Last week, an app developer was in the news for creating the world’s biggest digital blob. Okay, its really just a gigantic compilation of all the facebook profile pictures ever uploaded, arranged chronologically by date of upload. That’s a grand total of 1.2 BILLION images weaved into a massive collage that resembles the dreaded snowy picture that one would often get on their television screens before TV’s became more aesthetically pleasing with their screens and simply displayed “no signal” instead of snow.

Undoubtedly, there is no way that the creator could have obtained the permission of every single facebook user prior to posting their profile pic. Indeed, the creator relied on a special algorithm that scanned facebook profile pages for each user and downloaded the profile pics. All those profile pictures, most of them are photographs that people took themselves, right? And some users probably use paintings and pictures of other things (besides themselves), where the pictures were taken by other people, right? Take this quote from 2011, for instance from the British Journal of Photography:

In case you hadn’t heard, Burger King is attempting to assert its authority as the King of fast food. Not that the fast food wars are anything new, but it seems that Burger King’s latest public relations campaign is frying a lot of people’s brains and testing the bounds of the most seasoned fast food ad campaigns.

This week, Burger King made a series of announcements across Twitter and other social media outlets that it was temporarily re-branding itself as “Fries King”. This prompted some business journalists to lament the fact that Burger King’s ad stunt is really just a gimmicky ad campaign that is only contributing to confusion on the part of consumers. No, not the same type of confusion that we trademark lawyers speak of whenever a trademark owner finds that a third-party is using a logo that is similar in appearance to the trademark owners’ logo. Burger King’s temporary re-branding couldn’t be confusing in that sense because consumers are keenly aware that “Burger King” and “Fries King” probably one and the same. After all, the Fries King logo uses the same coloring and arrangement of elements as the Burger King logo not to mention that the main point of contact between consumers and the Fries King logo is at a physical storefront for Burger King, where consumers undoubtedly recognize other symbols associated with Burger King.

Now we come to the namesake of this blog. The true aim and solemn goal that I try to affect each time I put finger to keyboard: educating the world on the dangers of generic trademarks.

When most of us were kids, we were told not to say certain words. We were admonished that these words are “bad” and that if we used them, evil things would pay us a visit and we could even end up with soap in our mouths. When we grow up, there are plenty of bad words too, although the list of bad words may not be the same as it was when we were kids. Well it wasn’t too long ago that “BlackBerry” was a bad word. It symbolized obsession and workaholism, that constant urge lurking at the back of your mind like the guy in the back alley who knows you have an addiction. Indeed, the impact of the BlackBerry devices on people’s lives was so significant that it earned the not-so-glamous mantra of “crackberry”, a not-so-subtle reference to the fact that a BlackBerry device is as addicting as a drug.

No, I’m not saying that blackberry is in fact a bad word, but it did almost go the way of becoming one in trademark owners’ and lawyers’ minds.

Let me do some explaining before you tell me to wash my mouth out.

In the last post I discussed the oddities found in the fine print on the side of a cosmetics package. We found a funny statement that seemed to declare that the package design for the box shown at rights is protected as a trademark. Apart from the strange wording of this notice, the fact that the package design should be protected by a trademark seems, well, as artificial and absurd as putting on too much makeup. There is of course nothing wrong with protecting package design as a trademark. Many companies protect the design of their packages, containers, and even certain design features of the product itself as trademarks. After all, just as a word, logo, or slogan can identify a company as the source of particular products or services, the packaging enveloping a product can also identify the company that made the product. Often, product packaging is even more effective. Maybe thats what prompted branding expert Martin Neumeier to say in his book The Brand Gap that packaging “is the last and best chance to make a sale.” 

Sometimes when I go to the store I pick up random things and read the labels. When I was younger, it used to be a form of entertainment before smart phones were created because it helped me fill the time while I stumbled through the store, parents in tow, struggling to find anything to keep me from lapsing into a state of crushing boredom. Even today, despite all the conveniences (and escapes) brought on my modern technology, I still like to pick up different items and read the labels, even if I have absolutely no interest in purchasing the product. So this past weekend, a trip to Target with my significant other presented no opportunities for variation from this trend.

Walking down the cosmetics aisle, I came upon this label while looking for some makeup stuff (concealer, whatever) for my significant other. Take a look at what the label says. Now read it again. Am I the only one confused by the statement “Package design trademark and all copy © e.l.f. Cosmetics”? Maybe it’s the way I read, but it seems like the maker of this cosmetic is trying to say that the text and stuff that describes the cosmetics (including pictures) are copyrighted and the package design is trademarked. Or is it that the package design, trademarks, and all text are copyrights? Still a third way to look at it could be that the ® symbol in front of this whole clause is referred to the package design and all other trademarks. But there is still that phrase “and all copy” to haggle with.

I’m not much of a country music fan, but I listen to a tune every now and then. I’m not a moonshine fan either, so I won’t ruminate too much on moonshine or country music. Perhaps the two go together just as well as heavy metal and tattoos? But I do know a thing or two about trademark conflicts.

I just happened to be doing a search for “florida” and “oranges” on the U.S. Patent Office’s online trademark database (its a pretty nice tool and a wealth of information, and definitely a great place to start if you want to make sure a choice phrase is available for a trademark, hint hint). I pulled up a recently-filed application for the mark “FLORIDA GEORGIA LINE ORANGE AND PEACH MOONSHINE”. As soon as I saw this search record I was like “Huh, isn’t there a band named Florida Georgia Line? What would they think about this?”

There is a band; they are called Florida Georgia Line; and, oh yeah, they recently filed a trademark for the same name (and the characters “FGL”). The goods and services (as you might guess) cover sound recordings and entertainment services, namely live performances by a musical band. For all those concert goers that demand keepsakes, the band also filed for protection for select merchandise items like T-Shirts and Hats. They filed the trademark on February 13 of this year, but I know that the band has been using the name FLORIDA GEORGIA LINE far before that date (the band claims October 2009). The owner of FLORIDA GEORGIA LINE ORANGE AND PEACH MOONSHINE filed on June 11.

Okay, so I know this blog is mostly about trademark law (it is in the name, after all!) but copyright law is also very interesting. A few of the posts as of late have included some reference to copyright law. There isn’t much overlap between the two, as copyright law is mainly about protecting works of authorship in order to stimulate additional creativity in society (this aspirational goal is captured by the phrase  “to promote the progress of science and the useful arts” language in the constitution) while trademark law is about protecting consumers through the protection of symbols which have source identifying significance. Copyright law touches an area that is near and dear to many people’s hearts: entertainment and art. You know, the interesting stuff. 

A few of you cats may have heard of a song called “Blurred Lines”. Its this song that was supposedly written in less than an hour during an impromptu studio session by Robin Thicke and Pharrell Williams. The motivation for the song was Marvin Gaye’s “Got To Give It Up”, an iconic song from the Disco era, which took much more than 1 hour to record. In fact Robin Thicke said that “Got To Give It Up” was one of his favorite songs of all time. Who would have thought that the source of such a song would become the target of a copyright lawsuit? 

Yes it is true. Robin Thicke, Pharrell Williams, and TI (Clifford Harris Jr.) have preemptively sued Marvin Gaye’s family over the track “Blurred Lines”, a relative new comer to the pop-music scene and already placing number one on the U.S. Billboard top charts list (if anyone is off-put by my unfamiliarity with hip hop music, please forgive me as I just don’t “roll” with hip hop or pop music, as it were). Marvin Gays’s family was originally threatening litigation against Robin Thicke and Pharrell Williams to secure financial compensation for T.I.’s inclusion of elements of Marvin Gaye’s well-known tracks “Got To Give It Up” and “Sexy Ways”. Now there is word that Thicke and Williams offered Marvin Gaye’s family a very cool six-figure cash settlement offer to make the case go away, but to no success. So Thicke and Williams filed the lawsuit.

Why is Marvin Gaye being sued, you might ask, when his song was copied by someone else? Good question. It is actually a relatively common strategic move that many copyright infringers pull in order to put themselves in a more favorable venue, and it is also a way for T.I. to set the table for the lawsuit. For example, they will get to argue that  Marvin Gaye’s claim is really to a particular genre and not specific melodies or lyrics in a song (which is what copyright truly protects).

In their suit against Marvin Gaye’s family, Thicke and Williams are claiming that Gaye’s copyright claim in “Got To Give It Up” is just too funky (I mean not exactly valid), because what Gaye is claiming a right to is actually a genre or a particular sound. As the argument goes, copyright doesn’t extend to entire genres. Rather, copyright only protects the particular composition of music, lyrics, and the sound recording itself because to allow one artist to exclude everybody else from writing or performing any other songs following a particular genre is just too extreme. Also, Thicke and Williams argue that simply because “Blurred Lines” brings to mind another song or even a sound is no reason for a song to be found infringing. 

So who has a more viable claim in this case? Copyright law gives a copyright owner the exclusive right to reproduce their work and make derivative works (which is a fancy word for other works that are based on the original work). This means that other people cannot copy any portion of the copyright owners’ work without permission of the copyright owner. The easiest way to prove that a work was copied is that the infringer admits to the evil deed. But how often does that happen? More then you might think, especially given the tendency of some musical artists (as the free spirits that they are) to talk a little too much.

Take the case of Thicke and Williams. In a recent GQ interview, Thicke explained the motivation behind making “Blurred Lines”:

With that kind of an admission, a court’s job may be relatively easy in determining that Thicke and Williams copied Gaye. Even from a cursory listen through both songs, it is relatively simple to identify the similarities both in the rhythms, note progression, and use of short clips (what is referred to as “sampling” in the music industry) by “Blurred Lines”, borrowed from “Got To Give It Up”. Even if what Thicke and Williams claims to have copied is deemed a “groove”, the arrangement of the groove with certain sound elements could be enough to show substantial similarity. Two songs need not be identical in order for a later song to be found infringing.

Perhaps Thicke and Williams really just want to lay a fine line between copying and inspiration. After all, it isn’t necessarily copyright infringement if an artist is inspired by an earlier song, especially if the later artists’ inspiration has more to do with the genre than the particular song. Unfortunately for Thicke and Williams, the line between copying inspiration in this case is, might I say, somewhat blurry.

Sometimes in talking about topical areas, we use generalizations. You know, like when we talk about computers, sometimes we say hard drive, when we are really thinking about RAM. Or we might be talking about our business when we say inventory turnover when we really mean asset turnover. It’s not exactly a Freudian slip, but it is a habit of putting things in umbrella categories.

So I noticed the same thing in intellectual property. In I.P., there are three different “buckets” (well four, if you count trade secret as a category). The buckets are “copyright”, “trademark”, and “patent”. Really innocuous words, right? Way more approachable than asset turnover random access memory (RAM), at least in my opinion. But still, there is all sorts of confusion (no pun intended) about what is what. What is capable of acting as a brand and what is capable of protection as a written work. You might have been subjected to this confusion over which I.P. is which, perhaps because you see the, TM, ®, and © symbols used seemingly interchangeably across different items. Sometimes the confusion can be taken to such extremes that multiple symbols are used simultaneously. Yep, just like what happened here, where the owner of a nut stand went nuts with using the official legal designations attached to the name of his product.

This news story about a Chinese company attempting to obtain a trademark on the word “Snowden” for a type of electric car with “top-secret” technology (which is where the Snowden name will come into play) is a further manifestation of the amalgamation of protections of I.P. under one umbrella. The article talks in one breath about how the company has applied for a “patent” and then in another breath it uses the word “brand”. Could it be a simple journalistic error or is it the result of a deeper confusion (no pun intended) about the true purpose of a trademark? This is not a post about “copyright vs. trademark” in the traditional sense and how to use each type of protection properly because there are already a gazillion of those on the net (and I’m all about originality!), including one from the USPTO itself. Instead, this post is more of a rumination on the tendencies for people to get confused about the purposes of legal protections. Now I’m not trying to be the grammar police here. I just want to understand what is truly going on in people’s minds when they confuse trademark, patent, and copyright.

It all comes down to this (essentially): anything that can designate a source for particular goods or services in the marketplace is a trademark. Anything that is an original, creative work of authorship (with some exceptions, such as actual ideas or useful things like tool designs and/or door handles, completely random, I know) is protected by a copyright. And patents protect useful, non-obvious and new inventions or discoveries including machines, methods of manufacture, or mixtures of things together constituting compositions of matter. Seems like pretty distinct categories, right? You have trademarks that protect symbols that have some kind of value in the marketplace (you use them as logos, connect them to products and services, and market them). Copyrights correspond broadly to works of art, which (on the whole) are completely different from symbols that are used in the marketplace. And patents deal with technical stuff. Simple enough.

But where does all the confusion as to the differences between trademark and copyright come to the fold? One point of confusion might be that symbols (such as the ubiquitous Mickey Mouse ears) may be associated with copyrighted works. So people see the mouse ears (which may not have the © or ®) and a movie instantly comes to mind, which most people easily recognize as a copyrightable work. Another point of confusion might be that logos (classified as pictorial work) are potentially copyrightable works, so people assume that (as a work of art) the logo gets copyright protection. It seems more difficult to trace the source of confusion over the significance of the word patent, but perhaps the confusion stems from the fact that anything that is proprietary is assumed to be exclusive, so someone may automatically think that something which was created by a company can be “theirs”, or otherwise it can be patented.

At the risk of creating even more confusion over the subject, certain objects can be protected by multiple types of I.P. For example, a shoe design can be protected by a design patent and can eventually be protected as trade dress (a type of trademark protection) if the shoe acquires secondary meaning (widespread recognition in the marketplace by a group of consumers). In fact, this is exactly what Disney is doing with its Mickey Mouse character: because the copyright on the original Steamboat Willy film is close to ending, Disney is now running a prominent portion of the clip before feature films in an attempt to turn the clip into a trademark. So now instead of being a creative work, the film clip has bridged the gap to become a useful symbol in the marketplace that can tip consumers off as to where the film that succeeds it came from.

At the end of the day, just remember this simple framework:

1.       Trademarks are for things (words, designs, product packaging, sounds, even film clips) that can identify the source of where your product came from.
2.       Copyrights are for written, designed, or theatrical works that were created by an author and are not intended to exclusively identify a source, at least in a commercially significant way.
3.       Patents are for inventions or discoveries (not abstract ideas), but the kinds of things that require technical drawings, flowcharts, schematics, and prototypes to describe.

This is a follow-up post to a musing from last week regarding the protection of a person’s likeness as a type of trademark (because a person’s identity and interesting quirks can have source identifying capabilities). In that post, we learned that a person’s traits could be valuable in the marketplace because the trait (whether it be the moonwalk dance performed by a musical artist or the “dirty bird” performed by an athlete upon making a big play) can be used to identify the personality associated with it, which can in turn be used by a media company (be it a video game developer or a maker of toys) to signify authenticity or advertise endorsement. Indeed as courts have held, while trademark law protects the public’s interest in being free from consumer confusion about affiliations and endorsements based on the inclusion of a person’s likeness, this protection is limited by other considerations such as first amendment, and free speech concerns especially where a particular work through which a likeness is conveyed is classified as an expressive work (such as a video game, move, or play).

Since writing that post, a prominent court (the 9th Circuit Court of Appeals in California, a court that routinely deals with intellectual property law issues) handed down a ruling that gamers love but major organizations like the NFL hate. The case is interesting for the balance it strikes between protecting an individual’s right to publicity (which is distinct from protecting a person’s likeness) and protecting the first amendment interests of the public in being allowed to use authentic representations of characters in media. By looking at this balance, we can more clearly see what trademark law truly protects. Here’s a hint: it’s about more than just a dance.

First, some ground work. Video games nowadays are pretty darn realistic. They have to be, right? After all, who wants to watch a bunch of pixelated blobs grunting up and down a simulated field that is a flat green polygon lacking any texture, with smaller pixelated blobs cheering in a sea of still more cheering blobs? That would just be lame. So game developers (to take advantage of faster computers and more robust graphics support) develop games with increasingly realistic graphics. E.A. Sports is no exception. In fact, in developing football games, E.A. sports sends out multifaceted questionnaires to NCAA and NFL team equipment managers in order to obtain information on a player’s equipment of choice. To obtain the rights to use the numerous logos, football stadiums, team colors, and of course the players in the games that EA produces, EA enters into licensing agreements with the NFL and NFL Players Association.

I am in front of the computer most of the day at work. This means my eyes get very tired. Sometimes when my eyes get tired, I feel the need to take breaks. When I take breaks, I sometimes fumble around and find odd things at my desk just to kind of entertain myself and save my eyes from becoming totally blurry. So I picked up one of these paper clip things. (I know what you’re saying: you took a five minute break and the best thing you could think to do was play with a paperclip?!) What can I say, I’m a true paper pusher!

Back to the paper clips, you might have seen them before. They don’t have the ordinary shape of regular metal paper clips and they are plastic which means they won’t discolor paper when you attach them to paper. The name on the top of the clip says “Plastiklips”. What an exciting (and nuanced name)! Its genius, I mean why didn’t I think of it? Calling a plastic paper clip “Plastiklip”. So fanciful. So catchy. So descriptive.

Then I got to thinking (also while on my break, well maybe on my next break): did somebody get a trademark on this? So being the trademark buff that I am, I made a trip to the USPTO website and ran a search for “Plastiklips” and, sure enough, up pops this trademark registration:

Now this just seems odd to me because, well, the trademark is registered for “plastic paper clips”. On the principal trademark register, no less. A trademark , “plastiklips” for “plastic paper clips”. ‘What’s the big deal?’ you might ask. Generally, a trademark cannot describe the goods that it is used on. Marks like “Blackoil” for goods such as synthetic oil that is black in color are not eligible for registration, at least not right off the bat. These kinds of trademarks are only eligible for registration if they have acquired what is called “secondary meaning”, meaning (sorry) that consumers attribute the trademark to a particular source. Descriptive terms which have acquired secondary meaning (and are now considered trademarks) include HOLIDAY INN, AMERICAN GIRL, and ALL BRAN.

But not every trademark can acquire secondary meaning. It’s not one of those things that just happens. Trademark owners sometimes have to invest significantly in marketing and may even have to obtain a consumer survey (which can be hugely expensive). Seem like an unfair burden to place on someone who put their creative juices to coming up with a slick trademark? Imagine the hardships in the marketplace that would ensue if words that described a class of goods was trademarked? Wouldn’t other makers of products who wanted to describe their goods using the same descriptive word run afoul of the trademark owners’ rights? This problem has cropped up time and time again where one company has a descriptive trademark and they try to prevent some other company (usually a competitor in the same field) from using the trademark.

This strategy of enforcing a descriptive mark can get dicey, though, because a competitor that is using the descriptive trademark on their goods could file a petition to cancel the trademark owners’ descriptive mark. And unless the trademark owner has some pretty compelling evidence showing that the trademark has acquired secondary meaning, the trademark could be invalidated for all to use. This is exactly what happened in the case of the battle over the mark FISH FRI where Zatarains’ trademark registration for the FISH FRI trademark was cancelled by another food company which wanted to use “FISH FRY” for food frying stuff. Zatarain’s got fried alright!

Getting back now to my paper clip inquiry, what of the viability of the PLASTIKLIPS trademark? I found this other paper clip company that makes the same type of plastic paper clip, but uses the name “Plastic Clips”. Of course, they haven’t tried to get a trademark for this name (any attorney that took that case would be engaging in gross malpractice), but isn’t “Plastic Clips” pretty much identical to PLASTIKLIPS? Seems nearly identical phonetically and conceptually. If the two trademarks are similar, that seems like a recipe for an infringement suit doesn’t it? Unless you have a descriptive trademark like PLASTIKLIPS and you are holding on to that registration as the last great vestige of hope in your paper clip empire!

Seriously though, I don’t think I would waste the money on a lawsuit against a company that used the phrase “Plastic Clips” for their product, especially if I knew I was going to lose. This all begs the question though: why does the owner of the PLASTIKLIPS mark continue to renew their trademark? Maybe it’s a clip of nostalgia on the part of the owner. Who knows.

Anyways the takeaway is that if you are going to use a descriptive word or phrase as your trademark, make sure that you are ready to expend the significant resources that it takes to prove that your mark has acquired secondary meaning. As they say in sports, go big or go home.