Today this blog takes a little bit of a detour from discussing topics of trademark and copyright law to enter the wacky world of defamation. Yes, a world where “he stole my toupee” takes on a whole new meaning (no offense to the Donald or anybody with a certain sensitivity about their hair who may or may not have a little help up top). Enough of the puns.

So defamation; it’s not just about scandalous pictures and headlines printed in tabloid newspapers. It is becoming increasingly more about spontaneous statements made online, an environment where people tend to speak their mind more freely and where it is often difficult to retract a statement before it makes the rounds of the internet viral circuit. Straight out of the this could only happen in Florida files comes a story about a woman whose rant against an accusatory beach-goer (who mistakenly thought the woman was stealing the accuser’s beach canopy) was captured on a cellphone and posted to social media. From there it was widely circulated and made the subject of a Fox News segment. During the segment, the hosts made some not-too-flattering statements about the woman, including that she was a thief. The problem is that the woman was not actually stealing anything and the whole cellphone video (conveniently captured much later in the altercation) made things seem slightly different than they actually were. 

Last week, the Federal Circuit ruled partly against Apple in its patent and trademark infringement case against Samsung, concluding that while Apple’s design patents were infringed by Samsung, the trade dress and trademark rights that Apple asserted were not infringed because the underlying subject matter was not trademarkable. Essentially, the elements of the iPhone design that Apple argued were trademarkable (the rounded edges of the phone, the home screen design with the grid-like pattern of icons, and the flat screen surrounded by a beveled frame) were found to be influenced by functional considerations, including a concern that the features made the phone simpler for a consumer to use. In other words, the design of the phone was driven by intuition, an idea that was apparently injected into the design process decades ago when Steve Jobs first founded the company. The question is whether a company’s legacy for simple, intuitive design can be implemented into the trade dress and product design in such a way that it becomes a source identifier. Furthermore, if those types of design characteristics are source-identifiers, is there any way that a company could develop the characteristics such that they are not functional?

To really answer this question, it helps to understand this maxim: the essence of a trademark is source identification. Always has been, and always will be. Even in the face of technology, which always seems to be pushing the envelope of how a company can truly engage a consumer, trademarks must maintain their source identifying capability. The beauty of the statutory definition of a trademark is that there are no restrictions on the form of the trademark, just so long as it serves the purpose of source-identification (and usually nothing more). For example, there is no statute or public policy that requires trademarks to cater exclusively to one of the five senses; any type of identifier that can be discerned by consumers is fair game for a trademark. This gives companies a lot of freedom in defining their brand. Given enough creativity and vision, a company could be quite unique in their branding endeavors. 

Picture this. You are the owner of an up-and-coming marketing agency. You recently wrapped up a design and identity project for one of the city’s fastest growing tech start-ups, DigiBerry. The company makes digital pastries that people can share across social networks as part of messages or shared content (don’t ask me why it’s cool, it just is!). As part of the project, you created a series of icons, fanciful pastry designs, a website, print collateral, and a series of short animated videos that users of DigiBerry’s app can send to acquaintances within their social network. DigiBerry LOVED it. The local design scene LOVED it. In fact, they asked you if they could feature the design in next month’s Marketing Greatness magazine. Flattered, you accept the invitation and submit copies of the logos you created for DigiBerry and images from some of the designs. Feeling like you’re on cloud 9, you decide to feature DigiBerry on your website and in a “featured work” brochure that you are preparing for the annual national marketing conference in New York.

All is going great. Then on the eve of the big story release in Marketing Greatness and your appearance at the conference, you get that dreaded white legal-sized envelope that most business owners have nightmares about: the cease and desist letter from the law firm of Ware Biggar Zhan Yu. Client has hired the firm and is accusing you of trademark infringement, unfair competition, and copyright infringement. They demand that you remove all logos from your website and destroy any materials that include client’s logos, name, or the designs you prepared for them. Having already prepared the materials, what are you to do?

Did a design philosophy penned 30 years ago in an internal policy directive sink Apple's chances to assert certain package and product designs as protectable trademarks?

Hot off the presses from today is the opinion from the U.S Court of Appeals for the Federal Circuit, a court that hears a lot of appeals from lower courts where the case involves patents, is the latest opinion in the long-running battle between Apple and Samsung over Samsung’s copying of Apple’s iPhone design. At least one portion of Apple’s asserted intellectual property from its smartphones was deemed unprotectable because the I.P. in question is functional. It seems the apple has fallen from the tree straight onto what is sure to be a frustrated Tim Cook. A little synopsis of the case may help get to the core of the matter a little more quickly: In April 2011, Apple sued Samsung for design patent and trademark infringement, alleging that Samsung’s Android phones and tablets copied several elements of Apple’s phone design and user interface, including the distinctive grid-structure design from Apple’s graphical user interface (or GUI, for the acronym buffs). In August 2012, a jury found that numerous Samsung smartphones infringed Apple’s patents and diluted Apple’s trademark designs for its GUIs, awarding the company $1 billion in damages. This damage award was modified downward a few times to $290 million. In the lower court case, the jury found that Apple’s GUI was a valid trademark, protectable as trade dress. Samsung appealed both that finding and the $290 million damages award last year.

Anybody who has been reading this blog for a while knows about some of the issues that come along with trying to protect trade dress but in case you missed it, here is a little primer on how trade dress (or product packaging, if looking for a less-legal word) is protected as a trademark. Just a quick summary for those who are reading this blog on a few minutes’ allowance: trade dress/product packaging, as a distinctive type of design that is capable of pointing to the company that produced it, is protected as a trademark. This protection exists to promote competition; therefore, it will not be extended to mere designs that are required by a particular product configuration or other functional considerations because to limit other companies from being able to produce an alternative design would just be anti-competitive. Trademark protection is not generally dolled out like candy because the potential term of protection is infinite, making it possible for a company to get a monopoly on something that may not be specific to the company.

There was once a time when you could stroll through an arcade and see a line of pinball machines, usually being played by very irate people gyrating the machine back and forth showing it “who’s boss”. Always a simple game with a simple user interface (what arcade game today has only two buttons and involves actual moving parts, not virtual humanoids or dynamically generated special effects?) today, most pinball machines have been replaced by games featuring the latter characteristics. It’s all for the good of the industry I hear, or at least that’s the idea I get when I watch videos like these where kids react to a GameBoy (summary: a lot of kids saw it as the equivalent of an old record player). After all, pinball machines still use… Coins! Oh the humanity. Besides presenting “old” types of gaming interfaces, pinball machines have fallen out of favor in the last few decades because they are expensive to repair and some of the parts are hard to find.

Despite the headwinds, there are still many pinball enthusiasts who are out there trying to save the game, much like Skee-Ball devotees are trying to save that game by instituting tournaments and generating buzz by deeming it a sport “almost recognized in the 2012 olympics”. These coin-toting strongmen, with a flare for slapping giant wooden boxes and shaking them harder than a 7.0 Richter Scale earthquake refuse to let go of their insatiable appetite for blinking lights, multiplier jackpots, and the ever-elusive quest to make the top score board.  

If your goal is to keep the game relevant (and thereby ensure that there are enough new games and suppliers/servicers to help keep pinball machines ticking), how do you convince a younger and increasingly-tech savvy generation that pinball can be fun? You do what any enterprising tycoon does: you turn to synergies; brand and copyright synergies, to be exact.