The Business and Law of Brands and Branding from Steven Weinberg of Holmes Weinberg. PC
THE “DANCING BABY” WINS ITS CASE
Copyright owners and online media services have been at odds about the responsibility (or lack of responsibility) the services like YouTube, Facebook, Instagram and others have when people post/upload without permission copyrighted content owned by the copyright owners. The compromise (developed earlier for earlier online publishers, like AOL, MySpace, and the like and made part of the Copyright Act with the 1998 amendments known as the Digital Millennium Copyright Act (the “DMCA”)) is a procedure under which copyright owners can send takedown notices to the services identifying the copyrighted work and demanding that the offending content be taken off the site, and then the posting party is given an opportunity to respond. In what has become known as the “dancing baby” case, a mom in Pennsylvania who posted a video of her toddler dancing to the music of Prince’s “Let’s Go Crazy” in 2007 was sued by Universal Music for copyright infringement. The Electronic Frontier Foundation represented the mom (Stephanie Lenz) who obviously was not in the position to do battle on her own against Universal and the Recording Industry of America and the Motion Picture Association of America, which supported Universal. Ms. Lenz’ position was that the use of the song was “fair use” and thus not subject to liability. On Monday this week, the Ninth Circuit Court of Appeals held that copyright owners under the DMCA must consider fair use before asking services like YouTube to remove videos posted to the site. The three-judge panel made it clear that paying “lip service” to fair use could expose a copyright owner to liability. However, the Court also stated that in making the fair use analysis, the copyright holder in moving forward with a takedown notice “need only form a subjective good faith belief that the use is not authorized.” According to the Court in making sure it was getting its message across is that “To be clear, if a copyright holder ignores or neglects our unequivocal holding that it must consider fair use before sending a takedown notification, it is liable for damages under § 512(f). If, however, a copyright holder forms a subjective good faith belief the allegedly infringing material does not constitute fair use, we are in no position to dispute the copyright holder’s belief even if we would have reached the opposite conclusion. A copyright holder who pays lip service to the consideration of fair use by claiming it formed a good faith belief when there is evidence to the contrary is still subject to § 512(f) liability.” The Court added that “a copyright holder’s consideration of fair use need not be searching or intensive…formation of a subjective good faith belief does not require investigation of the allegedly infringing content,” but added that a copyright owner who acts with “willful blindness” with respect to fair use, that is it “subjectively believes” there is a “high probability” that the posted content constituted fair use and “took deliberate actions to avoid learning of this fair use,” likely will face liability if it sends a takedown notice.
Given the state of the fair use doctrine, which is somewhat in disarray, this should get really interesting.
A copy of the opinion is at http://cdn.ca9.uscourts.gov/datastore/opinions/2015/09/14/13-16106.pdf.
Just when you’ve finally figured out a strategy for Instagram, along comes a new platform to get one’s hands and mind around. Enter Periscope from Twitter, now 4 months old and already making its way into corporate branding playbooks. According to the Periscope team, the platform was started on the notion that it would be great fun to explore the world through others’ eyes, and more precisely, their live streaming video. And that’s the brilliance of Periscope — one can take journeys anywhere through the video lens of others, but you only have 24 hours to catch the live stream, thus, like Snapchat, creating some viewer urgency. The app already has been downloaded over 10 million times. And major brands are playing with Periscope in very creative ways. Nissan and Target are offering fans behind the scenes footage of their businesses, while Taco Bell created a mock press conference about its new breakfast menu item and invited fans to stop by to try a free “Biscuit Taco.” DKNY used Periscope to take fans “inside” the company on guided tours, and GE (which also is doing some pretty exciting things on Instagram) has been doing some edgy, very creative things.
ARBY’S — WELL DONE!
One of the ongoing challenges for brands is dealing with negative commentary. If you’ve watched Jon Stewart’s comedic assault on Arby’s over the years, you’ve had to wonder how Arby’s has taken it; after all, many of the viewer’s of Stewart’s The Daily Show have embraced it as their primary source of news and could very well have taken his satirical comments as gospel. Now with Stewart’s impending departure from the show (the last one is tonight), Arby’s has decided to have what could be the final say, and surprisingly, it’s lovely. Check it out here: http://digiday.com/brands/despite-abuse-arbys-thanks-jon-stewart-funny-tribute/
I CAN’T COPYRIGHT MY IDEA? (PART 2)
I’ve been away from this blog for a while winning a lawsuit, doing some cool deals, setting up a new YouTuber business and taking a bucket list vacation. And now I’m back with a lot of new posts coming your way.
In my last post, we started unlocking the world of intellectual property, starting with the basics of protection for ideas and expression, the center point of what is loosely referred to these days as “content.” As we saw, the spectrum of protection from new ideas to creative expression to invention varies. In future posts we’ll examine these areas, primarily copyright, in more depth, including important exceptions like fair use – how much of other people’s stuff can you use without worrying about a lawsuit.
Today’s post moves from ideas to brand protection. Starting with the basics, the legal epicenter of a brand is the symbol or symbols by which the brand is recognized. These can be:
Words (AMERICAN IDOL)
Names (GEORGE FOREMAN)
Designs (NIKE SWOOSH, SUPERMAN illustration )
Logos (the McDonald’s Golden Arch)
Combinations of names and designs (the word BAREFOOT and foot design for wines)
Packaging designs (the Jack Daniels bottle design)
Color (pink asbestos, Tiffany blue)
Product shapes (the Coca-Cola bottle)
Sounds (the NBC chime)
Scents (plumeria blossom scent for yarn)
Domain names (usually a dot something version of a word trademark)
and anything else by which a brand can be recognized and understood to be the designating symbol of a single source. The “single source” piece is critical — if the same designation is used by different sources for products or services normally associated with each other (for example, sweatshirts and running shoes), it’s status as a brand is diluted or lost. For example, NYLON was once a brand and later became public domain.
The technical legal term for this kind of symbol, when used for products, is a trademark (derived from the “mark of one’s trade”, the earliest trademarks being product guild marks) and when used for a service, a service mark (for ease of reference, I’ll refer to both as a trademark or a mark). In the United States, rights are obtained by actually using the trademark or service mark, although exclusive national rights are easiest obtained through the federal registration system. Outside the USA, with few exceptions, rights are only acquired through registration, and then on a country by country basis, the exception being the European Union, which grants rights in a mark that covers all of the countries in the Union.
In the US, you can use the ™ symbol for any name or other designation you consider to be a trademark (or the SM symbol for service marks) without first getting the mark registered. The ® symbol can only be used when registration is secured. Note that there is no such thing as “trademarking” something – the trademark is the designation itself and registering is what you do to get state or federal exclusivity.
But just getting registration is NOT enough to stop someone else from using the same or similar mark. This concept of not being able to automatically win a dispute with a third party, which also applies to registering copyright claims and obtaining a patent, is very troubling to many people who are able to obtain these registrations. The law requires more — in the case of trademarks, that the other’s use is likely to cause relevant consumers to mistakenly believe that there is a connection or approval between the uses; in the case of copyrights, that the copy is “substantially similar” to the copies work (there’ a similar standard for design patents) and in the case of patents, that the alleged infringer is making, using, selling, or offering to sell a patented invention, or importing into the United States a product covered by a claim of a patent without the permission of the patent owner. Infringement lawsuits can, and often do run into the millions of dollars.
Getting back to trademarks, the law is very complex and, like all intellectual property, is evolving. There are lots of misconceptions ad bad information in the blogosphere about trademarks, so caveat emptor (beware) when it comes to the info. A good place to get an overview is the federal Trademark Office website www.uspto.gov. And of course, you can always call me.
More in the next post in this series
WHY CAN’T I COPYRIGHT MY IDEA? (PART I)
My grandfather used to say “confusion rained and we all got wet.” That seems to be the case for most people trying to get a handle (not the Twitter type) around understanding intellectual property law. It can be confusing, especially these days when everything seems to intermix. So here goes what I hope is a digestible, and brief, explanation.
The word “intellectual” in “intellectual property” is used to distinguish these kinds of non-physical properties from tangible “personal property” (physical things we own) and “real property” (real estate). Intellectual property is not physical in nature, being “intangible” in nature. Intellectual property sometimes is called “intangible property.”
There are a number of different kinds of intellectual property: (1) original ideas and concepts, (2) ideas and concepts that result in inventions, (3) creative expression of ideas and concepts, (4) brand names and other brand indicia (like logos, designs, etc.), and (5) certain personal rights, including (a) the right to use our names and likenesses and voices for commercial purposes, and (b) not allowing others to destroy the integrity of the way we express ourselves creatively.
Each of these, and the rights in them, is legally differently. Some are protected only under state laws, some only under federal law, and some under both. Internationally, each country has its own laws, although there is some harmony between the patent, copyright and trademark laws of most countries. The following discussion is limited to U.S protection.
(1)Original Ideas and Concepts. These get almost no protection and what little there is varies from state to state, with no federal protection unless the idea or concept satisfies the requirements for federal patent protection. The Copyright Act expressly excludes concepts and ideas; I can’t tell you how often I have to sadly inform a client or prospective client that I can’t copyright a concept, no matter how brilliant and creative. And contrary to popular belief, merely identifying an idea or concept as “proprietary” does not create any legal rights. Some states will protect original ideas and concepts if there is an agreement between the parties in which it is agreed that the idea or concept is original and has to be kept confidential. Most states require that the agreement be written and entered into before the idea or concept is disclosed to the party charged with keeping it secret. Some states require that the idea or concept be more than merely original – that it also be “novel.” In some states, like New York, there is some older law that protected ideas for television formats and concepts, but that has been eroded over the years. California now requires written confidentiality agreements, and there is recent law indicating that the idea or concept has to be a “trade secret” as defined under the Uniform Trade Secrets Act. The bottom line is that before you give away your great new ideas and concepts, make sure you find out and do what the law requires. Because once the “secret” is out, it’s out. And there goes your protection.
(2) Inventions. These are the subject of patent law, which is only federal. A patent grants a bundle of exclusive rights in inventions, which are defined as ideas, concepts, functionality, methods and processes that are “novel,” “non-obvious” and “useful” as well as novel designs of useful articles. The monopoly created by patent law is the strongest in our law, and thus patents are hard and expensive to get and are for a limited duration. There are very stringent requirements for obtaining patent protection and the process is expensive and usually quite long – from start to finish could be over a decade. And even if you are issued a patent, it is subject to challenge. Merely filing for patent protection does not create any rights; while it allows you to identify the subject of the patent application as being “patent pending” all that does is put the public on notice that if the patent issues, anyone who has been commercially exploiting something covered by the patent may be liable for patent infringement and money damages dating back to when the notice was provided. If you are lucky enough to get patent protection, it can be a very powerful and lucrative tool. Given the expense and length of time in obtaining a patent, there is always a cost/benefit analysis required before embarking on that route. Useful information about patents can be found on the US Patent and Trademark Office website, www.uspto.gov.
(3) Expressing Ideas. How we express our ideas and concepts creatively is protected by copyright law if the expression is “original” (not copied substantially from another source) and not ephemeral in nature—it has to be “fixed” in a “tangible medium.” Since 1978, copyright protection is federal alone (with some exceptions). The subject matter of copyright is listed in Section 102 of the federal Copyright Act, and includes everything we refer to as “content” in the entertainment industry (text, still images, video and film, music, choreography, and more (maps, choreography, software programs, graphs, pantomime and architecture). Copyright rights are created from the moment the copyrightable subject matter (called “works”) are created and fixed – registration is voluntary but necessary to acquire certain valuable rights and to file copyright infringement lawsuits. The exclusive rights under copyright are the rights to reproduce (make copies) of the work, to make derivatives of the work and copies of the derivatives), and to publicly perform, publicly display, distribute and transmit the work and its derivatives. These rights are “divisible,” meaning that they can be broken up in different ways and each right can be owned separately. For example, the author of a novel can grant licenses to different persons to respectively make a theatrical film, a television series, a television movie, a Broadway play, a sequel or prequel, and so on. If the license is exclusive, the exclusive licensee is the “owner” of that right (I will be posting a separate article about licensing). Ownership is a major issue under copyrights, with lots of rules and exceptions to rules. An important point to keep in mind is that copyrightable work product created by employees is owned by the employer, but work product created in whole or part by non-employees is owned by the non-employee unless there is a written document signed by the non-employee making it clear that the work being created is a work for hire and in any event all of the non-employee’s rights in the work is being assigned and upon completion will be assigned. This assignment language is necessary since not every work is a work made for hire.
[article continued in the next post]
SOME THINGS JUST PLAIN .SUCK
Not too long ago, the folks in charge of internet domain names opened the door for a whole batch of new gTLDs – the letters that come after the dot. The newest entry causing heads to spin in the branding world is the gTLD “dot-sucks” (.sucks). The registry behind this, Vox Populi Registry, is calculating that brands are willing to pay a fee to register their brand names with it to prevent others from grabbing their names and attaching a .sucks. The strategy includes charging a “basic” fee of $2499 to register each brand with the registry. A number of brands have taken the bait. Some of these can be seen at https://www.nic.sucks/media.
Is it worth paying what some are calling extortion? That all depends on your perspective. Years ago, when some people unhappy with a brand launched complaint websites with domain names like www.[brand]sucks.com, the majority of courts and arbitrators decided that as long as the website was a legitimate complaint site about the brand, this use was a fair use and not a trademark violation. That being said, aside from the short term notoriety some of these cases enjoyed in the media, nothing really came of it – merely having a website doesn’t mean people will go there. And they didn’t.
The same may be said of.sucks. While branders and marketers likely would not want to see their brands attached to this four letter dot-word, there is a strong probability that unless it is used for a legitimate gripe site, it won’t withstand challenge in the courts and few people likely will visit it. Of course, social media (which was not around in the early days of these disputes) might be used to get more people to visit the site (I can see the tweets now — “if u think [brand] sucks visit #[brand].sucks”), but the numbers likely will still be minimal. On the other hand, if one is particularly concerned about one’s brand image, it’s cheaper to register with this registry than to litigate the matter (although, I can tell you from experience that most internet wise guys fold after a complaint is filed, which is cheaper than the registration price).
If you’re interested in registering your brands, the “sunset” period for getting advance registration is May 29th.
More interesting to me is the availability of picking up generic, but possibly more valuable .sucks domain names like life.sucks and divorce.sucks (these particular names are the examples provided by the registry on its website). These of course carry a premium price. But just think of the possibilities…..