Coming Attractions

I was recently in Havana, Cuba. A friend pointed out this poster for an upcoming gig by the Baquestri-Bois. I started thinking about all of the trademark implications until I remembered, oh yeah...you're in Cuba.

Jimmy Buffet, Marijuanaville and the Likelihood of Confusion

            I don't know Rachel Bevis, but I feel nothing but empathy for her.  Back in March, she lost an opposition proceeding before the United States Trademark Appeal Board which will presumably keep her from being able to use the trademark "Marijuanaville" for merchandise such as t-shirts and for drive through retail services.  It was a catchy name and a good idea for a possible trademark and, as one might expect, Ms. Bevis was stopped by Jimmy Buffett, whose company Margaritaville Enterprises, LLC. has owned the trademark "Margaritaville" for "clothing, namely shirts, sweaters, sun visors, and caps” as well as “nightclub services, retail clothing, gift and souvenir store services and mail order services" since 1991.

            One can argue the wisdom of a pro se trademark applicant going against Jimmy Buffett and his very talented lawyers. However, even when a trademark applicant does not have to  deal with  a famous and well protected registrant on the other side, the applicant has to deal with the decisions of the trademark examiner which can often seem arbitrary .  This seems to happen when one has to confront  a claim of "likelihood of confusion" and the case In Re: E.I. . du Pont de Nemours & Co. , 476 F2d 1537 which the trademark office often relies upon  in deciding whether one potential mark is likely to be confused with another registered mark.

 The court in this case outlined 13 specific factors to consider with a likelihood of confusion claim:

1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
2. The similarity or dissimilarity of and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
3. The similarity or dissimilarity of established, likely-to-continue trade channels.
4. The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.
5. The fame of the prior mark (sales, advertising, length of use).
6. The number and nature of similar marks in use on similar goods.
7. The nature and extent of any actual confusion.
8. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
9. The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).
10. The market interface between applicant and the owner of a prior mark:

(a) a mere "consent" to register or use.
(b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party.
(c) assignment of mark, application, registration and good will of the related business.
(d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.

11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
12. The extent of potential confusion, i.e., whether de minimis or substantial.
13. Any other established fact probative of the effect of use.

            A review and analysis of these factors can be overwhelming and in complex cases, can involve a substantial amount of data. Most lawyers who handle trademark registrations for clients have come up against this case and its list of factors.  One cannot always predict whether a trademark examiner may decide that two marks may be so alike as to cause confusion, or more frustratingly,  to decide that even though the marks may be different and the goods or services at issue may be different, their existence in the same "channels of trade" may cause confusion.  I had this happen once with a rock band whose name was similar to a video game and once with a record company whose name was similar to that of a band.

            In my experience, it can be very difficult to overcome the factors in the du Pont case and again the frustrating part of this is that even with the due diligence of a comprehensive trademark search (which is not cheap) these objections cannot always be predicted in advance.

            I should point out that in some instances it is possible to get the registered trademark owner to agree to a "co-existence agreement" manifesting no objection to the similar marks.  The trademark office will usually recognize but the stars really have to align in a case like that.

The best advice prior to applying for registration is to do a comprehensive search and then tread carefully.

Firefly and Fan Art

Have you ever seen Firefly?  Yeah, me neither.  In fact, the only way I know about the TV show was through my wife and her super smart friends.  Nevertheless, I was fascinated to read about a legal skirmish that had broken out over a particular orange and yellow ski cap that one of the show's characters wore.

            Apparently, fans of the short-lived show began knitting copies of this cap and selling them on such websites as Etsy and Café Press leading Fox Television to send cease and desist letters to the sellers because sales of the homemade caps were interfering with their own licensed version of the cap. 

            An article in last month's American Bar Journal  by Anna Stolley Persky explored the whole complex  area of fan art – where the desires of obsessive fans to replicate artwork from their favorite movies, books  or television shows runs into copyright infringement claims from the creators of those works.  All of this is a little vague.  For example, can a yellow and orange cap actually be capable of copyright protection?  Even so, is the fan's creation a derivative work or a protected fair use?

            This reminds me of stories I heard when I was younger of the Walt Disney Company going after mom and pop bakeries who innocently put Mickey Mouse on a birthday cake or ASCAP going after the Girl Scouts for singing songs around the campfire without a license. It is an interesting dilemma for all parties.   One thing a copyright owner must consider is that by trying to stop the fans from creating fan art they risk alienating their fan base.  Also, this is a question of degree – I still can't fathom why Fox would have a problem with a guy selling a Firefly inspired cap but I can of course understand by DC Comics would sue to stop the sale of unauthorized Batman costumes. 

            The article ends with two very good pieces of advice for those who want to create and market fan art.  Quoting Attorney Ruth Carter, the author states:

First, don't base your entire business on using somebody else's copyrighted work without permission; and

Second look at the history of the copyright holder: Does he or she have a record of going after people who make fan art?

            This is sound advice (especially the first part!)  because at the end of the day if a copyright holder (or trademark owner) has the will and the resources to stop the distribution of fan art, all of the fair use arguments in the world will be of little practical value.  I remember that years ago I represented a gentleman who was marketing a piece of memorabilia associated with    a recently deceased celebrity.  He had received a very serious cease and desist notice. Because of the facts of the case my client had some strong arguments on his side. When I made these arguments to the estate’s  lawyer, he politely listened and then invited me to review the list of recent litigation targets they had gone after.  It was impressive and needless to say my client ceased and desisted. 

            With the proliferation of media outlets and the endless growth of the internet, the rise of fan art culture will continue to grow and thrive, from caps to fan fiction and beyond.  I think this is an area to keep an eye on.

Bad Vibrations

I had the good fortune to see Brian Wilson perform live this summer with both Al Jardine and Blondie Chaplin.  The show reinforced the brilliance in all eras of the Beach Boys' career.  However, you can't ignore the fact that there are essentially two factions of this band touring at the moment, the Brian Wilson Gang and the Mike Love-Bruce Johnston Gang.  Between this odd occurrence and seeing the intense Brian Wilson biopic, Love and Mercy, I began to think that one could write an entire scholarly book on the various legal and business disputes that the Beach Boys have been involved in over the past half century. 

            I don't think I will ever have the time to go down that rabbit hole but I did come across an interesting case while doing some research for a client involving the aforementioned Al Jardine. 

            A decade ago the internet was abuzz with the news that Mike Love had supposedly sued Al Jardine to keep him from using the name "The Beach Boys" to promote a solo tour.  The case, Brother Records, Inc. v. Al Jardine, turns out to be a bit more complicated than that.  Each founding member of The Beach Boys (or, in the case of Dennis and Carl, their estates) is a shareholder in Brother Records, Inc.  Recognizing that The Beach Boys' trademark was a valuable asset but also that some of the surviving members did not want to tour (or tour together), the corporation decided in 1998 that each member could have a non-exclusive license to tour using the "Beach Boys" name if certain terms and conditions were met – Mike Love took a band on the road under those terms. 

            Apparently, Al Jardine decided that if he used a variation of the name, "Beach Boys Family and Friends" he could tour either without a license or upon a different royalty arrangement with the corporation. 

            Jardine's group played several cities where Love's group also performed and there was actual confusion in the marketplace. After some negotiation, Brother Records, Inc. sued Jardine for trademark infringement to stop using the “Beach Boys” trademark.   It is important to note that during this time Jardine was (and presumably still is) a shareholder in Brother Records, Inc. 

            Jardine's defense as one would expect it to be, was fair use (both traditional fair use and the variation – nomative fair use).  As any law student can tell you "fair use" was not a truly viable defense in this case because the trademark was not being used in its descriptive sense; what the court so eloquently described as "boys who frequent a stretch of sand beside the sea" but rather "in its secondary trademark sense which denotes the music band – and its members that popularized California surfing culture."

            Thus, Jardine tried to use the more complex "nominative fair use" defense. As the court states," the nominative fair use defense acknowledges that it is often virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference or any other such purpose without using the (underlying) mark".  As the case law suggests, Jardine would not necessarily have a problem referring to the historical fact of his membership in The Beach Boys but the court found that his use of the mark in this particular manner "capitalizes on consumer confusion" and suggests some kind of "sponsorship or endorsement" by the trademark holder. 

            I think the Court was right.

            As easy as it can be to often cast Mike Love in the role of the bad guy in Beach Boys' mythology, it seems that in this case the corporation (whether controlled by Love or not) took a very important step in protecting its trademark rights to avoid dilution of the mark.  As such, this case adds to the growing body of law that practitioners often have to turn to in order to deal with band members and their trademark issues.  Despite all this, one must also remember that Al Jardine performed with Mike Love, Brian Wilson, Bruce Johnston etc.on The Beach Boys' 50^th Anniversary Tour a couple of years ago.   The California saga continues. 

Advice for (Truly) Independent Artists

survival guide for indie rockers.  Catchy idea.  I did a lot of preparatory work on the subject but for some reason could not pull it off.  After a lot of thought, I have decided to analyze why the concept was flawed.

            The reality was that I was trying to promote myself as an attorney to artists in an environment where the traditional record deal and publishing deal was rapidly changing. In essence, I was saying to artists, “even though you’re doing everything on your own, you still need a lawyer.”

            It’s a problem of classification. It’s hard to know how to define an independent artist these days. From what I see, artists who are signed to what we once called “independent labels” have the same problems as any artists who signs a record deal – except that the money is smaller these days and the terms more potentially more draconian.  .  What drove the point home to me was a recent article about the band Grizzly Bear in New York magazine.  This piece showed in dry economic terms what the business of being a moderately successful artist in 2012 is like. It’s really worth searching out.  So, of course, artists like this need lawyers; the game is the same.

           

            So what about artists who are not tied to one particular company or who are truly releasing everything on their own?  What do artists like these need from a legal standpoint.  I have come up with several ideas:

            1.         If you are in a band you need a band partnership agreement.  I have said it before and young bands hate to deal with these things – but they are extremely important in avoiding problems and potential lawsuits down the road.

            2.         You need to register with BMI, ASCAP or SECAC.

            3.         If you are touring it is a good idea to incorporate (and investigate umbrella insurance).

            4.         If you’re a band, trademark your name.

            5.         Don’t sign anything without having a lawyer review it.  These days I have seen that even the simplest agreements are taking on crazy unnecessary dimensions.  Spend a little money to educate and protect yourself.

            6.         Register with Sound Exchange

            7.         If you are working with outside producers and musicians, make sure you get an agreement or at least a release from each of them.

            8.         Listen to the Rolling Stones (I threw that in but it’s still a good idea).