If you couldn’t tell by the title (it’s a somewhat cryptic reference), this post pertains, yet again, to a pop-culture icon attempting to get a trademark on an element of a performance. For this reason, you might be justified in wondering if I have Katy Perry and Taylor Swift on repeat in my iTunes playlist. Well, I don’t. The truth is, there have been a lot of interesting developments lately in the trademark world involving these pop stars, who seem to be as interesting in their intellectual property protection strategies as they are in their performances.

At this point, unless you live under a rock or haven’t read this blog (I forgive you, I promise), you should probably be familiar with the dancing sharks that Katy Perry used in her performance at this year’s Super Bowl. Here’s a picture to remind you. 

The dancing sharks went viral mainly because one of the sharks decided to go rogue in its performance and not follow the choreography. I guess I would do the same thing if I was in the spotlight dancing for an audience of over 100 million people. But I digress.

Perhaps one totally unintended consequence (or benefit) of the choreography malfunction was the tremendous following these sharks acquired after the Super Bowl performance. Indeed, immediately after the performance, artists jumped on the opportunity 3D making models of the sharks and selling them on sites like Shapeways. Of course, other enterprising artists struck to Etsy to sell shirts bearing the cute but aloof shark.

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?

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. 

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.

We live in America (a wonderful enterprising nation filled with witty comedists and weekend-stand-ups), so it only seems natural that someone would come up with the idea of putting a choice phrase on a t-shirt in the hopes of striking it big and becoming the top seller on CafePress or at those shops in popular tourist shops where the merchandise all looks the same. I’m talking about phrases like “More Cowbell”, “Free Hugs”, and “Kind of a Big Deal”, all of which have become immortal as a result of their connection to some sort of event or pop-culture phenomenon.

That next big phrase could be connected with Anthony Weiner. In case you hadn’t heard, Anthony Weiner has done it again. Check out this trademark application filed two years ago for the mark RE-ERECT WEINER for t-shirts.

How clever is that! The trademark application has since been abandoned by the applicant because they failed to respond to an office action. The office action cited the fact that the trademark included the name of a person as an invalidating characteristic of the trademark (I wonder who that person could be…..) According to the USPTO, the mark identified Anthony Weiner, although no direct reference to Weiner was made in the trademark application. I guess the reasoning of the USPTO was that no one could possibly NOT get the obvious reference to Weiner based on the “erect” portion of the mark (whoever wrote this office action must have had a heck of a laugh) and Anthony Weiner’s flap (don’t read any innuendos into that last phrase, I beg you!). According to the well-supported argument of the USPTO, to use the “WEINER” name as a trademark would require the written consent of Mr. Weiner. Yeah right, like that was going to happen.

But, but…… what of my chances of making it big with this awesome phrase printed on every cheap $2 item known to man!? This gets us to the next portion of the office action, the portion dealing with the ornamental appearance issue. You see, for a phrase to be considered as a trademark, it has to, you know, actually indicate some source. It cannot be used as some sort of decorative phrase on merchandise. It has to say something about where the goods came from. This is why Anthony Weiner would have had to have given his consent to use of a phrase containing his name: people may have thought that the shirts came from him. So when you see a million other people on Café Press using phrases on all kinds of tchotchke items, the phrases on the shirts don’t have any trademark significance because nobody knows SalamanderShirts’ coffee mugs with “I Love N.Y.” from AlibabaTheGreat’s iPod cases bearing the same phrase. 

So how can a phrase like VOTE FOR PEDRO be trademarked? After all isn’t that phrase too merely ornamental and don’t you see it used on T-shirts and license plate frames and the like? Well, not quite. You see, when somebody encounters another person wearing one of those shirts, they probably put the shirt to a particular source. In this case, the source is the movie studio that produced Napoleon Dynamite. Nobody knows who the heck Joe Smith from Anywhere in the U.S. is who makes shirts on Cafe Press that say “Gun’s Don’t Kill People, I Do”. But even the "VOTE FOR PEDRO" mark faced opposition from the USPTO initially, on the basis that the phrase was not a trademark. The lawyers for 20th Century Fox wisely pointed out that even if the phrase was considered ornamental, it can still be registered as a trademark if it operates to identify a source. The phrase "VOTE FOR PEDRO" did bring to mind a source, the character in the movie Napoleon Dynamite. Indeed, this kind of source designation has found favor with the TTAB in the past,name in the decision of In Re Paramount Pictures Corporation where the TTAB reversed the USPTO examining attorney's refusal of the mark MORK & MINDY for decals for t-shirts. This choice phrase is worth highlighting:

"it is a common merchandising technique in [the U.S.] to license the use of character names and images as trademarks for a variety of products collateral to the product or services in respect of which the name or images are primarily known. Thus, while purchasers may be accustomed to seeing characters' names and images as part of the ornamentation of decals, T-shirts, and the like, they are also accustomed to seeing characters' names and images used as trademarks to indicate source of origin"

Besides, VOTE FOR PEDRO was tied to a very successful film that was critically acclaimed, mentioned numerous times in news reports, and grossed over $100 million between box office ticket sales and DVD sales. So there was likely significant secondary meaning between the phrase and the underlying film.

RE-ERECT WEINER, by contrast, is not tied to any particular source (except Anthony Weiner himself, which is why the USPTO demanded some sort of approval by Weiner for his name to be used as a mark). Perhaps the applicant for "RE-ERECT WEINER" would have been in better shape if he/she had applied for a different mark that wasn’t so obviously connected with Weiner, say the word “WEINER” itself (with the tagline Re-Erect being applied during the production of various items). However the applicant would still likely get an ornamental objection, if they were just using the word as a tagline on a shirt and not in the same way that HOLLISTER or ABERCROMBIE puts their names on the front of shirts. So trademark probably doesn't work (absent a showing of secondary meaning, that people equate the phrase with ONE source).

Thus the applicant would probably have to settle for copyright protection in the designs. Copyright protection in the phrase "Re-erect Wiener" itself is most likely out since the phrase is so short (no puns intended, get your mind out of the gutter!). This works out better for all those t-shirt entrepreneurs who want to make a buck quickly off their political satire because they can make their own shirts too with the phrase.

Sidenote: In case you thought you were going to pick up the phrase that is the subject of this blog post and run with it (no hurt feelings on my part, I don’t even have a Café Press site), it looks like somebody has already beat you to the punch. Somebody on Café Press is selling T-shirts, hats, and other tchotchke items with the phrase “RE-ERECT WIENER”. Nevertheless, the owner of this particular store has taken note of the proper I.P. protection for this particular creation by indicating that all designs are ©.