Guide Through the Legal Jungle

When Another Company Duplicates Your Tagline

Your company has been in business and using the same tagline for a number of years. Another company begins using the same tagline. What are your options?

While some might mistakenly refer to the issue as a copyright issue, it is actually a trademark or unfair competition issue. Briefly, copyright law protects original creative material such as books, films, visual art, and even magazine columns. Trademark law protects one’s exclusive use of an identifier (e.g., branding) for the source of a specific product or service. The trademark-protected identifier can be a word, phrase, design, shape, color, - and, yes, a tagline.

When evaluating whether the other company’s use of an identical tagline violates your trademark rights and whether legal action is warranted, you should ask yourself the following questions:

1) Are you actually using the tagline in a manner that qualifies for trademark protection? This requires using the tagline in commerce. Many business owners don’t fully understand that trademark use in commerce requires using the trademark in connection with offering for sale the business’ good or service. It is not sufficient to use the company name, logo, or tagline on company letterhead or business cards. Instead, the company name, logo, or tagline must appear on the product or the product’s packaging. If the trademark is used with a service, the trademark must appear with advertising for the service.

2) If you have trademark rights, have they actually been infringed? Just because a company has trademark rights, those rights do not absolutely prohibit anyone else from using the same name, logo, or tagline. A business owner can prevent others from using her trademark only if the other use is confusing. The same exact trademark you use can be used on a substantially different product or in a substantially different industry. That’s why Delta Airlines can co-exist with Delta Faucets and Outback Cars can co-exist with Outback Steakhouse.

3) Have you registered your trademark? Registration is not a prerequisite for valid trademark rights. You instantly develop trademark rights by being the first to use the trademark in commerce in a particular geographic region. Nevertheless, federal registration of the trademark with the United States Trademark Office does provide a trademark owner with a number of additional benefits including nationwide exclusivity in the trademark, increased powers to enforce trademark rights, and eligibility to receive higher damage awards from the infringer if your trademark infringement lawsuit is successful.

My book, The Cyber Citizen’s Guide Through the Legal Jungle, includes guidelines for determining if you have trademark rights and whether they have been violated. It also includes fully annotated examples of completed trademark registration applications.

Protecting a Title (of a book, film, song, etc.)

No Copyright Protection for Titles

First, know that copyright law does not protect titles. Titles are too short to qualify for copyright protection.

No Trademark Registration for the Title of a Single Work; Maybe for the Title of a Series

In certain circumstances, trademark law can protect titles. However, the title of a single work is not eligible for federal trademark registration. In contrast, the title of a series is eligible for federal trademark registration.

Other Ways to Protect the Title of a Single Work

Secondary Meaning. Even though the title of a single work is ineligible for trademark registration, the title of a single work may nevertheless obtain some protection under federal trademark laws if the title has developed secondary meaning.

Secondary meaning exists when "the title is sufficiently well known that consumers associate it with a particular author's work”. It is okay if the "particular author" is unknown, as long as consumers believe the mark refers to a "single source, even if that source is anonymous." When determining the existence of secondary meaning, courts look at factors such as the scope of sales and advertising, length of use, the number of sales, and the number of customers.

Here are examples of titles determined by courts as having secondary meaning:

Bridge on the River Kwai. A 1957 film that was viewed by millions of people, won several Academy awards, and was the 58th highest grossing motion picture of all time (at the time of the court's analysis in 1998).

The Book of Virtues. This 1993 book authored by William Bennett and published by Simon & Schuster was on The New York Times bestseller’s list for 88 consecutive weeks, sold more than 2.2 million hardcover copies, was an alternate selection for "The Book of the Month Club", and was advertised extensively in national publications .

Top Gun. This film had advertising expenditures in excess of 17 Million Dollars and grossed 72 Million Dollars within the first 72 days of its release in United States theaters.

Unfair Competition. Protection of a single work may also be available under state unfair competition laws. Unfair competition refers to fraudulent, deceptive, or dishonest business practices.

Most states have laws forbidding "passing off," a form of unfair competition. In colloquial terms, passing off laws prohibit a person from using a deceptively similar title to your movie/book/song’s title in a fraudulent attempt to siphon the good will you have established in the product.

Title Reports and Title Opinions for Films, Books & Other Creative Stuff

Trademark protection – and not copyright protection – protects titles. However, trademark protection is not available for all titles. While the title of a film or book series may be protected, the title of a single film or single book is typically not protected. Even though the title of your single film or single work is not protected, your selected title may violate someone else’s trademark. That’s where title reports and title opinions come in.

What Is a Title Report?

A title report lists productions with similar titles to your proposed title as well as any trademarks similar to the proposed title. Title reports are structured much like trademark clearance reports that a business obtains prior to choosing a name for its company or product. Most title reports cover a search of the Copyright Office’s records, the Trademark Office’s records, and other entertainment databases. A title report can run a few dozen to a few hundred pages, depending on the number of similarities found. Professional search companies that offer title reports for entertainment works include Thomson Compumark and CT CorSearch.

What Is a Title Opinion?

A title opinion is distinct from a title report. A title opinion is a letter normally prepared by an attorney which indicates, in the attorney’s opinion, whether the title is available as the title for your movie, television program, etc. The attorney bases her title opinion on the results of the title report. The title opinion normally runs one to five pages.

For More Details

There is a discussion about title reports and title opinions and suggestions on how to select a trouble-free title in my book, The Permission Seeker’s Guide Through the Legal Jungle.

Got Milk? Versus GotSourMilk.com Matter Illustrates PR Risk of Cease and Desist Letters

I just saw this local news segment about a trademark scuffle between two Maryland adolescents and the California Milk Processor Board.

 

What Happened?

Two Potomac, Maryland boys are working on a science project developing a testing strip to identify sour milk. As part of the science project, the boys began the website gotsourmilk.com. The website name yielded a cease and desist letter from the California Milk Processor Board which owns the trademarked phrase “got milk?”

I wasn’t able to find a copy of the Board’s letter. According to the news report, the Board threatened a lawsuit if the name was not changed. The boys have changed the name to whybeasourpuss.com

Should the Board Have Objected to the www.gotsourmilk.com Website?

Absolutely, yes. The website name is potentially infringing on the “got milk?” trademark. If trademark owners don’t object to infringing uses, they risk diminishing or even losing the value of the trademark. However, there are adept and inept ways for a trademark owner to approach someone misusing its mark.

Cease and desist letters that are not well-thought-out can produce public relations backlash. While the Board’s approach was not as bad as the cease and desist letter I discuss here, the Board could have handled the situation by offering some trademark education to this family rather than by threatening a lawsuit. Although the Board obtained the result it wanted – the boys have changed the website name – the California Milk Processor Board certainly does come off as the bad guy in the news coverage.

Creating Ads with No Trademark or Copyright Issues

Most small businesses do some form of advertising or promotion. Commercials like to evoke images of popular culture including contemporary music, upcoming sports events, celebrities, and current events. In doing so, a small business might unknowingly step on the toes of a copyright or trademark owner. Here are some suggestions on how businesses can produce creative advertisements while staying in compliance with copyright and trademark laws.

Don’t Overestimate Fair Use Protection.
Assume that your business will require permission before using anyone else’s music, images, text, or other copyrighted material in your advertisements. It is true that the fair use exception to copyright protection does allow one to use a small portion of someone else’s copyrighted work without running afoul of copyright law. However, fair use determinations are very fact specific and, as a general rule, promotional and advertising uses do not qualify as fair use.

Understand Nominative Use versus Promotional Use.
Recognize the difference between nominative use and promotional use when it comes to well-known names, words, and phrases. If your sweepstakes rules indicate that first prize is Super Bowl tickets, you are using “Super Bowl” in a nominative manner to identify the prize. Such a nominative use is legal. On the other hand, if the headline on your homepage invites all visitors to enter the company’s Super Bowl Sweepstakes, that is a promotional use and you should expect to receive a cease-and-desist letter from the NFL.

Use Stock Images and Music.
Incorporating materials from stock houses into an advertisement can eliminate many of the licensing headaches and legal risks of using someone else’s material.

Don’t Forget Independent Artists.
One potential downside to material from large stock houses is that the material may have been in many other projects and may have been seen many times before. A creative solution I encourage clients to explore is using original music, art, poetry, and other content from independent art¬ists. There are thousands of talented and just-about-to-be-famous writers, filmmakers, visual artists, and musicians who welcome the exposure offered by inclusion in a promotional ad and will license rights for a fair but comparatively modest fee.

Righthaven's Questionable Domain Name Grab

Righthaven has filed over 100 copyright infringement lawsuits against bloggers and website owners who re-post news articles without permission. The lawsuit that has drawn much media attention is a lawsuit against Sharron Angle, who is running for the Nevada senate seat and whose website, sharonangle.com, posted two Las Vegas Review Journal news articles without permission.

Righthaven’s Modus Operandi

Righthaven’s method involves searching the internet for unauthorized postings of news articles, obtaining the copyright in those news articles, and then filing suit. Righthaven has been heavily criticized and called a “copyright troll”. Righthaven launches suits in circumstances where many content owners would simply issue a DMCA take-down letter, directly request the blogger/website owner remove the news article, - or frankly just ignore the situation. Many of the sites sued by Righthaven operate on a small-scale and do not generate significant revenue.

Righthaven’s Illogical Pursuit of Domain Names

One aspect of these cases that has received less attention is Righthaven’s quest for the website owner’s domain name. It is possible to obtain someone else’s domain name through a legal proceeding under the Uniform Domain Name Dispute Resolution Policy, the Anticybersquatting Consumer Protection Act, or a federal or state trademark statute.

However, such claims have nothing to do with copyright – and everything to do with trademark. In order to succeed in taking someone’s domain name under any of those theories, Righthaven must demonstrate that the website’s domain name is the same as or confusingly similar to a trademark in which Righthaven has rights. In the Righthaven complaints I’ve read, Righthaven makes no mention of any trademarks it seeks to protect.

I agree with Attorney Evan Brown that Righthaven’s pursuit of domain names makes no legal sense. It may have some Machiavellian strategic sense by serving as an additional incentive for the website owner to settle quickly by paying Righthaven a few thousand dollars.

Do You Need an Attorney to Register a Trademark?

Technically, No Attorney Is Needed for a Trademark Registration Filing

Fortunately, the Trademark Office does not give a trademark application filed by a lawyer any preferential treatment. Trademark examiners (and the online trademark registration system) actually take steps to provide additional guidance to trademark applicants working without a lawyer.

What Really Counts in Your Trademark Registration Application

What counts is whether your application is correctly completed and whether your proposed trademark actually qualifies for federal registration. People often make the mistake of trying to register a trademark that simply doesn’t qualify for registration because, for example, the trademark is generic/descriptive or the trademark is too similar to an already-registered trademark.

How a Trademark Attorney Can Help in the Registration Process

The trademark application itself appears deceptively simple. However, there are some application mistakes which can only be corrected by starting over again and filing a new registration application. The trademark application becomes more complicated if you seek to register a design or logo rather than just a word. Using a trademark attorney should help you avoid many common application mistakes.

If someone opposes your trademark registration application, that is the point where you should definitely consider retaining a lawyer. Fortunately, most trademark registration applications do not generate oppositions from third parties.

Some Trademark Registration Tips for Those Not Using a Trademark Attorney

I offer several trademark registration tips as well as a sample completed trademark application in my book, The Cyber Citizen’s Guide Through the Legal Jungle: Internet Law for Your Professional Online Presence. Although the focus of the relevant chapter is registering domain names as trademarks, many aspects of the discussion apply to all trademark applications.

One tip is to try to take the description of your goods and services directly from The Trademark Office’s Acceptable Identification of Goods and Services Manual. As part of the application process, you must describe the goods and/or services with which you use the trademark. In trademark jargon, this description is called an identification.

Describing your goods/services sounds easy, right? However, unacceptable identification(s) is a common reason for the issuance of Office Actions (i.e., an initial rejection of your trademark application). The Trademark Office’s Acceptable Identification of Goods and Services Manual lists identifications for specific goods and services that the trademark examiner will accept without further inquiry as long as the specimens (i.e., examples of how you use your trademark) submitted with your application are consistent with the identification.

Another Louis Vuitton Lesson on Using Trademarks in Media

Last year, I blogged about "Lessons from Louis Vuitton on the Risk of Unauthorized Product Placements". That dispute featured LV’s objection to the appearance of its products and trademarks in videos and album art for Danity Kane, a group released through Sean Combs’ Bad Boy Records label.

As I’ve previously said when evaluating the risks of using copyrighted and other protected works without permission, one of the factors to consider is whether the rights owner previously objected to similar uses. It is a good bet that rights owners who have been aggressive in protecting their rights in the past will continue to be aggressive in protecting their rights in the future.

Louis Vuitton is proving the accuracy of this principle. Louis Vuitton now has an ongoing trademark lawsuit against Hyundai which showed the LV trademark for about five seconds in its Super Bowl luxury commercial.

While Hyundai probably wants this dispute to disappear quickly, getting a court opinion on the substantive issues would be a boon for media producers and the attorneys who advise them on when and how one can permissibly use product appearances in creative works.

Update: After two years of litigation, Louis Vuitton won a summary judgment motion finding Hyundai liable for trademark dilution. Louis Vuitton Malletier, S.A. v. Hyundai Motor America, 10 Civ. 1611 (PKC) (S.D.N.Y., March 22, 2012). The parties later reached a settlement agreement setting the amount of trademark dilution damages to be paid by Hyundai.

Lessons from Louis Vuitton on the Risk of Unauthorized Product Placements

With all the media attention on the settlement reached between Sean Combs/P. Diddy and Louis Vuitton, I thought this would be a good opportunity to blog about the potential risks of unauthorized product placements.

General Rule about Product Placements

Putting brand name products in your films and other creative products raises trademark questions. Several court rulings say the unauthorized appearance of a brand-name product in your production is okay as long as the appearance does not (i) tarnish the product’s reputation, (ii) draw on the goodwill associated with the product, or (iii) mislead people to believe that the product manufacturer has endorsed or sponsored the production.

However, even if you meet those standards, it doesn’t mean the trademark owner will not still initiate legal action against you if it views your treatment of its trademark as negative.

In the Sean Combs case . . .

Louis Vuitton objected to the appearance of its products and trademarks in videos and album art for Danity Kane, a group released through Combs’ Bad Boy Records label. As part of the settlement agreement, Combs agreed to remove all visual references to the Louis Vuitton trademarks from future releases of the videos and album

A Few Unknowns (at least to me) and Caveats about Louis Vuitton/Sean Combs Case:

• I have not seen the Danity Kane videos and album art so I can’t comment on the extent to which they feature Louis Vuitton products.

• The case was filed in France. I haven’t located a copy of the original complaint so thanks in advance to anyone who wants to forward me a copy or link. Anyway, I presume that the case would not have been decided under United States law.

• Since Combs decided it was more advantageous to settle, we won’t find out whether a court would have ruled that the use of the Louis Vuitton products was improper.

So while the Louis Vuitton-Sean Combs settlement is not authoritative, the lesson for creative types to take away is that using other people’s trademarks can carry consequences. While, in many circumstances, you may have a First Amendment right to use the trademark, you do want to consider the risks and perhaps seek legal guidance before incorporating trademarks into your music, films, domain names, and other creative endeavors.

Trademarks & Potatoes

A Guide Through the Legal Jungle Trivia Question

Mary has a business in which she sells potatoes that are grown in Idaho. Mary is trying to decide on a name for her business that will give her strong trademark. She has chosen two potential names: Mary’s Idaho Potatoes and Maidpotes.   In which name is Mary likely to have the stronger trademark and why?

1. Mary’s Idaho Potatoes, because the name says exactly what the product is and who is selling it.
2. Mary’s Idaho Potatoes, because the name is simple and easy for consumers to remember.
3. Maidpotes, because the name is distinctive and no other Idaho potato seller is likely to have the same name.
4. Maidpotes, because the name is one word instead of three.