Snapchat, still reeling from a hacker attack in 2013
where the contact information for 4.6 millions users was published, recently lost a bid
to prevent somebody else from using a domain name that contained the word “Snapchat” (which happens to be a trademark of Snapchat, naturally). The domain name, www.snapchatcheck.com, allows Snapchat users to determine whether their information was compromised in the 2013 hack. What gives? How can a third-party simply rip-off the name of a major company and build a website off a stolen identity? Does the fact that the name is used in the context of a domain name matter?
These are all issues that this post will attempt to tackle (and tie together with a nice pretty bow). But first, let’s take a little stroll down Internet 101 lane.
The Internet has become an invaluable tool that many lean on to share information, engage with others, and improve their daily lives. Pulsating data streams flowing out of I.P. addresses build resource and support networks, helping people literally improve their lives. These aren’t platitudes, trust me. I think we can all speak from experience on this one and arrive at the same conclusion: in a World where people actively seek explanations and validation, the worldwide web is our lifeblood. And how do we navigate this lifeblood and determine, from the great cacophony of noise, what is legitimate and what isn’t? Links, searches, “likes”, content shares (which are forms of linking), and hash tags; all are filtered and validated a la our own B.S. indicators which have been so finely sharpened by our years of experience navigating the Internet.
Apple is well-known for its practice of creating tremendous buzz before its products even launch. The goal for doing this, of course, is to drive foot traffic into stores and digital traffic to apple.com where, hopefully, more than a few consumers will find themselves purchasing the gadget. Product webcasts featuring a sharply dressed spokesman in front of a screen spinning crisp images of the new product and crisp animations usually involving someones hand or fingers (what other part of the body so ably demonstrates the features of a phone or tablet?) announce this year's must-have product with great fanfare. Apple's annual Worldwide Developers Conference has similarly become a widely-followed tech-carpet gala where devoted Apple fans can gain an insight into the latest product and software developments from Apple.
Devotees have their own mediums and methods for following Apple's latest technology conquering, from blogs to underground fanatic websites (I follow a few of them myself; some of these websites seem to be almost an extension of Apple's P.R. department). A favorite topic in recent years has been the discussion of potential product names for new Apple products. In 2007, there was a particularly spirited debate over whether Apple could use the trademark iPhone given Cisco's previous ownership of the mark "iPhone" for a cordless phone that could make calls over the internet
. Apple eventually won that battle by making Cisco go quietly (well, sort of
Marshawn Lynch sporting a "Beast Mode" branded hat.
I looked at the calendar and realized that we are already a sixth of the way through 2015. I also looked at my blog and realized I haven’t posted new thoughts since last year! So to get the new year up and running (feels weird to call a year that is already into February new, but what the heck), I thought I would start off with something nice and easy: the trademark exploits of zealous sports stars and people in the public eye.
Public figures seem to have a prime opportunity to promote pretty much anything. There’s a shocker, you might say. I mean, obviously it is going to be easier for someone who has substantial big- or small-screen exposure to capture the attention of consumers. Not only do these public figures have the opportunity to promote themselves; their personas often go far beyond their on-screen roles to create their own auras. Of course, this is part of the reason why such public figures often secure those lucrative licensing deals.
Still other public figures push even beyond merely using their own personas to promote the product du-jour, launching their own brands. Kim Kardashian, Jennifer Lopez, and yes even Johnny Football
(done before he sent himself to rehab, no, no no) are all spectacular specimens of this exercise. With their viral off-the-cuff remarks and signature hand signs shared on Facebook as the latest and greatest meme (if you don’t know what a meme is, here’s what I’m talking about
), each of these public figures presents intriguing study material for any marketing figure who is seeking to understand what drives consumer purchasing decisions.
Previously on Antigenerictrademark.com (which in this context will fulfill a temporary literary role as a soap opera), we chronicled the drama that is the debate over protection of culturally significant buildings from the unfair “encroachment” of camera-wielding tourists. The plot unfolds something like this: buildings, as pieces of practical artwork, meticulously designed to evoke a visual aura, are seen by designers as sculptural works, to be protected by copyright against profiteering infringers who exploit the creativity of someone else. But the wrinkle in giving copyright protection to buildings is that a copyright, being a monopoly, would seem to rob society of its fullest enjoyment of the work (including tourists, photographers, and others); their motive may not be to exploit the design of the building itself but instead is a contribution of something original themselves, which happens to incorporate the visual representation of the building. The evil antagonist in all of this are the over-zealous rights holders who seek to contort the essence of copyright to extend to the protection of something beyond merely the design of the building: the symbolism of the building and its renowned. After all, who cares if you take photos of some obscure office park and use the pictures in your own soap opera drama?
The issue of association between certain symbols and a particular source is, of course, the essence of trademark law. The logic of protecting symbols used by an owner to allow consumers to identify the source of their goods and services is fairly straightforward: we protect the associations that consumers make when they see a symbol in the marketplace. It helps promote fair competition, but it is also a way to protect consumers and prevent purchase decisions based on misinformation (such as a counterfeit mark). The logic is that if a symbol is associated with one source, consumers will receive goods or services that meet the level of quality that have always been associated with that symbol.
Can any type of symbol function as a trademark? Certainly. After all, the statutory language is fairly broad in what a person can use to identify their wares: “any word, name, symbol, or device, or any combination thereof” just so long as the symbol actually identifies and distinguishes the goods. The words identify and distinguish go to the ability of consumers to associate a product with a source. What good is a symbol if it can’t identify the source of goods?
Yes, this image in the public domain.
This past week there was quite a stir when the Daily Mail published a story discussing an obscure provision in the EU copyright law that, on its face, appears to require any person taking a picture of the Eiffel Tower at night must get approval from some outfit called the Societe d’Exploitation de la Tour Eiffel. Yes, you read that previous sentence properly: it included a reference to both copyright and a building. And yes, the rules only restrict taking pictures of the tower at night and sharing them; daytime pictures are A-okay. At this point, you might be a little confused about several things. Quite frankly, I am too, I mean after all, being in the public and freely accessible to anyone, isn’t it unfair to deprive someone of the ability to photograph something? Aren’t these buildings designed for the express purpose of giving others inspiration and allowing them to incorporate the building into their own artwork? Ay, my head is spinning already, as it usually does when copyright I dissect copyright issues. Despite being a seemingly simple idea and legal concept, copyright laws have evolved (or devolved, depending on the context for discussion) into a complex web of statutes and case law protecting not only standard faire, but more advanced and nuanced “artwork as well”.
With that narrative in place, let’s dive in here and break it down.
First, buildings can be copyrighted. More specifically, architectural works are protected. They are protected even though they are “useful”, being made primarily for the housing of people and things. Architectural works and architectural plans are both protected as copyrightable works. When you think about it, this makes sense because architecture, as a form of practical artwork, can be just as much of an original creation as can a painting or sculpture. If an architect spent years designing a critically-acclaimed building only to have elements of it copied by another drafter and re-created on the cheap, it seems wrong that the copier should get off scott-free, especially since architectural plans and drawings are so easy to copy.
In film, some characters are destined to become popular. Others may have popularity thrust upon them.
But seriously, everybody is familiar with the protagonist of a movie. He has the most time on screen, usually brings about some positive outcome, and is generally one cool operator. One might expect such a character to have a lot of appeal off-screen and to drive merchandising purchases by consumers. Secondary characters may not be as popular simply for the reason that they aren’t as well-recognized by the viewing audience and do not play any significant role in the film, which is why it is surprising when secondary characters do acquire success off-screen.
Take Minions from Despicable Me, for example. Yes Minions, those funny yellow beings that follow Gru around and seem to hang on his every word (after all, isn’t that what a loyalist does best?) are the subject of a new movie to be released next year. Titled “Minions”, the film chronicles the quest of the little henchmen to find their next employer. But that’s not the only place where Minions are popping up. Giant balloons, building blocks, talking plastic toys, even cell phone cases, all bare the likeness of the minion.
For the Despicable Me franchise, Minions have burst onto the scene as a hugely popular secondary character. When they made their appearance in the first installment, the director did not think they would become such a key element of the film. Now, 5 years later, Minions are not only a key element of the films, they form a piece of a multi-million dollar franchise that has traversed from the screen straight into mainstream culture.
As we transition from summer into fall, we get ever closer to that venerable time of year when the skies turn gray, the cold winds blow, and the ground turns a stark shade of white. Who would have ever thought that a movie set in a cold, snowy world with a plot evolving around a person with the magical ability to freeze people would be such a success. Of course, the whole reason for its success seems not to be the setting of the story but the characters and the underlying themes. It would be quite a shame if these themes were copied from somebody else’s story, especially if the copying was done by Disney, a media company hailed as a bastion of originality and creator of magical experiences for multiple generations of kids and kids at heart.
What is so special about Frozen
that has enabled it to gross nearly $1.2 billion
(yes, with a “b”) worldwide since its release? Could it be funny scenes, like the one where Olaf and Sven battle it out across the throws of a frozen pond to reach Olaf’s discarded nose (which itself is the subject of litigation over copyright infringement
)? Threads like this woven throughout the plot make the movie as a whole special and contribute to the entertainment value of the film, but the true essence of the movie is the overarching theme of sisterly love sprinkled with the usual obstacles of overcoming physical and emotional hardships and, of course, realizing true love.
In case you are wondering, I will go out on a limb and say, “yes, you probably have seen this before.” Yet, Tanikumi (the author who claims Disney lifted the storyline of Frozen
from a book she wrote) is claiming that her story wasn’t something you have seen before. Here is a table showing some of the elements from Tanikumi’s book, all of which are cited in her suit against Disney for copyright infringement as elements that are similar to elements in Frozen:
1. Village near snowy mountains:
Story is set at the base of a snow covered mountains where two sisters live with their parents.
2. Two sisters:
Both sisters are a few years apart, have opposite hair colors, and each own a horse.
3. Intense sisterly love:
one sister has a deep love for the other sister.
4. Older sister accidentally hurts younger sister:
the two sisters are playing when one falls into a vat of hot custard, becoming severely injured.
5. Younger sister falls in love:
the suitor-to-be is a dark haired, tall and fair man
6. The suitor-to-be has competition:
another man has a love interest in the younger sister (who is conflicted about who she really loves)
Some woman writes a story about her life in a remote village in the Andeas, a story about deep sibling love, betrayal, true love, and tragedy that goes to the root of the love shared by two close sisters. Sounds like a lot of other stories you have read, doesn’t it? It may even sound like Frozen, or at least that’s what one author, Isabella Tanikumi, thinks (yeah, I’d never heard of her, either). She has filed suit against Disney claiming $250 million in damages. The claim? That Disney took the theme, characters, and plot from a book she wrote about her life.
Taylor Swift is probably asking herself the same question that Clint Eastwood famously asked in Dirty Harry. At least that’s what her attorneys might have told her when she sought to use LUCKY 13, a little-known trademark for a boutique line of clothing, on greeting cards and clothing items, of all things. LUCKY 13 belongs to a company called Blue Sphere. While many people may not have heard of LUCKY 13, Blue Sphere claims to have some heft behind the name, having done business in Southern California for over 20, and having a robust licensing program and 6 federally registered trademarks to back it up. Oh yeah, the company has also participated in a lot of charitable activities by donating retail items to different causes. All of which was done (presumably) to increase the amount of goodwill (the intangible goodies associated with a trademark, not the store) associated with Lucky 13. So why did Taylor Swift (and American Heritage, a premier greeting card company) feel the need to use LUCKY 13 and risk the ire of Blue Sphere?
Thanks to the "TaxProf" Blog for this Pic.
Jell-O, it’s the fun way to enjoy an after-school snack. With Bill Cosby sporting a bow-tie and tuxedo graced by similarly-dressed kids stuffing their faces with gelatin molds in the shapes of dinosaurs and giant lips, how could you resist buying a box or two on your next trip down the aisle at Wal-Mart? After all, it’s the snack that’s so easy to make “a Child Can Prepare it.” Jiggling fruit gel molded into funny shapes. Good, clean family fun, right? At least, that’s the image that Jell-O enjoyed for the first 100 years of its existence. As many who enjoy a good party now and then can tell you, the demographic for Jell-O has shifted ever so slightly from housewives and dessert-loving kids to college students, ravers, and club hoppers. Ergo, people who enjoy preparing a libations in the form of gelatinous molds.
With such a shift you would think that Jell-O may have noticed, and may have seized on the opportunity to correct a trend that promises to potentially take the Jell-O trademark into the abyss of genericide
(I know, I use that term a lot, but the ominous nature of the topic deserves repeating). Instead, it looks like they are doubling down on a co-branding initiative with various universities across the U.S. to promote Jell-O molding kits that include university molds. As a well-known trademark attorney has remarked
, there appears to be some double-speak about Jell-O’s true demographic here, or at least the real reason behind this initiative. After all, we know what most food items bearing university insignia (or any type of sports insignia) go hand-in-hand with one of America’s favorite pre-game past times: tailgating. And what does Jell-O and tailgating have in common? If you said most-creative mold making contests, you are wrong.