people posting on various blogs about Yelp, this is not an uncommon tactic for Yelp (i.e. to filter reviews when the company does not advertise with Yelp).  The small claims judge accurately, in my opinion, described Yelp's contract as "the modern-day version of the mafia."  I could not agree more. 

Tuesday, September 17, 2013

Judge Judy's Son Sues Local Sheriff for Defamation

Judge Judy's son, Adam Levy, is suing a local sheriff for defamation.  Mr. Levy is a District Attorney for Putnam County. Apparently, the sheriff said that Mr. Levy interfered in a child rape case.  According to the lawsuit, Mr. Levy is seeking $ 5 million to right this alleged wrong. 

The defamatory statement occurred in the context of a rape case against Mr.Levy's former personal trainer and friend, Alexander Hossu.  Mr. Hossu was accused of raping a 13-year-old girl.  Given the personal relationship between Mr. Levy and Mr. Hossu, Mr. Levy recused himself from the case.  However, in a news release, the sheriff said that Mr. Levy made comments and acted in such a way as to make clear that, if he had his way, Mr. Levy would not prosecute Mr. Hossu.  

In California, the elements of a defamation claim are (1) a publication that is (2) false, (3) defamatory, (4) unprivileged, and (5) has a natural tendency to injure or causes special damage.  California Civil Code section 45 defines "Defamation per se" or Defamation on its face as: "Libel is a false and unprivileged publication by writing, printing, picture, effigy, or other fixed representation to the eye, which exposes any person to hatred, contempt, ridicule, or obloquy, or which causes him to be shunned or avoided, or which has a tendency to injure him in his occupation.”  Thus, in this case, the statements intimating that Mr. Levy was not doing his job appropriately or was trying to help his friend out by not prosecuting the matter may fall under this type of libel. 

As with almost all defamation claims, though, the problem comes in trying to balance one's First Amendment right to free speech against another's protection against defamation.  Pure opinions or statements that are true fall under the protection of the First Amendment.  Indeed, even false statements (even if unjustified or made in bad faith) which are statements of opinion rather than false statements of fact are not defamation.  

So, where is the line? Sometimes the line is very blurry. As in the case of Mr. Levy, was the local sheriff merely providing an opinion or were his statements those of fact?  Time will tell as the case rolls on, but in this day and age of instant communication, be very careful about what you say about others--it may just buy you a defamation claim. 

Wednesday, September 11, 2013

Prenda Law Firm Update

Updating a prior post about those erstwhile attorneys the Prenda Law Firm:  apparently, a recent Comcast document shows that John Steele uploaded the porn files to BitTorrent upon which it sought to extract payment from unsuspecting downloaders.  In other words, Prenda would upload the very files it sought to assert copyright protection for in order to share them with its targets.  The porn was the bait, BitTorrent was the hook, and Prenda was the fisherman.  If this sounds fishy to you, then it should.  By uploading the copyrighted material in order to "share" it, Prenda would essentially be impliedly licensing the material to those it threatened to sue for infringement. 

Monday, September 9, 2013

Update on Service By Facebook

A while ago, I wrote about Flo Rida being served a lawsuit by way of his Facebook Page.  Well, it appears as if Australia has reversed course and found that service by Facebook is not appropriate.  This matter all started when Flo Rida agreed to appear at a music festival, but then failed to show up or return the fee he received to perform at the music festival.  As stated in my earlier post, an Australian court found service of a lawsuit by Facebook upon Flo Rida appropriate.  However, recently an Australian appellate court found that service by way of Facebook was not proper, and therefore, the Australian courts did not have jurisdiction over Flo Rida.

In the United States, plaintiffs must serve most Summons and Complaints (lawsuit initiating documents) personally (i.e. have the defendant served in person).  There are some limited exceptions, but the idea is to ensure that the defendant is properly given notice of the lawsuit and to avoid "junk" service in an effort to obtain a default judgment. 

In ruling that service was not proper in this case, the Australian appellate court noted that a person's Facebook account is not reliable (i.e. calculated to provide the defendant actual notice).  For example, there is no way to guarantee that the person served via Facebook is the actual defendant (maybe it is a fan page or someone with the same name). 

In the United States, a New York Federal Court allowed service via Facebook just this last March.  Apparently, that judge was sufficiently convinced that the Facebook account belonged to the defendant in that case. 

The moral of the story?  Beware when checking your Facebook account, you may find more than your friend's status updates . . . you may find yourself haled into court. 

Tuesday, July 30, 2013

Covering Songs Has Become a YouTube Sensation

As with fan fiction, sometimes a song can inspire others to cover or remix it.  That is what has happened to the song "Blurred Lines" by Robin Thicke.  I am sure you have heard one version or another recently--I was subjected to repeat performances  on a recent trip.  Or, maybe you have heard one of the many homages to Daft Punk's "Get Lucky."  Similar to fan fiction, the evolution from albums to compact discs to downloadable music to YouTube has spawned a plethora of music lovers who cover their favorite songs and create videos.  I am sure you remember this one covering Carly Rae Jepsen's "Call Me Maybe" which made the rounds on Facebook. 

Again, as with fan fiction, this creates a conundrum for the copyright owners of the songs.  Do the owners shut down these cover videos, or do they encourage them?  In some cases, the covers can reach audiences that the original song may not have reached. For example, Vampire Weekend's cover of "Blurred Lines" introduced R&B singer, Robin Thicke, to the indie-rock crowd.  For Mr. Thicke, he may want to encourage such covers in order to facilitate his ability to "crossover," and therefore, broaden his fan base (and hopefully, leading to more sold songs).  Others may want to hold dear their copyright rights and shut down every one of these cover videos unless there is some compensation paid to the artist.  Each artist will have a different take on how they want to handle the situation.

Universal Music Publishing Group ("UMPG") has decided to help fuel this wave of covers by giving these web video musicians access to their catalog.  In exchange, UMPG shares any ad revenue generated by the video with the web artist.  Record labels may try to recruit these online stars to cover one of their artist's songs in order to expand the song's life cycle.  

It appears that instead of fighting the technology evolution, the record labels and publishers have decided to use the evolution to their advantage.  Something they did not do when Napster came about which I believe was a mistake (both at the time and now) because now they are still trying to catch up.  

Tuesday, July 23, 2013

Startup Company Names Make the First Brand Impression to Your Customers

Startups have begun to adopt quirkier and quirkier names in an effort to begin to build their brand right away.  What you may not know is that Yahoo and Google led the way.  Yahoo stands for "Yet Another Hierarchical Officious Oracle" and Google is a mis-spelling of googol the number with 100 zeroes after a one.  Then came Flickr and Tumblr.  Now the names are getting even wackier.  There's Mibblio, Kaggle, Shodogg, Zaarly, Spotify and a whole bevy of others. 

One reason for these types of names is that it helps branding and marketing.  There are several categories of marks with each category giving the trademark owner stronger or weaker protection.  Those categories from strongest to weakest are:  “arbitrary/fanciful,” “suggestive,” “descriptive,” or “generic.”  A coined phrase or made up word would be arbitrary/fanciful and provide the broadest protection because there are no other similar words like it.  A suggestive mark is one that suggests rather than describes a characteristic of the goods/services it represents.  For example, the trademark “Apple” for use with computer-related products would be suggestive.  A descriptive mark is one that merely describes the nature, quality, or character of the goods.  For example the mark “Red Fruit” when applied to an Apple Farm’s product would be descriptive. Generally, in order to obtain trademark protection for this type of trademark, the owner will need to prove that its mark has “acquired distinctiveness/secondary meaning.”  This means that the owner will have to show that consumers actually associate the descriptive mark with the owner’s goods/services and not view it as a description of the product. Finally, a generic term is the common name of a product.  It cannot serve as a trademark at all.  Some famous trademarks that have become the generic term for the product include “Thermos,” “Linoleum,” and “Escalator.” Thus, this trend by startups to create words puts these trademarks at the higher end of the trademark spectrum.  They also help avoid issues with trademark infringement with other companies. The more made up the name, the stronger the trademark.  As with any name or trademark, the object of the exercise is to be sure create a name or a trademark that conveys some meaning to the consumer. In addition, a good trademark should be memorable for the consumer.

Another reason is that these companies need a web address that is easy to remember and recognize. As you may imagine, most of the good or short ones are already registered.  It also helps to have shorter names to make it easier for potential customers to remember.  Commonly, the company will choose a mis-spelling of a word, mash two or more words together, or find some other way to come up with a name that is unique and still conveys a message to the consumer about that company's products or services.

Some companies will use an algorithm to create one word from two or more words. However, it is important to understand how the new name looks or sounds because in some cases the look, sound, orconnotation when actually read or spoken may be unfavorable. 

Overall, this can be a very good trend for strengthening a startup’s trademark.  I cannot tell you how many times my clients have clung to trademarks that were descriptive, rather than suggestive or arbitrary/fanciful which meant that those clients had to work harder to get consumers or potential consumers to associate their trademark with their goods/services.  One downside to this trend, though, is the promulgation of similar types of names.  For example, how many items came out with names that start with “i” after Apple came out with its “iPod” products? 

It is always important to pay attention to your brand and try to “get it right” the first time.  A company does not necessarily want to change its branding image mid-stream (a la go from Research In Motion or RIM to Blackberry).