IF WARNER BROTHERS HAD HALF A BRAIN THEY WOULD NOT TRY TO STOP IF I ONLY HAD A BRAIN

I love the website techdirt www.techdirt.com. Mike Masnick, who runs the site, is a thoughtful commentator on the ways that technology shapes our lives. Yesterday, Mike conveyed a report from THE HOLLYWOOD REPORTER on the potentially epic battle underway between Walt Disney Studios and Warner Brother Studios over the movie The Wizard of Oz. Disney, not WB plans to make a new version of the famous classic.

What caught my eye was the aggressive trademark strategy that WB has adopted.  The article states that WB has filed many oppositions in the United States Trademark Office during the past year. Many of these oppositions involved characters from the movie The Wizard of Oz.

 All well and good you might say. Unless your name is Jeffrey Fannin. And you have developed a series of non-fiction books and workshops in the field of neuroscience.  And you named the series IF I ONLY HAD A BRAIN. And you decided to federally register IF I ONLY HAD A BRAIN for your books and workshops.

Then you would find that WB (through its subsidiary) has opposed your efforts. Based on their federal registration? Nope. They ain’t got one. Ok so they claim common law rights in the phrase IF I ONLY HAD A BRAIN. Based on what goods or services? Glad you asked: WB claims that its licensees have been using the phrase on “ a wide variety of goods including printed materials, clothing, mugs, and related products” Any specific examples included? Nope.

If you were mildly curious you could do a Google search for the term “ if I only had a brain”.

You would find any number of places to buy an IF I ONLY HAD A BRAIN 

T-shirt. Some of the sites may be authorized.  Many of the others almost certainly are not. On eBay you would find dinner plates, music boxes, decorative pillows, shot glasses, and a book titled IF I ONLY HAD A BRAIN- deconstructing brain surgery.

So where are we? WB, fighting to control all aspects of its famous movie, adopts a scorched earth trademark strategy. With not much in the way of ammo to back it up.  Consumers for movie memorabilia coffee cups and infant clothes likely to be confused by, or even be aware of, those seeking to improve their neurological capabilities?

You tell me.

MEMO TO THE NFL: LIKE IT OR NOT THE TERM SUPER BOWL IS SUPER POPULAR

This week is Super Bowl week here in Indianapolis. Fans, the media, and hordes of folks hoping to make a quick buck have invaded the city we  affectionately call  Naptown. But experiencing the Super Bowl as a live event  is only a small part of the Super Bowl. All around the United States merchants will be pounding the air waves and the Internet with special Super Bowl deals on everything from TVs to shag carpet.

So what, you say?  What's the big deal?

Well actually selling stuff using the term Super Bowl is a big deal. My colleague Ron Coleman, who writes the influential trademark blog  LIKELIHOOD OF CONFUSION, has taken a special interest in the NFL's efforts to control all use of the term SUPER BOWL. And indeed there have been several well publicized fiasco's involving the NFL and its "bullying" tactics involving the term Super Bowl.

One would assume that because of such over the top efforts  all use of the  term SUPER BOWL was tightly controlled  and traceable to  the NFL or its  licensees. That assumption would be false.

 A Google search for "super bowl 2012 tv deals" unearths hundreds of different chances to buy a new television. More generally, a Google search for "super bowl 2012 deals" returns thousands of opportunities to purchase stuff from thousands of merchants.

In the cloistered world of trademark law much ink is being spilled over what it means to be a trademark bully. Indeed, I am helping to spill some of that ink. Is the NFL a trademark bully when it tries to control use of the term SUPER BOWL? Many would say yes. But, based on my  brief and unscientific research, it appears that thousands of merchants are guilty of taunting the NFL by the way they are  using  the term SUPER BOWL without permission.

MEMO TO: TRADEMARK LAWYERS-WHEN YOU ACT AS A ME NOT WE LAWYER BAD THINGS HAPPEN

In a thoughtful and well reasoned decision, a magistrate judge in Oregon reminded trademark lawyers, and their clients, that careless legal practices can be very costly. The  magistrate judge also made it clear that displaying  arrogance and disdain for the court may not be be the smartest way to  advance one’s cause.

            The case W. Brand Bobosky and We Not Me Ltd. v. Adidas began in 2000. Mr. Bobosky, an attorney in Naperville, Illinois, created the phrase WE NOT ME. He began to use the phrase on promotional items. Four years later Mr.Bobosky  hired a law firm to prepare and file a federal trademark application for this phrase. The application was based on Mr. Bobosky’s “intent” to use  WE NOT ME  on a laundry list of men’s and women’s clothing items. This list was prepared by Mr. Bobosky’s  attorney, who also signed the application.

 When it was time to file  the necessary statement of use to secure the federal registration Mr. Bobosky, through his lawyer,  presented a hat as a specimen. Although Mr. Bobosky  could have deleted all the other goods  he did not. Instead he declared that he was using WE NOT ME on all the goods set forth on his laundry list. He later claimed that he did not understand his obligation to verify that the list was accurate. 

            Fast forward to 2007. Mr. Bobosky, through a new attorney, wrote to adidas complaining about their use of the phrase WE NOT ME. An in house  attorney for adidas challenged Mr. Bobosky’s  federal registration because he could not  find any evidence that Mr. Bobosky has been using WE NOT ME on clothing.

 And what was Mr. Bobosky’s reply? AFTER this challenge he cleaned up his registration and had his new attorney file  another  application to register WE NOT ME, with a more careful list of goods.  His  new attorney eventually filed a statement of use and they went after adidas again, claiming infringement of a federally registered trademark and unfair competition  under Section 43(a) of the Lanham Act. Adidas fought back hard, seeking to invalidate Mr. Bobosky’s registrations because he did not have the necessary bona fide intent and because he had not made any trademark use of WE NOT ME. 

            Based on Mr. Bobosky’s very weak testimony and other evidence of record, the magistrate judge invalidated his federally registered trademarks but allowed him to maintain his unfair competition claim.

            I hear you asking: OK Mr.Trademark Troll what makes this case  interesting? Two things.

            First, I would bet my usual ham sandwich that thousands of federal trademark applications  are handled exactly as this one was- with both the applicant and the attorney either ignorant of,  or indifferent to, the accuracy of the signed statements  that are part of the federal registration process. That’s an unsettling commentary on trademark attorney/client relations but not much more. Unless you build your trademark rights on such a flimsy foundation and then decide to get your lottery ticket punched by challenging a major consumer goods company.

Second, the magistrate judge went out of his way to chastise the adidas trademark counsel for displaying such a disdainful and disrespectful attitude. I can only imagine what it must be like to read comments such as:

adidas  provides no authority to support this position and I find it completely at odds with the leading cases that address this issue

when asked by the court….. adidias counsel responded somewhat disdainfully that he did not even understand the question

adidas continually rebuffed the court’s questions about the size and location of WE NOT ME… and whether those factors  suggested that the mark functioned as pure ornamentation or as a trademark. That, of course, is the critical inquiry

Would the unregistered trademark claim have survived summary judgement anyway? Probably. But this case is not the finest hour for the trademark bar. One can easily argue that it never should have been brought with  such a questionable prosecution history and such skimpy marketing efforts. And, by displaying such a poor attitude, a litigator may now put adidas in the position of writing a check to someone who doesn’t deserve it. Or continuing a battle with two opponents. One of whom is the judge.   

           

WHAT'S THIS SOCIAL MEDIA THING ALL ABOUT ANYWAY? THE PERILS OF PURSUING A BAD TRADEMARK LAWSUIT

Recently, I got a call for advice from an out of state colleague. His client had been sued by another company claiming trademark infringement.

Just a garden-variety trademark case? Not exactly.

Imagine (as a hypothetical) a California dentist named Jones suing a Maine dentist named Jones. The California dentist claimed that, by his actions, the Maine dentist was confusing the California dentist's patients. If you're  like me your first reaction would be Huh? Even in the Internet age there are some businesses that are undeniably local. For the facts at hand the relevant radius for customers is five to ten miles.

Oh sure there are the usual trademark litigation suspects: who was first to use? who has the federal registration? how similar are the respective trademarks?

Layered on top of this are issues of personal jurisdiction, subject matter jurisdiction, improper venue and improper service. But what makes this matter most intriguing is a tidbit that my buddy mentioned almost as an afterthought.

Turns out his guy, the defendant, got an email note from one of the plaintiff's customers. The customer was very upset with his "Jones". He made it clear that his Jones had no business messing with a "dentist" so far away. And besides that, nobody should be able to make a legal claim to "Jones the dentist".

But the most amazing part of the story? The customer copied the plaintiff on the email! So, standing in the shoes of the plaintiff, I've ____off a customer. I've got a case with major problems. And if I get a slam dunk victory it won't mean a thin dime for me.

I should add that both companies are new. And neither "dentist" appears to be made of money. I should also mention the all too familiar overreaching letter by the lawyer for the California Mr.Jones. Written as though either the COKE or MICROSOFT brands was being sullied.

I gave my buddy  some suggestions. With luck this matter will settle quickly with only modest amounts of money wasted. For the sake of both parties I sure hope so.

FOLLOW UP MEMO TO CHICK-fil-A: DO YOU WANT YOUR CROW XTRA KRISPY?

When we last wrote about the good folks at Chick-fil-A they had just stepped into a fresh EAT MORE KALE cowpie. And how has their sophisticated trademark enforcement program been treating them? Ever heard of the Streisand effect?

In a nutshell: act foolish and find yourself at the wrong end of a seemingly endless number of syndicated news stories. Your company is either the butt of jokes or described as a trademark bully.

An online petition telling you to stop bullying small business has over 17,000 signatures. Vermont's governor publicly throws the full weight of his office in support of the T-shirt manufacturer who has been making EAT MORE KALE shirts forever.

When the United States Patent & Trademark Office released its exhaustive( pun intended) report on trademark bullying they concluded that the problem, if there was a problem, could be addressed by an educational campaign.

As one watches this PR disaster unfold one cannot help but ask: Just who is it that needs to be educated? Wouldn't you just love to be a fly on the wall in the CEO's office at Chick-fil-A?

MEMO TO CHICK fil-A: WHEN PEOPLE THINK YOU ARE A BULLY YOU GET TO EAT MORE CROW.

Is this yet another example of the “what in the world were they thinking” hubris that often brings well-known brand owners to their knees? 

 Mr. Bo Muller-Moore, a T-shirt artist in Vermont, has been producing EAT MORE KALE T- shirts, bumper stickers, and paraphernalia for many years.

Somehow he showed up on the radar screen of the lawyers for Chick- fil-A, the well-known fast food restaurant chain. They contacted him several years ago and told him that since Chick- fil-A was using the phrase EAT MOR CHIKIN to identify fast food chicken products and as a domain name he should immediately stop using the phrase EAT MORE KALE for T shirts and bumper stickers.

Through his lawyer, Mr. Muller-Moore told Chick- fil-A to take a hike. Which they did.

Fast forward to August of this year. Mr. Muller-Moore had the audacity to file a federal trademark application to support his use of the phrase EAT MORE KALE, for the shirts and bumper stickers he has been producing all these years.  That prompted Chick fil-A to send him another warning letter. As reported in the Burlington Free Press, Chick- fil-A’s lawyer claims that EAT MORE KALE plays off, imitates and misappropriates Chck -fil-A’s “intellectual property” right in the phrase EAT MOR CHIKIN.

I find this use of the term intellectual property to be revealing.  Why? Because I believe it shows a mindset that propels the conduct of many contemporary brand owners.

Will Chick- fil-A be forced to back off or back down? I would bet my usual ham sandwich the answer is “You betcha”. The public anger and backlash is in full flower. The petition drive to get them to drop their objections is up and running. If the facts are as reported, it’s virtually impossible to see them proving that customers for their chicken sandwiches will be confused, mistaken, or deceived when they see the phrase EAT MORE KALE on T-shirts. Not only that, they made the mistake of complaining to Mr. Muller-Moore, then walking away when he pushed back several years ago.

Just another case of over the top corporate hubris? Just another classic case of trademark bullying? Yes to both.

But I believe there is an additional explanation. Whether by accident or design, brand owners like Chick- fil-A, seek to assert legal rights in words. Not words that identify goods or services. Words.

Chick- fil-A wants to own the phrase “ EAT MOR[E]____. Apparently they are willing to put up with the bad press to stake their claim. But the only way that they can own this phrase is to prove that EAT MOR is so widely recognized across the full spectrum of American commerce that they are entitled to claim it as their intellectual property.

Does Chick- fil-A have a rational basis to make this claim.

Not from my vantage point. They have fallen victim to the same internally generated view of the world that has their brands at the center of the universe. 

So now  Chick- fil-A must confront reality. They think that the phrase EAT MOR CHIKEN is famous. It ain’t. Not only that but EAT MORE KALE and EAT MOR CHIKEN are almost certainly going to be allowed to co-exist.

Time to EAT MOR CROW.

MEMO TO SIMON COWELL: YOU MAY BE A BULLY ON TV BUT YOU DON'T SEEM TO BE A TRADEMARK BULLY

Call me an elitist. Call me an idiot. But I have never seen the AMERICAN IDOL television show. However I do have a pulse. So I am aware of Simon Cowell's well earned reputation as a mean spirited, cynical, bordering on cruel, talent judge. Sure sounds like the personality profile of a trademark bully.

Ah trademark bully. Now there's a term that any geek would love. And sure enough she does. My colleague Lara Peterson rides herd on the brandGEEK law blog. Lara is the head of a fancy schmancy committee devoted to understanding, examining, and defining the term trademark bully(ing). You can find the committee members here:http://brandgeek.net/2011/10/10/brand-bully-basement/.

What does any of this have to do with Simon Cowell?  In the UK Mr. Cowell has been labelled a trademark bully. Unfairly IMHO. Here's the basic story: Mr. Simon's company owns or manages an all girl rock band. The company decided to name the band RYTHMIX.  So they filed an application to claim the name.  No problem right?

Big problem. Turns out a music based charity was already calling itself Rythmix. And these folks are not fools. After some (apparent) back and forth, Rythmix started a social media campaign against Mr. Cowell and his company. They were not shy about reminding him of how wonderful they were.

And it worked. Mr. Cowell's company announced their intention to withdraw their application.  End of problem right?

Wrong. The folks at Rythmix have gone public again. They are complaining that Mr. Cowell's company did NOT abandon their trademark application. Not only that, they want Mr. Cowell to pay for their legal fees. In their view these fees will take hundreds of hours of music instruction away from children. 

And Mr. Cowell's response? His lawyers did not withdraw their application because they wanted to transfer it to the good folks at Rythmix. NO THANKS say the folks at Rythmix. You want us to not say a peep if you transfer the trademark application to us.

And what does all this have to do with trademark bullying.  Nothing. And that's my point. This is the sort of  trademark dispute that  has been going on since God was new.  Ironically, the potential bully was the junior rights holder. And, after initial negotiations, when faced with a possible conflict, the junior rights holder left the playing field.  Were there  costs? Of course.  Might Mr. Cowell pay the charity's legal fees as an act of generosity? Perhaps.  But, based on the many news reports describing this incident, it seems that a a savvy non profit is slinging around the loaded term trademark bully to put pressure on  larger commercial enterprise headed by a well known celebrity.
Perhaps our committee will need to wrestle with a new concept: reverse trademark bullying.