Intellectual Property: The New Real Estate

Alexander Graham Bell's Telephone Patent

Intellectual property was once viewed as an interesting, quirky but relatively obscure area of legal practice limited to a select few lawyers and academics. Patent lawyers, who were also engineers or chemists, were valued by inventors and companies which had the incentive and ability to pay them to physically navigate the byzantine Patent Office in Washington, D.C., and leaf through musty documents to file patents.

With respect to trademarks, most recognizable household brands were displayed on products stocked on grocery store shelves, and advertised on a few television networks.

Copyrights were valuable to a few writers, musicians and movie studios that were fortunate enough to collect royalty checks from licensing their creative works.

Today, however, intellectual property concepts affect our daily lives in innumerable ways, and obscure legal doctrines such as "exhaustion," "nominative fair use," and "product configuration trade dress" are suddenly controversial.

These concepts affect how we communicate, how we shop, what we read, eat, the games we play and what medicines we take.  They affect our schools, our churches and our children.

Intellectual Property issues are no longer obscure, as they are seen daily in headlines like these:

•   Anti-CounterfeitingTrade Agreement Protests:  Thousands Take to the Streets Across Europe

•   Design and Drama Mark First Day in Apple Samsung Trial

•   US Athletes Protests London 2012 Olympic Trademark Rules

•   Mexico Signs Anti-Piracy Treaty, Setting Up Battle With Activists

So why did intellectual property suddenly become so controversial and important to our daily lives?

The primary reason seems to be connected to the exponentially growing technologies that have made ideas and information more valuable than land or gold:  a new form of real estate.

Indeed, as communication technology allows for the freer exchange of ideas, economic value has transitioned away from underlying physical objects and land, and toward abstraction.

By way of a concrete example, a century ago, virtually every one of the 25 largest companies were involved in shipbuilding, steel, coal and railroads. In other words, it was more valuable and important then to move people and things around.

In 2012, the majority of the top 25 most valuable brands in the world and the largest companies in the world, are engaged solely in the transport of ideas and information.  Examples include Apple, IBM, Visa, MasterCard, Google, Microsoft, AT&T, Verizon, Amazon and Facebook.

Trademark for Hacker Group's Logo Triggers Declaration of Cyber War

Wired reports that a retail store in France had an idea that it may soon regret:  the store filed for a trademark for hacker group Anonymous' logo.

The retail store named Early Flicker, and the representative of that brand, Apollinaire Auffret, wants to own Anonymous' slogan, as well: "Anonymous. We are legion. We do not forgive. We do not forget. Expect us." in connection with commercial products. The store sells t-shirts on eBay France.

Representatives of the international hacker group produced a disturbing video stating:

Hello Citizens of the world, we are Anonymous.  Dear brothers and sisters, now is the time to open your eyes and expose the truth.  
Anonymous logo and slogan has been defiled and registered through the National Institute of Industrial Property (INPI).  An online t-shirt company called "Early Flicker" or "E-flicker" has registered the anonymous slogan and logo and passed it on as their own. Now under French law, the company owns the rights to the anonymous logo and slogan. The company's website is pickapop.fr.
  In a response the National Institute of Industrial Property said that "the conditions seem fulfilled since the mark is registered and it does not seem to have made use." Their arrogance and ignorance of what they have done will not go unpunished.  Anonymous will take down any business they have going on the internet and the 99 percent will not stop until the registration has been revoked and a public apology has been made.
  The name of Anonymous will not be the whore of the world.
  We are Anonymous. We are Legion. We do not forgive. We do not forget. Expect us.

The video depicts a representative of Anonymous in a Guy Fawkes mask speaking in a computer-generated voice.

The hacker group's threat is not likely to be an idle one.  In the past, Anonymous has targeted the US Department of Justice, the CIA, MasterCard and the Chinese government.

When Your Best Defense is a Really Stupid Offense Against an Internet Titan

What do you do when you thought it was a good idea to invest thousands of dollars in over 750 domain names that have "Google" in them, such as “GoogleGayCruises.com” and “GoogleDonaldTrump.com"? You apparently spend MORE money to hire a couple of lawyers to try and convince a federal judge that "GOOGLE" is just a generic term.  Oh, and you demand that the Court should cancel the world's most valuable trademarks so you can keep those domain names you worked so hard to cybersquat on register and use in good faith.

Fergie....David Lee Roth....Cher.....Ed Kowalczyk?

Henrik Dvergsdai / Wikimedia Commons

When band members strike out on their own and try to pursue a successful solo career, some have the good fortune of already having a cool name with loads of fan recognition. 

Consequently, their solo acts need little or no introduction to their fans. Notable examples include Fergie (Stacey Ferguson of the Black Eyed Peas), David Lee Roth (formerly of Van Halen), Morrissey (formerly of The Smiths), Ozzy Osbourne (formerly of Black Sabbath), and Cher (formerly of Sonny & Cher).

But some people just aren't so lucky, like Ed Kowalczyk (right). In the 1990's, Ed was the lead singer of a major band called "Live."  Live broke out with the 1994 album, "Throwing Copper," which spent a year on the Billboard 200 album chart before hitting the No. 1 position.

Live released seven albums in total, and sold tens of millions of albums and hundreds of thousands of concert tickets. The band's hit songs included "Lightning Crashes," "Lakini's Juice" and "Selling the Drama." Eventually, after a decade of living the drama, in 2009, Ed sought greener pastures.

Perhaps to remind fans of his current status, or perhaps to keep an association with his previous band, Ed ironically chose to call his new solo album “ALIVE." 

Further, Ed has allegedly billed himself as "Ed Kowalczyk of Live." But the band's other original members are reportedly attempting to put a stop to this form of self-promotion in a newly-filed trademark infringement lawsuit. 

Ed's self-promotion is likely to cause consumer confusion, according to the Complaint.  Booking agents, theaters, arenas and the press are allegedly being deceived into thinking Ed still has affililation with the group Live.

Billboard reminds us of the large amount of litigation that followed the sad break-up of the original Platters.  Singer Herb Reed became the last original member of the group to leave the band in the early 1970's and afterwards, the company (Five Platters Inc.) that was formed by the original members, hired a new member to continue on as a new Platters group. That fateful decision led to four decades of litigation which culminated just a few months ago when a judge ruled, "'Only You,' Herb Reed, have exclusive rights to the mark."  Herb Reed then died.

The Hollywood Reporter analogized this particular breakup to an ugly divorce. Billboard correctly points out that the ultimate legal analysis often comes down who has continuously exploited the band name and who is recognized by the public as holding the greatest claim to the mark.

Source:  Ed's Website

Here, the nature of the band's previous business partnership will have an impact. Each of the four members of Live apparently signed an Employment Agreement with the company organized to run the band's services.  And that Agreement could spell bad news for Ed, who is facing statutory damages up to $2M in addition to a permanent injunction.

It's also worth noting that Ed has tried to sell coffee, too, under the brand "EDDIE'S COFFEE." Ed might need a new agent, in addition to a new trademark lawyer.

When "Groupies" Attack: A Somewhat Crowded Field

According to the Urban Dictionary, "groupies" are individuals involved in obsessive adoration of entertainers such as musicians, actors, athletes, and even political figures. Typical "groupie" behavior is often juvenile, including even attacking one another or the very performer they supposedly admire.

A few companies have recently become involved in legal attacks on one another over who gets to own the word "groupie" and words that sound a lot like it in connection with emerging technologies.

In 2004, a Cambridge, Massachusetts company applies for "GROUPE" and "GROUPEE" in Classes 38 and 42 for online chat rooms and software.  It's domain name lives on as a music fan site, but its business doesn't.

Then in 2008, a New Jersey based startup applies for its own trademark registration on "GROUPIE" for computer application software for mobile phones in Class 9.  Groupie is apparently an iOS and web application that lets people create both public and private groups, and allows people to message back and forth and meet each other.  It has about 60,000 users so far.  

In 2011, GroupMe launches after winning TechCrunch Disrupt’s hackathon.  It is an application resident on iOS, Android, Windows Phone 7, BlackBerry and the web, and is more focused on private group messaging.  According to one report, GroupMe has become one of the darlings of the fast-growing group messaging application market, getting $10.6 million from Khosla Ventures and lots of press for its products, which just got an update to version 3.0.

Part of Specimen Submitted to Trademark Office

A tipping point is reached when GroupMe files for a federal trademark registration on its name, in connection with software capable of causing transmission of a message from a message originator to a group of recipients.  The legal dispute originates before the United States Trademark Trial and Appeal Board, when Groupie files an administrative Opposition Proceeding against GroupMe's pending application.  Now, the dispute has escalated into U.S. District Court in Manhattan, with GroupMe firing back, seeking a Declaratory Judgment of non-infringement from a federal judge to resolve the "cloud of uncertainty" hovering over the mark.

Add to the mosh pit Yawma LLC, an Oregon corporation, which in 2010 applies for "GROUPEES" for computer software website for flash sales of digital entertainment media including music and games in Class 9. Groupees.com successfully raises significant amounts of money for charity from many artists and supporters, and may have a viewpoint on all this, as well.

Source:  GoGiiGames

Finally, Shannon Tweed (from Family Jewels) has a mobile application game called "ATTACK OF THE GROUPIES" that can be played on iPads, iPhones or PC's (you just can't make this stuff up).

The lesson here is that distinctiveness is determined both by the relatedness of the mark to the product or service being offered under that mark, as well as by the number of similar marks for similar products.  

When numerous sellers of similar products use similar trademarks, those marks become difficult to distinguish and protect. Trademark professionals call this situation a “crowded field,” and it can present serious marketplace and legal problems, as is clear from the situation here. Absent a quick settlement, the parties may now spend years, and hundreds of thousands of dollars, litigating over who has the final right to legally own the mark.

Source: GreenGroupies Website

No word yet from the company that apparently owns the trademark for "GREEN GROUPIES" in connection with eco-friendly children's clothes on whether it will jump into the fray, just to keep things interesting.

Mistakes Some Brands Make

For all the discussion of the outer limits of brand protection explored by companies who are pushing the envelope, here are five common mistakes that many brands make by not doing nearly enough.

1.  FAILING TO REALISTICALLY BUDGET.  Some companies fail to allocate an appropriate and realistic budget to support all the needs of a robust brand protection program.  This is one of the biggest mistakes that even well established, sophisticated companies make. A typical marketing department will comfortably spend millions of dollars a year placing glossy advertisements in Vogue that will attract a customer’s attention for a millisecond as she flips the pages. But that same company will spend a fraction of that budget to take down dozens of high-profile counterfeit websites that show up in a search engine's top results for the brand, even when those websites will confuse thousands of customers and measurably hurt sales.


2.  RELYING SOLELY ON THE GOVERNMENT.  Another mistake that some brand owners make is assuming that law enforcement personnel and Customs agents are familiar with their brands when they encounter counterfeits of their products during a raid or investigation.  The truth is that well-intentioned police officers and Customs agents can only seize and detain items that they have a reasonable suspicion is fake.  A brand owner cannot assume that the Customs officer looking through a cargo ship at a major port knows how to tell a real pair of sunglasses from a counterfeit.  That is why it is so important to reach out to law enforcement and develop ongoing relationships.  Train them to detect the differences between real and fake products of your brand.

3.  PRIORITIZING INCORRECTLY.  It is important to prioritize targets based on a variety of factors including size, but it can be a mistake to place seemingly “low-level” targets on the back burner for too long. In fact, some of the largest counterfeiting and smuggling rings can be uncovered by pursuing a seemingly small target, such as a storefront or street peddler. Sometimes, these sources will reveal a treasure trove of information about their counterfeit supply chain that can lead to significant seizures of counterfeit goods.

4.  GOING IT ALONE.  Another mistake some brands make is to go it alone, and try to take on the entire counterfeit industry in isolation. But savvy counterfeiters deliberately rip off dozens of brands in order to diversify and spread their risk, and also focus on what sells best in any given season.  Therefore, it doesn’t make much sense for brands to refuse to partner and share information with other brand owners, who are also victims in this struggle.

5.  GIVING UP ENTIRELY.  The absolutely worst mistake a company can make is to give up entirely and abandon their brand to the vicissitudes of the counterfeiters' marketplace.  Brand protection efforts require a long-term strategy, and while it sometimes feels like bailing out the ocean with a spoon, it is critical to stay the course.

Partially Functional Product Designs Can Become a Trademark

Do you recognize this shape?

According to a recent decision issued by the U.S. Trademark Trial and Appeal Board (the "TTAB"), this rectangular shape is a valid trademark belonging to Hershey's for its iconic chocolate bars.

By Evan-Amos (Own work) [Public domain], via Wikimedia Commons

One key issue in such product configuration trademark cases is whether the design features sought to be protected as a trademark are primarily “functional."  If the overall design is functional, trademark protection is barred.  Primarily functional products can be protected by patents, but trademark law ends where functionality begins.

The TTAB held that while the individual rectangular shapes scored within the chocolate bar are functional (because they make it more convenient to easily divide the bar into equal pieces), the candy bar's overall design, when considered in its entirety, was not primarily functional.

Instead, the TTAB determined, based on the evidence presented that reflected a wide variety of shapes and designs used for chocolate bars, that the combination of rectangles with a raised border in Hershey's design is not primarily functional and, therefore, may be protected as a trademark.

The second issue that the TTAB considered was whether Hershey's product design had “acquired distinctiveness” in the marketplace for candy.

Product designs and configurations are not considered “inherently distinctive” as are many other types of trademarks. Therefore, in order to be protected as a trademark and registered on the Principal Register, Hershey's must demonstrate that relevant consumers considered the product design to be a source identifier. 

Evidence of distinctiveness can consist of consumer surveys, evidence as to the length of time a mark has been in continuous and substantially exclusive use, revenue of products bearing the trademark, advertising expenditures to promote goods bearing the mark, unsolicited media coverage, and evidence that the product configuration has been promoted in advertisements as a source indicator. 

Hershey's submitted all of these types of evidence to exceed its burden of proof. In addition, Hershey's also provided evidence that Williams-Sonoma attempted to copy the design of the candy bar to use as the shape of a brownie baking pan:

The TTAB ultimately found that the evidence demonstrated that the candy bar design had acquired distinctiveness and could be registered on the Principal Register as a trademark.

Do you recognize these other trademarked product designs?

Can Religious Symbols Be Trademarked?

At the intersection of intellectual property, culture and the First Amendment lies the interesting question:  Can religious symbols be trademarked under U.S. law?

In short, the answer is yes.


There is no inherent or statutory bar for a symbol that has acquired religious connotations and spiritual meaning to a group of believers to become protected as a federally registered commercial trademark, provided that certain legal conditions are met.


For example, the mark must be "used in commerce" and become associated with a "single source."


These legal requirements demand that some form of commercial goods or services are offered in connection with the mark by a single entity, either a church, not-for-profit organization or corporation.  Therefore, a "generic" religious symbol such as a crucifix would not be protectable because it represents a system of beliefs that is not associated with a single identifiable "source."  That is, the Roman Catholic Church could lay a claim to it, but so could Orthodox, Protestant denominations, and thousands of other Christian organizations.


Additionally, even the name of a church or religion can be trademarked.  For example, "THE EPISCOPAL CHURCH" is a federally registered trademark for religious instruction services (see right).


In one federal lawsuit testing the bounds of these concepts, the Te-Ta-Ma Truth Foundation-Family (the “Foundation”) sued the World Church of the Creator (the “World Church”), alleging that the World Church infringed its registered trademark for “Church of the Creator.”

The World Church was one of three primary divisions of the white supremacist movement. The mission of the Defendant was twofold: (1) to ensure the survival, expansion and advancement of the white race and (2) to eliminate Jews, blacks and “mud- races.”  The Foundation, on the other hand, was a denomination professing universal love and respect, and actively included everyone who wished to join.  In order words, the beliefs ensconced by the World Church were diametrically opposed to the beliefs practiced by the Foundation and therefore fundamentally incompatible.

On appeal, the Seventh Circuit  Court of Appeals held that the World Church infringed the Foundation’s trademark. The court held that the Foundation’s name did not preclude others from distinguishing themselves and implied that the name encapsulated the Foundation’s identity: “[U]sing ‘Church of the Creator’ as a denominational name leaves ample options for other sects to distinguish themselves and achieve separate identities.”

The issue affects all organized religions.  For example, a Lubavitch Jewish religious group that uses a symbol of the Torah and Hebrew letters on a shield has litigated whether or not this symbol can legitimately function as a trademark. The Trademark Trial and Appeal Board held that it could.

In an article titled "Register Trademarks and Keep the Faith:  Trademarks, Religion and Identity," Professor David A. Simon writes about some of the issues confronted when religious organizations wage secular court battles over the unauthorized use of religious trademarks.

Professor Simon notes that such litigation is not a traditional trademark dispute.  Such cases are focused on protecting rights to compete in commerce.  Here, the dispute is driven by a unique cultural struggle to protect religious identity, but the parties are forced to use the secular litigation system to resolve essentially cultural, "identity" disputes.

He suggests a novel approach to resolving such disputes that is modeled on the Uniform Dispute Resolution Procedure ("UDRP") triggered when there are disputes surrounding the legitimacy of Internet domain names.

In any event, even if permitted under intellectual property law, applying secular trademark concepts to legal disputes involving religious identity and cultural control remains an uneasy fit.

Is it Trademark Infringement to Make Your Own Fakes?

The Huffington Post is reporting that there is a run on a particular pantone of red paint in the United Kingdom.

Why red paint?

Faced with the high price of genuine Christian Louboutin designer pumps, some cash-strapped British wannabe fashionistas are painting the soles of their high heel shoes a specific shade of red, in a deliberate imitation of the designer's federally registered trademark.

In response to the Huffington Post article, I was asked the obvious question by many people:  "Is that practice legal in the United States?"

I had to pause to make sure that I was absolutely convinced that the following statement was really true:

"Yes.  This practice is absolutely legal in the United States."

Intentionally applying a counterfeit, imitation trademark to a product for one's own personal use, assuming that there is ZERO chance that the item will ever be sold or offered for sale to anyone -- is perfectly legal under current U.S. trademark laws.  It is perfectly legal to own, wear and proudly display a counterfeit product on one's own person.

The Lanham Act, codified at 15 U.S.C. § 1051 et seq., is the primary federal statute of trademark law in the United States.  The Lanham Act prohibits a number of activities, including trademark infringement, trademark dilution, false advertising and false designation of origin.

If someone were to offer a product for sale that infringes upon, dilutes or causes confusion with a protectable trademark or design, that person would be civilly (and possibly even criminally) liable under the Lanham Act for monetary damages and an injunction (a court order) against their continued conduct.  The goods can also be confiscated and destroyed.

In a case where I represented French designer Hermes of Paris, a 3-judge panel on the influential U.S. Court of Appeals for the Second Circuit in Manhattan unanimously wrote:

"Such a practice [of selling knockoffs] does harm the public, however, by creating post-sale confusion, not just among high-end consumers, but among the general public, which may believe that the knockoff is actually the genuine article.  In fact, high-end consumers may be less confused than the general public in the post-sale context because many of them will be aware of the existence of copies.  In either case, a loss occurs when a sophisticated buyer purchases a knockoff and passes it off to the public as the genuine article, thereby confusing the viewing public and achieving the status of owning the genuine article at a knockoff price."  Hermes Int'l et al. v. Lederer de Paris Fifth Avenue, Inc., et al., 219 F.3d 104, 106 (2d Cir. 2000).

But in each of its relevant prohibitions against knockoffs, the Lanham Act deliberately utilizes a key word -- commerce.

Absent some form of actual, intended or apparent "use in commerce," the imitation shoes that a person makes solely for their own personal use and display cannot be accused in a federal court as being an infringement, dilution or false advertising.

Indeed, that result is true even if the copycat shoes are admittedly designed to cause the third-party, "post-sale" consumer confusion that the Court of Appeals said is harmful.

Cheap knockoff shoes can also "dilute" the fame and power of a well-known brand (especially if the imitation shoes are lousy quality, which would "tarnish" the fame of the red-sole Louboutin trademark).

But the manufacture and use of personal copycat red soled shoes, assuming no use in commerce other than the mere act of a private person wearing them, is simply not illegal under current U.S. federal law.

That perverse outcome means that even if an ill-intentioned person were to manufacture many pairs of such shoes, for no commercial purpose other than to deceive their friends and onlookers into believing that they are fashionable enough to own a hundred pair, there is nothing the trademark owner can legally do to stop that person.

Perhaps the more interesting and unresolved question is...could a designer accuse a famous celebrity who chooses to wear knockoffs on the red carpet, of essentially "endorsing" the fake goods in an unlawful commercial manner?

10 Strange, But Real Federally Registered Trademarks

Section 2(a) of the Lanham Act, 15 U.S.C. Section 1052(a), bars the registration of trademarks that are deemed “immoral” or “scandalous." However, no aspect of U.S. law addresses the registration or use of trademarks that are just plain...strange.  Here are ten favorites:


10.  JUNK IN THE TRUNK® for trash collection.  To be distinguished from FOR THE JUNK IN YOUR TRUNK® brand of pickup truck cargo liners.
9.  CORNHOLIO®  for t-shirts and baseball caps. One of the stranger facts about this trademark registration owned by South Carolina-based Cornholio, Inc., is that it claims a first use in commerce in 2008, but characters Beavis and Butthead who made the mark famous, went off the air in 1997.
8.  OBESITY IS SUICIDE BY OVERDOES [sic] OF FOOD®  Owned by the Michigan-based Fat Loss E-School Corporation.  Typographical error included on original registration certificate.
7. BACK OFF BABY®  For bustiers.
6.  SLIMY GRIMY®  Registered since 1981 and now incontestable.  For cleaning preparations, namely, boat hull cleaning preparations.
5.  ZOMBIES VS. CHEERLEADERS®  For comic books but recently abandoned.  Not sure who I was rooting for here.
4.  DISGUSTING ANATOMY BRAIN® and DISGUSTING ANATOMY HEART® are both registered for toys "and playthings."  What such playthings that aren't toys are they talking about here??
3.  THE GREASY WIENER®  for restaurant services.  Not health food-specific, I suspect.
2.  FULL CONTACT BINGO®  Electronic Arts recently applied for this title in connection with online computer gaming.  Not yet a trademark, just an application, but I've already ordered my advance copy of the game.
1.  DEAD LAWYER®  For a variety of items, including mouse pads.

Trademarking Phrases Among Athletes Raising Eyebrows -- Literally

In the last several years, popular nicknames and phrases associated with star athletes have become the subject of numerous contested trademark applications and ownership disputes.   

Most recently, in June 2012, top NBA draft pick Anthony Davis filed intent-to-use (ITU) trademark applications for "FEAR THE BROW" and "RAISE THE BROW." The athlete is known not only for his star prowess on the court but for his truly prominent "unibrow."  Davis may have taken a lesson from other modern star athletes by getting out ahead of the issue and clarifying brand ownership early.

For example, Jeremy Lin's team of high-priced trademark lawyers have successfully fended off half a dozen applicants for "LINSANITY, New York Jets quarterback Tim Tebow's top-notch trademark lawyers battled squatters over rights to TEBOWING and Terrell Suggs has battled others for a phrase BALL SO HARD UNIVERSITY, which he has used to refer to his fictional alma mater.  And we can't forget "THAT'S A CLOWN QUESTION, BRO" is now the subject of a trademark application by Bryce Harper, who used the quip to respond to a reporter's question.

While huge trademark-induced endorsement deals are now common, trademarking popular nicknames and catchy sports phrases is not new, either. Pat Riley obtained a trademark for the term “three-peat” in 1989, when he coached the Los Angeles Lakers. But all of the recent legal activity involving the trademarking of athletes' nicknames leads to the inevitable question:  Would the iconic players of yesteryear been as aggressive in protecting their personal nicknames as brands?

It is impossible to say, of course, but it is worth noting that the late Joe DiMaggio's estate trademarked "JOLTIN' JOE" in 2007 for everything from baby rattles to Christmas tree ornaments.

Can Politicians Become Trademarks? Are Voters Just "Consumers"?

The Obama Rising Sun Trademark

Even though politicians' names, campaign emblems and slogans are used in all manner of political speech, they may still be fully protectable as commercial trademarks.  Voters and political participants may be treated as "consumers" under applicable trademark laws. Case in point:  Just last month, President Barack Obama's campaign committee filed a trademark infringement lawsuit against a Washington D.C.-based company for using the campaign's "Rising Sun" logo without permission. The Obama campaign sued Washington Promotions & Printing Inc. in federal court, claiming the company's website DemStore.com has been selling unauthorized merchandise featuring the campaign's "Rising Sun" logo. According to the Complaint, the Obama campaign had sent several cease and desist letters last year, but the Defendants continued to infringe. "[The] Defendants are using the Rising Sun Trademarks on merchandise in a deliberate and willful attempt to draw on the goodwill and commercial magnetism of the Rising Sun Trademarks and the Obama Campaigns," the Complaint alleges.

The Obama campaign federally trademarked the “Rising Sun” logo in 2008, according to the Complaint.  It filed for a trademark registration on a similar logo for Obama’s re-election campaign in April 2011. According to the complaint, the Obama campaign is concerned that DemStore’s use of the logo “is likely to create confusion” among "consumers." “[E]ach time a supporter makes a relatively small purchase on the website, [Obama for America] obtains that individual’s contact information, which OFA can then use to reach out to that individual repeatedly to seek further donations and further opportunities to promote the Campaign,” the Complaint alleges. The campaign “relies largely on promoting a certain message,” according to the complaint, including exercising “strict control over the consumers’ experience on its website and at other marketplaces” selling authorized merchandise. 
And (former) Republican politicians have taken the trademarking theory to the next level.  Last year, Sarah Palin sought to federally trademark her name, devoid of logos.  After her application was initially rejected for being unsigned, the mark proceeded to federal registration on the Principal Register.

Pop Art: Free Expression or Trademark Infringement?

A frequently-asked question of Intellectual Property lawyers relates to pop artists' use of famous, trademarked products in the context of artistic expression, and whether such uses are protected free speech, or are really nothing more than infringement and dilution cloaked in the guise of art.  Examples include Andy Warhol's famous paintings of Campbell's soup cans (above), as well as the juxtaposition of famous brand logos on guns and weapons of war such as Peter Gronquists' controversial uses (see below).  The legal analysis is not simple, and depends largely on the factual circumstances surrounding the use of the trademarked products.

A trademark is a word, symbol or design used to identify the source of a product. In order for a court to determine if the unauthorized use of a trademark constitutes unlawful infringement, at least eight (8) non-exhaustive factors are considered, including: (a) the strength of the mark; (b) degree of similarity between marks; (c) proximity of the products; (d) likelihood that senior user will bridge the gap between the goods; (e) actual confusion; (f) junior user's bad faith; (g) quality of the junior user's product; and (h) sophistication of the relevant consumers. Polaroid Corporation v. Polarad Electronics Corp., 287 F. 2d 492 (2nd Cir. 1961).  Additionally, the Court will consider if the use is "likely to dilute" the fame of a famous trademark through either blurring or tarnishment. 15 U.S.C. § 1125.

Even when grounds for a potential infringement or dilution claim exist, certain defenses are available to an artist depicting the trademarks in an artistic creation. Primarily, the artist may be able to defend the claim on the grounds of "fair use" of the trademark. However, fair use is an affirmative defense, which means that it is only asserted once the artist has been sued in court.

An illustrative case involving the use of trademarked products as part of an artistic creation is Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003). In that case, photographer Thomas Forsythe developed a photographic series entitled "Food Chain Barbie," which depicted Barbie dolls in various disturbing and provocative positions, such as being roasted in an oven or in a blender and fondue pot (see below):

Copyright Thomas Forsythe

After being sued by Mattel, Forsythe argued that his creative images attempted to "critique [ ] the objectification of women associated with [Barbie]," and to "lambast [ ] the conventional beauty myth and the societal acceptance of women as objects because this is what Barbie embodies." Id.

The Ninth Circuit Court of Appeals found that Forsythe's use of the Barbie dolls in this manner constituted fair use, as it was transformative, defining this requirement as: "add[ing] something new, with a further purpose or different character, altering the first with new expression, meaning, or message." Id.

The Ninth Circuit explained that "when [trade]marks 'transcend their identifying purpose' and 'enter public discourse and become an integral part of our vocabulary,' they 'assume[ ] a role outside the bounds of trademark law.' Where a mark assumes such cultural significance, First Amendment protections come into play: '[T]he trademark owner does not have the right to control public discourse whenever the public imbues his mark with a meaning beyond its source-identifying function.'" Id.

To try to address concerns about exposure to claims for trademark infringement, some artists incorporate disclaimers in their catalogs or on websites that advise the consumer that the use of the trademarks is not licensed or authorized by the trademark owner. While a disclaimer can help address possible confusion, it does not guarantee freedom from liability.

Ultimately, to prevail in convincing a Court that a particular use of a trademark in a painting or photograph is sufficiently transformative to shield that use behind the First Amendment, will depend on the facts of the given case.

The legal outcome, much as the appreciation of the pop art itself, may very well depend on the viewpoint of the beholder.