The Anchor Plate

"Content Creators and Users" -- What's in a Word?

Pete Salsich — Tue, 11 May 2010 10:07:17 -0600

Since leaving BigLaw to start the BrickHouse Law Group, we have spent a lot of time trying to describe our ideal clients. Who are they? What do they have in common with each other?

We have years of experience representing large companies in intellectual property and complex commercial litigation, but we also have worked with entrepreneurs and smaller businesses in all aspects of IP counseling. As a small firm building its brand identity, we cannot be--and do not want to be--all things to all people.

Ultimately, we believe our clients are best described as "Content Creators and Users" -- meaning anyone who creates, distibutes, or otherwise uses "content" in their business. This certainly includes media, entertainment, advertising, marketing and interactive companies who create and/or use "content" protected by copyright or trademark--these clients bring their own special brand of creativity to the work they do, and they often employ or contract with creative people in the process. Of course this can also include any business that operates a website (Hello? Everyone?), because the "content" on those websites comes from people or businesses utilizing their creative skills.

But what is "Content"? I thought I knew what I meant by that term until I read a very thought-provoking post this morning, entitled "I Hate the Word 'Content'", by Jonathan Salem Baskin on his Dim Bulb blog. Speaking primarily to marketers and branding agencies (but also touching a much wider group of net denizens), Baskin makes a strong argument that in calling everything that goes inside the frame "content," we are collectively genericizing--and thereby reducing or even eliminating--the unique, qualitative nature and value of what is created and who is creating it. Read the entire post, because I don't want to over-simplify it, but I think his opening paragraph states the problem well:

Calling the output of writers, musicians, moviemakers and even the artisans of branding's dark arts "content" is like referencing the substance of every meal "food," or labeling the specific events of human experience "life."

Baskin's lament about how this genericization of "content" is adversely affecting the marketing and branding industry is equally applicable in the intellectual property context.

While it's true that short descriptive terms often aid us in understanding broader concepts--for example, it can be helpful to differentiate "content" (the product of creativity in some form) from "data" (a collection of factual information)--simply referring to all things creative as "content" can be very dangerous from an intellectual property rights perspective.

No matter how you look at it, not all "content" is the same. It is critically important to understand the qualitative differences in what content is being created, how it can be used, and how it can be protected. "Content" on a website, for example, may be made up of code, text and images protected by Copyright, logos or brand identities protected by Trademark, personal identities protected by Rights of Publicity or Rights of Privacy, or any combination of these. Various and interconnected components of the same "content," therefore, might have different owners, different usage rights and different legal risks. The same is true for almost any type of "content" in almost any medium. Geoff's Right of Publicity post on the Olivia Munn comic book fracas points out some of these nuances that are easily missed. One simply cannot make good business decisions about the creation and use of "content" without appreciating the different creators and rights involved.

I still think it is appropriate to describe our ideal clients as "Content Creators and Users." In the limited context in which we use the word, I think it fits. However, Baskin's post serves as a good reminder that "Content" is just a surface word -- the value is in what lies underneath.

"Never Stop Litigating"? North Face and South Butt Settle Trademark Suit

Pete Salsich — Tue, 13 Apr 2010 10:48:39 -0600

Not exactly "on the courthouse steps", but close enough -- on the Friday before a scheduled Monday Preliminary Injunction hearing, the North Face and the South Butt settled their often entertaining, sometimes confounding, and always media-driven trademark suit. Details of the settlement have not been disclosed (which is not surprising), but the Court has entered a permanent injunction against South Butt -- meaning that "Little Jimmy Winkleman" will have to start a new business to pay for college (unless of course the settlement takes care of his tuition bills.) Here is a .PDF copy of the Consent Injunction (courtesy of PACER).

So what to make of this settlement? The case has always been hard to pin down, because it has been played in the media as a parody case, but the issue has never really been whether someone can tell the difference between a face and a butt. Many have questioned the North Face's strategy of pursuing litigation--in essence, creating a vastly bigger market for South Butt goods simply from the publicity of the lawsuit. (I think there are at least two more lengthy blog posts here!) In the end, however, it appears that the North Face got what it wanted -- the end of South Butt. Hopefully it was worth the attorney's fees and the negative publicity (and whatever it's paying to Little Jimmy, if anything).

As of this writing, the South Butt's website is still up and appears to be still selling product -- apparently in violation of the Consent Injuntion. This may be a simple delay in follow-through, or it could be that the North Face is permitting South Butt to sell off its remaining inventory as part of the settlement.

There is one more possibility -- under the terms of the Consent Injunction, South Butt could still sell products under its South Butt marks with "the express written permission" of North Face -- under a license, for example. Such an arrangement would seem to be quite inconsistent with North Faces' strategy all along, not to mention the quality control issues involved with such a license, but in this case, perhaps it's safer to say "never stop watching."

North Face and South Butt Take the Gloves Off at Deposition

Pete Salsich — Fri, 26 Mar 2010 09:38:23 -0600

Litigators know that from time to time, tempers will flare at a deposition. In the normal case, it's just part of the overall process and the rest of the world never learns about it.

It's becoming increasingly clear, however, that North Face v. South Butt is NOT a normal case. Yesterday's American Lawyer ran a story first reported in St. Louis's Riverfront Times about some craziness at the deposition of Defendant Jimmy Winkleman's father just last Friday. Seems the senior Winkleman alleged that one of North Face's lawfirms, Bryan Cave, had a conflict of interest because it had represented him numerous times in the past. Bryan Cave denies any conflict, claiming it went through its normal conflicts clearance process.

I don't know if there is a conflict or not, but there is no doubt that this case seems to be getting tried on every issue but the one that actually matters -- whether there is likelihood of confusion between the two marks. That will be determined by admissible survey evidence -- not the informal "butt versus face" type of analysis that South Butt's website and attorney are driving in the press.

The preliminary injunction hearing is scheduled for April 12, so we'll know soon enough. Until then, we'll keep watching this case, which South Butt's attorney Albert Watkins recently described in particularly graphic language. One thing's for certain -- lots of attorney's fees are being generated. In some circles, that alone would justify Watkins' description!

Billable Hour Surprises: How Lawyers are like Auto Mechanics

Pete Salsich — Mon, 01 Mar 2010 09:56:16 -0600

Why should any lawyer be surprised that clients don't like the uncertainty of hourly billing? Have you ever taken a car into the shop and been surprised by how much a repair cost?

Let me start by making it clear that I like my auto mechanic. I've taken my cars to the same neighborhood shop for a number of years and have always been pleased and satisfied with the quality of the work and the level of customer service. And even though my car has been in the shop for more than a week now, I'm still satisfied that I've taken it to the right place.

Until this past week, however, I never realized how much auto mechanics are like billable hour lawyers. My ordeal started with steam billowing out from under my hood as I pulled up in front of my house. Like many legal clients, I didn't know exactly what was wrong, but I knew I had a problem.

With a few prayers (and some less than complete stops at stop signs), I made it to the auto repair shop. Here's a synopsis of my subsequent conversation with the mechanic:

Mechanic: "Well, Pete, you've got a broken thingamawhatsit hose, but we have to take the engine block apart to get to it."

Me: "Can you fix it?

Mechanic: "Sure, but we won't know if we need to fix anything else until we get the engine block apart and order the part. Call back on Thursday."

Me: "Thursday? Wow, that seems like a long time--about how much will this cost?"

Mechanic: "Well, that depends. This is a labor-intensive job--probably about 5 hours of labor, plus parts, but there's a lot we don't know yet."

Starting to sound familiar? It's now been 8 days since I took the car in, and the "investigation" alone has taken more than 5 hours, not to mention the total amount of time it will eventually take to fix the problem. And there's not a thing I can do about it because they have my car in the shop, with it's hood open and engine parts disassembled. I just have to see it through to the end and hope the bill isn't too large.

That's the experience most legal clients have when they pay by the hour. Like I said, I like my mechanic, but I'm becoming more and more convinced that there is a better way to bill my clients.

UPDATE (3/2/10): I Picked up my car last night. It runs great, but the $1500 bill was about twice what I expected from my initial conversation with the mechanic. To be fair, he kept me apprised of everything they had to do, so I knew the bill was creeping up, but it was still a shock. The lesson: even the best customer service in a pure billable hour situation can be very frustrating.

"Attractive Nuisance" or "Acoustic Nuisance": Trademark Challenges and Rock Band Names

Pete Salsich — Mon, 22 Feb 2010 08:45:45 -0600

I learned early on in my "musical career" (I love saying that!) that if I was willing to just play rhythm guitar, I always had a place in the band. That's me in the blue hat, playing with my law school band at the late, lamented King Louie's in St. Louis, before it was the elegant restaurant it later became.

Like many budding rockstars, we thought we sounded way better than we actually did, and we had to have a cool band name. Being dorky law students, we couldn't resist taking a name from Torts class: "Attractive Nuisance." That's right--as a band, we were a swimming pool without a fence.

Those fond memories of coolness came flooding back to me the other day when I saw this article in the ABA Journal about trademark challenges surrounding rock band names. Apparently all the cool band names have been taken by other bands, or else they are trademarks for some other class of goods or services, like Captain America. What's the next great band to do?

Bands choosing a name face the same trademark challenges that apply to all businesses when they are starting out or launching a new product. For example, do you choose a name that is the same as or very close to a trademark for some unrelated type of product, and argue that there will be no likelihood of confusion because the markets are so different? That might work, but it might also be a very expensive fight to win.

Trademark 101 suggests choosing a mark that is truly unique, fanciful, arbitrary and distinctive--one that doesn't have any descriptive powers at all. Think Kodak. Strong, easy to protect--saves money on litigation. But every dollar a company saves on litigation probably has to go to marketing in order to explain to customers that this unusual, non-descriptive name actually refers to a particular company's goods or services.

On the other hand, many small (and not-so-small) businesses want a trademark that tells their customers exactly what they are and what they're selling--the more descriptive the better. This might help customers find a business, but it can make it very hard to enforce trademark rights. Ultimately, a combination of a unique trademark and effective marketing is the best way to go.

So what about that band name of ours? Was it unique? Apparently we weren't the only legal jammers who thought that was a cool name--last Fall, the Minneapolis legal community hosted the Attractive Nuisance Tour. And, not surprisingly, the name promotes other goods and services, like the Attractive Nuisance blog.

Was our band name descriptive? Most of our "fans" would almost certainly describe us as a nuisance. And sometimes we did choose more description. When we couldn't get the whole band together for gigs, a smaller group of us would do "unplugged" shows under the also awesomely cool name "Acoustic Nuisance." Guess what? We weren't the only band to use that name, either.

Probably a good thing that we went on to other things (although . . . )

Character of the Week: Olympic Mascots

Geoff Gerber — Tue, 16 Feb 2010 13:54:25 -0600

A day late and probably many dollars short, I'm late with the Character of the Week because I've been trying to instill a love of the modern Olympics in my nine-year-old son. Does anybody else notice a difference in interest based on age? That is why my Character of the week is (are) the Olympic Mascots.

And yes, I mean all of the "official" mascots. The 2008 Beijing Summer Olympics has all of the prior mascots collected here, and it has an explanation of its own successful mascots here. From the summer of '72 when "Waldi" the multi-colored dachshund was the mascot chosen to represent the resistance, tenacity, and agility of the athletes and express the gaiety and joy of the Olympic festival in Munich through today, each host-city Olympic organizing committee has used a character or group of characters to represent the brand for their particular games. An extremely difficult task, more often criticized than praised, each mascot must be created, designed, introduced and retired in something less than six years. The mascots are the subject of an immense marketing drive and, if the committees who own them have their way, a proportionately large return on the investment.

A mascot is often developed as a fictional spokes-model to represent a brand. As characters representing brand identity, mascots operate as trademarks. Like other marks, mascots must be protected with a vigilant, enforcement effort or the investment mascot can be easily wiped away. The intense exposure for Olympic mascots means they need to be tough. As the 2010 Vancouver Olympic games progress, they present a case study in mascot creation, enforcement, and protection as the value of the Vancouver mascots is threatened by an Internet meme.

As brand representatives, Olympic mascots must:

embody Olympic spirit;
communicate and support the mission of the Olympic games (for both the International Olympic Committee and the local organizing committee);
promote the history, culture, and geography of the host city;
build the festive feeling of the event; and,
enegage the public, particularly children.

Some have been more effective than others. Most seem to be criticized, such as in this recent piece by Shane Igoe on ESPN's Page 2. Some are praised, but not everyone can agree on what works and what doesn't. Although the mascots for the 2012 Olympic Games will not be unveiled until later this year, the London 2012 Organising Committee is focused on its brand and the BBC has a great article explaining the challenges in Olympic mascot design that incorporates input from the designer of the "much-reviled 1996 mascot."

The Vancouver Organizing Committee for the 2010 Olympic and Paralympic Winter Games (VANOC) is just as brand conscious. VANOC has explained why it thinks mascot selection is important and its website has interviews with three influential designers about mascot creation and selection (Brad Copeland, Javier Marsical, and Leo Obstbaum).

VANOC undertook an international design search and ultimately chose Vicki Wong and Michael Murphy who create together as MEOMI, VANOC selected three and a half mascots to promote its Vancouver 2010 brand. The three main mascots are:

Miga - a sea bear - part killer whale, part bear who loves to surf and snowboard;
Quatchi - a Sasquatch, who takes pictures and dreams of being a hockey goalie; and
Sumi - an animal spirit who loves alpine skiing and has the wings of a Thunderbird and the legs of a black bear.

These three are accompanied by Mukmuk, who is not considered an official mascot, and is just a "sidekick." Mukmuk is a marmot - normally hibernating in the winter - who likes to eat, burrow and make friends. Mukmuk is intened to have an online presence only.

The challenge for Olympic mascots is the tight timeline to introduce and build goodwill in the mascots sufficient to achieve their branding purposes and to capitalize on the substantial investment and see a return. According to Sports Illustrated, organizing committees like VANOC may earn up to a third of their revenue from merchandising and licensing mascots. This is big money when you consider the $250 million in sales of 1996 Atlanta's Izzy was considered disappointing.

With this much money at stake, brand protection and enforcement is important. VANOC knows this and has a detailed program to protect its brand. Although designed with special consideration for Canadian law and, in particular, the Canadian Olympic and Paralympic Marks Act, the well-written plan for protecting the brand is a useful, practical document for anybody concerned with protecting their brand. VANOC has put it together in a nice brochure (Real 2010 Protecting the Brand - pdf) that undoubtedly helps assure VANOC's merchandising and licensing partners that the mascots in which they invest will be remain valuable.

Unfortunately, it is easier to plan to protect a character's value than it is to actually protect that value. As I have discovered with my nine-year-old, the Olympics are mostly attended and watched by adults. The mascots can engage children and mascot merchandise will be bought by parents if it does. Thus, the mascots need to appeal to both.

VANOC seemed to have done well in that regard. Vancouver news reported that before VANOC chose Miga, Quatchi, and Sumi, focus groups in Vancouver, Toronto, and Seattle "showed the characters were universally liked by all age groups." Importantly, "All of the mascots were considered fun, cute and friendly and parents universally considered them appropriate for their children."

But, not everyone liked the new mascots. Last summer, Michael Barrick, already critical of the public money being spent on the games, concluded that the mascots were stylistically similar to "Pedobear," inserted an image of Pedobear into a piece of fan art of the mascots, and posted it to his blog. The first problem is that Pedobear is an Internet meme used to "out" suspected pedophiles. Essentially, Pedobear is used as a cartoon representation of a pedophile who lures away innocent children.

The second problem is that the Pedobear image has caught on and been picked up in European press (Polish, Dutch, and German) and used when discussing the offcial mascots. It is unlear what action VANOC could take to reverse this. And, now that North America has noticed, the Vancouver Province blogged to explain the the mistake, and then, without explanation, posted the offending image in Sunday's paper on C2. It has been reported on by the Telegraph in the UK and picked up by BoingBoing.

It is not clear what action could be taken under Canadian law. In the U.S., as a noncommercial work, VANOC would likely have no dilution claim against the creator. But, given the actual confusion, might have a strong infringement claim. Even so, practically speaking, such action might have been useful last summer before the art spread, but is probably too late to do any good now.

We'll have to wait and see if this has any economic impact on the mascots for these games. Either way, my son thinks they are cute.

Listening: The Non-Delagable Component of Project Management

Pete Salsich — Tue, 09 Feb 2010 11:44:54 -0600

Have you ever driven by a construction site and wondered "Who actually knows what's going on here?" Somebody must. Even the Empire State Building was completed ahead of schedule. But what does this have to do with a law practice?

The other day we had a very productive meeting with a client for whom we had just completed a fixed-fee engagement. That engagement had been short in duration, limited by a date-certain event, and we were able to meet the client's needs at a price all agreed was reasonable and appropriate.

We were very happy, then, when the client engaged us again. At first, however, this new project appeared to be more open-ended, with less clearly defined parameters, and we grappled a bit with how to price it. Nevertheless, by the end of our meeting, we all felt fairly comfortable that we had defined what was in the engagement and what was not.

When we got back to the office, we started to identify the specific tasks needed to achieve the client's goals, how much time they would take, who would do what, and--most importantly--how we would keep ourselves on task to make sure we could deliver the quality the client expected in an efficient manner. In short--how were we going to manage this project?

Professional project management is a robust and well-defined discipline in many professions--architectural engineering, advertising and construction leap to mind--but in the legal profession, it has rarely been a separate and distinct part of how law firms and lawyers work. There typically has not been a person whose sole job it is to make sure everyone and everything stays on task--the lawyers have just had to do it themselves, some better than others.

Jim Hassett of Legalbizdev.com has a provocative post asking the question: "Should Law Firms Hire Outside Project Managers?" It's a good read, as is his three-part series on Project Management and Alternative fees. Jim concludes that some lawyers CAN be made into effective project managers, on a case-by-case basis, but all lawfirms need to make project management a priority:

"...firms that fail to figure out how to manage more efficiently are ultimately at risk of going out of business. But success is going to require flexibility, patience, resources, the right kind of training programs, and more than a little psychology."

The discussion has also been going on at 3 Geeks and a Law Blog, where the conclusion seems to lean more towards making project management a full-time, separate function from the practice of law.

A full-time project manager might be a good idea in some firms, especially larger ones with a wide range of attorney skill-levels, etc. Ultimately, however, the most important part of project management--listening to the client--cannot be delagated. It must be part of the attorney's skill set.

If you think about it, we've always had to manage projects, particularly in litigation. There are court-set deadlines, multiple parties, witnesses, depositions, expert witnesses, etc.--without some pretty good project management skills, any lawyer would be swamped. Most aren't, so they must be doing something right. However, typically lacking in the bigfirm hourly billing model was any emphasis on how to manage a project to be cost-effective for the client. That's the challenge we face today.

As Jordan Furlong of Law21.ca points out in a great post today entitled "The Boutique Exodus", many lawyers--like us--are leaving or have left large law firms to form boutique firms because clients are demanding not only lower costs but more certainty in their legal expenses. One main feature of many of these new boutique firms is the willingness to offer alternative fee arrangements, like the fixed fee engagement I mentioned above.

There have always been professional incentives to manage a project's court-imposed deadlines, but in an hourly billing system, there are no incentives to meet those deadlines more efficiently. For example, in an hourly system, the default is to do everything possible to cover all the bases, even where it's pretty easy to tell which small segment of the work is actually going to matter at the end of the case.

By contrast, in a fixed fee engagement, the lawyer has to take some risk along with the client--often to make the tougher decision about what NOT to do. To do that effectively, the lawyer has to really listen to the client, to understand the client's business from the inside--in short, to discover the client's real goals in any given situation. That takes time and it takes trust.

There are all sorts of tools to manage projects--software programs, vendors, internal and external training--but none of them can take the place of the hard work of getting to know our clients better. That will ultimately determine whether we are truly successful.

Character of the Week: Kermit the Frog

Geoff Gerber — Mon, 08 Feb 2010 12:47:58 -0600

Sunday, I was a guest on The Podge Cast. I'll let you know when that session is up on their site. We talked about a number of things, including how individuals may use right of publicity and trademark to protect their fame. I blurted out that I would start a related, recurring feature on this blog about how fictional characters protect their fame.

That's right. Some fictional characters start to take on a life of their own and there are a number of legal rights that protect intellectual property interests in characters. It is something I have spent a lot of time doing and I enjoy it enough that it makes sense to write about at least once a week. So here goes. My first character of the week: Kermit the Frog.

As with many of the iconic characters in popular culture, Kermit evolved over time. Originally a faintly defined reptile or amphibian sock puppet with ping-pong-ball eyes, Kermit acquired additional traits and greater definition over time. Eventually, he came to be known as an anthropomorphic frog who grew up in a swamp and traveled across the country to make it big in show business, His fame grew from a local D.C. area TV station, to nationwide appearances on public television on Sesame Street for the Children's Television Workshop, to fronting the prime-time broadcast of The Muppet Show on a major broadcast network, to Hollywood stardom in a bio-pic on the silver screen.

We watched his career grow from TV-news correspondent, to variety-show host, to actor, director and producer. At the same time, we learned about his fears, friendships, and loves. He is the shy celebrity, uncomfortable with fame. But, he became so famous that the world has a hard time telling where fiction ends and reality begins. Last fall, he escorted Lady Gaga to the MTV Video Awards and with a kiss, created a scandal that earned him an interview with People magazine.

Just as with any real-life celebrity, the fame associated with Kermit is a valuable, intangible property. Intellectual-property law protects that value in a number of ways.

The two main ways in which IP law protects characters are copyright and trademark.

Each of the works in which Kermit is depicted is protected by copyright. And, when a character is sufficiently defined, courts have recognized that copyright law may protect a character from unauthorized copying.
A character may also be protected trademark. If a character is sufficiently distinct, it may serve as a symbol to designate the source or origin of goods or services. This happens most often, but not exclusively in the context of merchandising.

As a trademark, Kermit became a symbol designating Jim Henson and his companies as the source for all things Kermit related. At first, it was for Kermit puppets. It grew to include all merchandising emblazoned with Kermit. And eventually, Kermit's fame outstripped that of his creator such that Kermit became the trademark for all things Henson.

With Jim Henson's death, Kermit and Henson's other intellectual property passed to his family. They sold Kermit, bought him back, and sold him again. As Sharon Armstrong pointed out in a post on the Duets Blog, Kermit is now owned by The Muppets Studio, LLC which is a wholly owned subsidiary of The Walt Disney Company.

With an established and valuable character, it becomes a challenge to protect the character. Trademark infringement or dilution actions are one possible way to do this. But, the most successful characters become so famous that, like celebrities, They are natural targets for social commentary.

Such is the case with Kermit the Frog. In 2007, Sad Kermit became an Internet phenomenon. In his music video debut, Sad Kermit covers the Nine Inch Nails's song Hurt in the style of Johnny Cash. The normally family friendly Kermit takes viewers into a dark, destructive spiral of self-abuse.

Initially, the "Hurt" video was taken down from YouTube because of a copyright claim from the Jim Henson Company, but it is back. Although the creators of Sad Kermit abandoned their federal trademark application, the character endures and he has his own website with additional songs and videos.

Keeping the focus on trademark for the time being, Mattel v. MCA Records provides the analytical framework that most courts would apply to this situation. What is notable, and what Pete pointed out in his post on the The North Face/The South Butt dispute, is that - like with real celebrities and the right of publicity - there is no clearly defined parody defense to trademark infringement. Changes to the federal anti-dilution statute in 2006 (codified at 15 USCA 1125) identified a number of defenses that recognize First Amendment rights to use another person's mark in certain circumstances. Specifically:

(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services, including use in connection with--

(i) advertising or promotion that permits consumers to compare goods or services; or

(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

(B) All forms of news reporting and news commentary.

If The Muppets Studios/Disney took legal action against the operators of the Sad Kermit website, Sad Kermit's creator's might ave a difficult time arguing that using Sad Kermit as the title for the website was any use "other than as a designation of source for the person's own goods or services." Still, under Judge Kozinski's analysis in Mattel, The Muppet Studios might have a difficult time establishing that Sad Kermit was "commercial."

It appears that Sad Kermit's creators, by abandoning their application for a federal trademark registration, and The Muppet Studios, by not filing suit, have decided to follow Judge Kozinski's last bit of advice to the Mattel litigants, "to chill."

Perhaps The Muppet Studios recognize that Jim Henson's Kermit oversaw an extremely popular show on which music video parodies of celebrities were a mainstay. Maybe Kermit simply told them not to sue. Regardless, with the introduction of a new series of Muppet music videos, The Muppet Studios appear willing to let the public decide whose Muppet is more loved by the public. You be the judge. The Muppets perform Bohemian Rhapsody here.

Right Of Publicity Is Not Copyright: Free Speech Pitfalls For Comic Book Artists, Publishers & Sellers

Geoff Gerber — Thu, 04 Feb 2010 16:41:01 -0600

Online comic book store Heavy Ink gave a strong response to Olivia Munn's attorneys: "shove it." Olivia Munn is co-host of G4's Attack of the Show, an actress, and most recently the cover model for January's Maxim. Her attorneys are opposed to Heavy Ink's sale of the Celebrity Showdown Olivia Munn One Shot #1 comic from creator Brian Denham and Antarctic Press.

In their cease and desist (jpg), Ms. Mann's attorneys demanded that Heavy Ink, the seller, take down a webpage link for the comic book and demanded that they destroy all copies of the comic. Don't know if her attorneys have gone after the publisher. They addressed their demands to Heavy Ink's DMCA Agent, which may have confused the folks at Heavy Ink into thinking that this was a copyright issue. It is not. Ms. Mann asserts her exclusive rights to "use or exploit her image and/or name in any manner whatsoever." This invokes the right of publicity, not copyright.

Unlike copyright, which protects particular expressions of ideas (artistic works), the right of publicity protects a celebrity's right to control the fame that they build in their name and likeness (identity). A right of publicity claim exists for:

use a person's identity,
without the person's consent,
with an intent to obtain a commercial advantage.

While Heavy Ink may have had a good argument that it did not intend to obtain a commercial advantage because it did not know who Ms. Munn was, that argument is slipping away with the increasing number of posts on its site that proclaim what a great marketing opportunity has been created by Heavy Ink's public response.

Regardless, that was not the reason for its strongly worded response. Heavy Ink refused because:

"it is clear that [Ms. Munn] is a public figure. As a public figure, the use of her likeness meets the tests for the parody copyright exception set forth in both Campbell v. Acuff -Rose Music, Inc. and the more recent Suntrust v. Houghton Mifflin."

While these two cases do address parody defenses to copyright infringement claims Campbell - 2 Live Crew's "cover" of Roy Orbison's Pretty Woman, and Suntrust - Alice Randall's The Wind Done Gone perspective shift on Margaret Mitchell's Gone With The Wind), they do not create parody defenses to right of publicity claims.

There is no absolute defense to a right of publicity claim based upon parody. Instead, parody is part of the general defense based upon First Amendment free-speech rights. And,even though the First Amendment is part of the U.S. Constitution, the First Amendment defense to right of publicity claims is analyzed in at least four different ways depending upon where the suit is brought.

the "transformative use" test, e.g., Winter v. DC Comics (over the Winter brothers' complaints about the Jonah Hex comic
the "relatedness" test, e.g., Parks v. La Face Records (for Outkast's song titled Rosa Parks)
the "actual malice" test, e.g., Hoffman v. Capital Cities/ABC (when Hoffman's Tootsie character appeared in a Los Angeles Magazine fashion spread)
the "predominant purpose" test, e.g., Doe v. TCI Cablevision (or Tony Twist v. Todd McFarlane disputing a character's name in Spawn)

It should also be noted that it is not clear that Celebrity Showdown would be considered a parody. As the Heavy Ink website describes the comic:

Olivia Munn conquers the world in this hilarious spoof! Hollywood's hottest geek girl, Olivia Munn, hosts G4's Attack of the Show, but while at comic con, she is attacked by a swarm of fans. Unable to escape, her gamma-irradiated cells explode and unleash the fury of The 50-Foot Womunn. It's the showdown of the century! Geeks vs Munn! Let's get ready to rumble!!

We'll have to wait for the comic's April release to see if it offers any commentary about Ms. Munn, or simply places her in a fantasy setting. In Dr. Seuss Enterprises v. Penguin Books USA, the Ninth Circuit held that The Cat NOT in the Hat was not a parody and infringed Seuss copyrights and trademarks because the Seuss-like stanzas about the O.J. Simpson case ("One knife?/Two knife?/Red knife/Dead wife") "have no critical bearing on the substance or style of The Cat in the Hat. [the author and publisher] merely use the Cat’s stove-pipe hat, the narrator (Dr. Juice), and the title (The Cat NOT in the Hat!) to get attention or maybe even to avoid the drudgery in working up something fresh."

Still, in most states the First Amendment would protect a comic-book creator in the right of publicity context based upon the First Amendment if the work itself is sufficiently transformative.

Not so in Missouri. A crafty, plaintiff's attorney would purchase the comic on-line and have it shipped to a St. Louis address to obtain jurisdiction and take advantage of the "predominant purpose" test that lets a jury weigh the commercial value of a celebrity's name against the artistic value. At the same time, a wise purveyor of comics would block its website's sales into Missouri.

Perhaps more interesting is why Ms. Munn's attorneys would be going after this particular comic when a plaintiff's attorney would find a treasure trove of other opportunities in publications from Sinful Comics (absolutely NSFW, may find offensive). In particular, you would think that instead of going after the more mainstream publication by Antarctic Press, Ms. Munn would be more concerned about her depiction and sale in this adult oriented comic (partial image below, full image definitely NSFW). That is unless Ms. Munn has a licensing agreement with Sinful Comics.

Regardless, this will be a very interesting situation to watch develop.

"Musical Prozac" -- The Angel Band Project

Pete Salsich — Mon, 01 Feb 2010 17:23:35 -0600

Sometimes you get lucky and get to work on something that you just feel good about.

That's the case right now. We're helping some good friends with an amazing project that's all about turning horrible grief into something lasting and uplifting. Please check out The Angel Band Project -- a very special project and a cool blog, too.

This is a great example of talented, compassionate people coming together to create something bigger than themselves, and bigger than the tragedy that first devastated -- then motivated -- them. It is a powerfully moving tribute to a brave lost friend, to be sure, but it has also grown into much more than that. In part that's because of the fantastic mix of music being created, but also because of the charitable cause it will support.

Geoff and I are proud to be doing a small part, but many others are donating their time and talent as well -- just check out this latest post about last weekend's recording session in Chicago and all of the really cool people involved.

Want more information? You can read the Angel Band Project's blog, follow them on Twitter, or become a fan of their Facebook page. It's their story, not ours. Suffice to say that if you or someone you know has been a victim of sexual violence, this project will be especially meaningful.

If you just love good music made well, then I bet you'll dig it, too.

Intellectual Property Litigation and Alternative Fee Arrangements: The Uncertainty Principle

Pete Salsich — Thu, 28 Jan 2010 07:00:17 -0600

"Our competitor is infringing our trademark and killing our business! You've got to make them stop, whatever it takes! (pause . . . wait for it . . . ) But we can't afford an expensive lawsuit, especially when we have no idea what it will cost. Which way do we go?"

So say many of today's clients.

It's 2010 and the client revolution is in full swing -- lawyers are finding that they may just have to justify their bills based on the value received by their clients, not just the amount of time the lawyers devoted to a matter. If you think about it, this shouldn't come as much of a surprise, but somehow it seems like virgin territory for many lawyers.

Of course, certain types of transactional practices have been offering so-called "alternative fee arrangements" for years -- billing by the document or deal, for example -- but it's much less common in a litigation practice. Most lawyers will tell you this is because litigation is, by definition, an exercise in managing uncertainty. With apologies to Heisenberg's Quantum Mechanics, many litigators seem to have their own "Uncertainty Principle," which goes something like: "If you don't know what the other side will do, or what the court will do, how can you predict what the case will cost?"

Jay Shepherd disagrees.

Jay's firm, The Shepherd Law Group in Boston, has been doing employment litigation on a non-hourly basis for more than three years, and he's a loud and proud proponent of "Open-Price Lawyering" (he hates the term "alternative fees"!) for all lawyers -- litigators included. In fact, his stated mission on his Twitter profile @jayshep -- you'll love this -- is "to make lawyers suck less." Big job. I'm glad he's on it.

Jay -- and others like him, including Patrick Lamb at The Valorem Law Group -- are part of a vanguard of legal professionals pushing the profession forward. All lawyers say they focus on client service and value (I mean, really, shouldn't everyone??), but Jay and Patrick use this as the basis for setting prices, and they are re-shaping the way we look at our own business models.

So how do we do this with Intellectual Property litigation -- especially when it often involves obtaining injunctive relief without a promise of meaningful damages? That is something we'll be exploring here at The Anchor Plate. I've got some ideas about managing IP uncertainty, but I also know I have a lot to learn. I think Jay and Patrick are right about one thing, though -- it can and should be done.

What else do Jay and Patrick have in common? Great blogs. The Client Revolution and In Search of Perfect Client Service are two of my favorites, and I expect I'll be returning to them often. You should too.

The End of Lawyers? Or the Beginning of a Better Practice?

Pete Salsich — Fri, 22 Jan 2010 13:12:46 -0600

How cool is the internet? Seriously.

Thanks to Twitter, I started following Jordan Furlong (@jordan_law21),an Ottowa-based attorney who blogs about the evolution of our profession at Law 21.ca. He recently tweeted about a blog post by Neil Denny (@NeilDenny), from Bath, England, who describes himself as a "collaborative lawyer". From there, I discovered Neil's great blog, Lawyer1point9. If you haven't been there, take the trip -- it's worth it.

While at Neil's blog, I discovered a lengthy post he wrote last year entitled "The End of Lawyers and the Power of Po." Wow. A commentary on Richard Susskind's book "The End of Lawyers" -- which many have seen as a doom-inducing diatribe on the woes of an archaic legal profession -- Neil suggests instead that Susskind's book should be a starting point for discussing the potentialities of a new way of practicing law.

I can't do it justice in this post, so please go read the entire piece, but suffice to say that I find myself in full agreement with Neil's basic point:

"We can choose to keep on doing what we have always done, and justify our self-deception with passionate, strident arguments as to why possible changes will not affect us. Or we can choose to engage in the debate, to read, or hear Susskind out, and consider how the arguments might impact us, our law firms, and yes, even our very jobs and livelihoods."

There is no denying the situation we find ourselves in as a profession — law firms are laying off partners and associates while they continue to raise rates, law schools continue to churn out new lawyers with staggering amounts of debt but without much promise of a good-paying job, and clients are increasingly skeptical of the uncertainty that clouds much of the cost of obtaining legal services.

I heartily agree that the response to this situation cannot be to ignore or downplay it. Rather, we need to use it as a starting point for the next conversation — the one that starts with “What now?”

We can believe in the importance of the law and the value of good legal advice without being wedded to an outdated model for delivering our services. We can't go back to the way things were, and frankly, we shouldn't want to. How we go forward, however, is open to lots of debate. Let's get started.

And thanks, Jordan and Neil, for helping to point the way.

Trademark Cases Start to Flood St. Louis

Pete Salsich — Fri, 15 Jan 2010 16:46:39 -0600

My home town of St. Louis, Missouri is known for many things: the Arch, the Cardinals, Toasted Ravioli and floods, just to name a few. Recently it's also become known for some high-profile trademark infringement lawsuits. In just the last month, two big name cases were filed and a third threatened -- all involving well-known trademarks and well-financed parties (on one side of each case). Call it a season of giving for local trademark lawyers! (Disclosure -- we're not involved in any of the cases, but we know attorneys in all three).

First it was The North Face v. The South Butt, asking the age-old question: Can you tell the difference between a face and a butt?

Only days later, we saw Bing! Information Design v. Microsoft, filed on December 16. The Plaintiff is a small local advertising and web marketing agency which has been using the Bing! trademark since 2000. This is a fairly straight-forward infringement case. The marks are identical and the local agency is clearly the senior user -- the only issue is whether the marketplace for the respective goods and services (design services vs. a search engine) overlap enough to cause confusion. Microsoft claims not to be concerned (they rarely are), but we'll have to see.

Finally, just last week, news broke of a cease and desist letter sent by attorneys for Peabody Energy to an individual operating a website parodying (and mocking) the Consortium for Clean Coal Utilization, of which Peabody is a member. As I write, the offending website appears to be gone, so perhaps the letter worked.

Is it our great tasting water? Do we have a new flood, or just a trickle? Stay tuned.

Character Copyrights at Issue: Who Will Control The King's Crown Jewels

Geoff Gerber — Wed, 13 Jan 2010 15:43:49 -0600

It was just a matter of time. As reported in The New York Times and blogged by the LA Times, Marvel Entertainment has sued Jack Kirby's heirs to invalidate their efforts at copyright reclamation. Jack "King" Kirby's legacy is substantial.

Last fall, Kirby's heirs sent 45 Notices of Termination under the 1976 Copyright Act on Marvel Entertainment, Inc. and others. At the time, Geoff Boucher did a nice article on Kirby's legacy. The most notable and probably prolific period in his long and critically acclaimed career, would be his time as an artist for Marvel often collaborating with Stan Lee.

Marvel's lawsuit seeks to declare the termination notices invalid, arguing in large part that the creations were works-made-for-hire. From a practical perspective, at stake is ownership of a wide-ranging portfolio of some of the most iconic, pop-culture characters of last century and this (e.g., The X-Men, The Fantastic Four, The Avengers). From a legal perspective, this lawsuit could clarify work-made-for-hire law for an entire industry.

If the creations that Kirby's heirs seek to reclaim were originally owned by Kirby and sold to Marvel, then Kirby's heir have a right (through appropriate compliance with termination notice requirements) to recover ownership of his original rights. If, on the other hand, Kirby created these works as works-made-for-hire, then Marvel would have owned the copyrights from their inception and Kirby never had rights to assign or for his heirs to reclaim.

Other, high-profile, character-copyright lawsuits such as Marvel Characters, Inc. v. Simon (over Captain America, co-created by Joe Simon and Jack Kirby - pdf) and Siegel v. Warner Bros. Entertainment Inc. (a pair of cases over Superman - pdf and Superboy - pdf), have touched on these issues and resulted in favorable outcomes for the artists.

But, perhaps the most analogous case (pdf) in this instance appears to be In re Marvel Entertainment Group, Inc., in which the court concluded that much of Marv Wolfman's work for Marvel (including the character Blade) was done as a work-made-for-hire.

Trademark Quiz: Can You Tell The Difference Between A Face And A Butt?

Pete Salsich — Mon, 11 Jan 2010 12:19:13 -0600

Can you tell the difference between a face and a butt? Sounds like a fairly simple question, right? I suspect most people would say that, yes, as a matter of fact, they can tell the difference between a face and a butt. That's certainly what Jimmy Winkleman and his small St. Louis company The South Butt hope. The folks at The North Face, on the other hand, are praying that you're confused.

The North Face filed a trademark infringement suit against The South Butt in mid-December in the Eastern District of Missouri. The defendant is a local kid who started his line of South Butt clothing to pay for college, selling it out of his parents' pharmacy. Claiming to be a parody of the famous North Face line, South Butt has taken a very aggressive media stance, clearly trying to win the case (read: drive a good settlement) via public opinion. In fact, the disclaimer on the media page on the South Butt website says that if you can't tell the difference between a face and a butt, buy North Face!

The Eighth Circuit rules here, however, and that so-called parody defense (which doesn't really exist under trademark law) isn't going to mean a whole lot if survey evidence shows a likelihood of confusion. For this reason, it will be interesting to see what kinds of survey's are ultimately admitted -- North Face has a much stronger case if it can show the two marks as they are used on virtually identical lines of clothing, whereas South Butt surely wants the marks to simply be viewed side-by-side.

One thing is for sure -- sales of South Butt clothing have gone through the roof since news of the lawsuit hit. It remains to be seen who will get to keep the profits from those sales.

Welcome to The Anchor Plate

Pete Salsich — Tue, 05 Jan 2010 07:00:00 -0600

Anchor Plate: a metal plate fastened to the exterior of a brick building with a washer or tie rod to reinforce structural support, usually decorative.

The Anchor Plate: a virtual gathering place for dialogue about the nature of practicing intellectual property law, to increase knowledge and to amuse.

Well. It's great to be back in the blogosphere again. When you last heard from us, we were biglaw IP litigation partners and co-authors of Owners, Borrowers & Thieves 2.0, a fine blog (if we do say so ourselves) about IP litigation in the 21st Century. (Our good friend, the great Dave Rein, now steers that ship more ably than we ever did -- and he was nice enough to leave our old posts up, too!)

Things change, however. If you've followed the legal industry at all in the last 18 months, you know that some things have changed dramatically. Last fall, Geoff Gerber and I left our long-time jobs as partners in a large St. Louis law firm to start our own boutique intellectual property, media and entertainment law firm. We did it for a lot of reasons, most of them good (we think). Ultimately, we just wanted to practice law differently (much more on that later). So now you can find us at The BrickHouse Law Group. And you can find us here, at The Anchor Plate.

We hope to be valued participants in the dialogue -- good listeners as well as good contributors -- and we expect to have guest authors from time to time as well. We'll cover some familiar territory (fair use, copyright and parody, IP litigation, comic books, for example), but we'll also reach out into some dynamic new areas, such as open-price lawyering, cloud computing and social media, to name a few.

As with any new venture, we expect some twists and turns in the road ahead -- that's half the fun of driving. We hope you'll find it worthwhile to join us on the journey.