This is not the first inning. In fact, MLB took its original swing against Mattingly’s company, Mattingly Hitting Products, Inc., in mid 2007, when it filed an opposition at the U.S. Patent and Trademark Office. Proceedings were suspended, however, until last month, when Mattingly filed his answer.

Mattingly, aka “Donnie Baseball,” who both began and ended his career with the New York Yankees and was purported to be as popular as Babe Ruth, had a career batting average of .307 and over 220 RBIs. Mattingly also holds the MLB Grand Slam record, His logo contains his retired number, 23, which Mattingly also used for his restaurant, Mattingly’s 23 (which closed down in the late 90s). Mattingly, also maintains an eBay store, called Don Mattingly’s 23.

Mattingly’s logo in question, features the trademark “23” in the shadow image of a player taking a swing. The MLB logo shows a shadow image of a player facing the same direction, and poised for a swing, begging the question of how many ways one can depict a hitter.

Surely, this matter is not over ‘til it’s over, but of note (and also called into question on the TTABlog), is Mattingly’s attorney’s first affirmative defense that “Opposer may have failed to mitigate losses and damages.” Must be American League rules, because that’s a new one for us.

SFB thought it would be a good idea – and not a violation of its agreement with Sara Lee (predecessor in interest to the original party) – to market a new bread under the name SYCAMORE FAMILY BAKERY, with SYCAMORE as the dominant feature of the mark. For good measure, it added the tagline “The Original Granny Bread” and incorporated a “heart” logo (hearts are also incorporated into the GRANDMA SYCAMORE bread logo sold to Sara Lee).

Sara Lee sued for trademark infringement and for creating a false impression and the court agreed. In Sara Lee Corp. v. Sycamore Family Bakery, the court ruled that he dominant feature of the mark was highly distinctive, and found SFB had clearly taken pains to highlight the SYCAMORE component of the mark while subjugating the other terms. Second, by calling attention to its origin, SFB was deliberately trying to increase the likelihood consumers would get the very false impression the Sycamore Family products were related to and under the control of the trademark now owned by Sara Lee.

In granting the preliminary injunction, the court paid particular attention to the “intentional copying” element of the likelihood of confusion test, suggesting that SFB and “intimate knowledge” of the GRANDMA SYCAMORE family of trademarks made clear it was deliberately trying to trade off the goodwill of the marks. Moreover, the court cited employee “joking about cease and desist letters” from Sara Lee as clear disregard for Sara Lee’s rights.

Practice Pointer: Selling trademarks and then attempting to re-use them is never a good idea. Though obvious enough, clients often believe they have an inalienable right to use their own names, even after entering into a deal with another party to sell them. Attorneys will want to make sure clients understand the full magnitude of what they are selling before they sell it.

Moreover, clients often believe that once a buyer is no longer a going concern, any agreement made with that buyer dissolves. This is rarely the case, since most agreements contain a provision expressly allowing the obligations under the agreement to be transferred.

Low-profits differ from for-profits in that they have a maximum financial return on investment. The potential rate of financial return on a standard for-profit company is generally 5% or greater, while fully tax-exempt companies are identified as having a 0% return. A low-profit company is both financial and mission-related, and strives for a financial return on investment of not more than 5%. An L3C can also receive philanthropic investment, so long as the investment provides a low rate of return. Vermont is also an L3 state, as is Montana, with legislation pending in Georgia, Michigan, and North Carolina.

While never inherently distinctive, a color can function (and register) as a trademark if the applicant can show that the color has acquired secondary meaning and that it is not functional; meaning that the purchasing public identifies the color with the source of applicant’s products or services.

As this case illustrates, applicant’s burden to proof is notoriously difficult to meet, especially when it comes to use of color on a product. Two years ago, the company 3M attempted to register the color purple for sandpaper and failed as well (Saint-Gobain Corp. v. 3M Company, 90 USPQ2d 1425 (TTAB 2007)).

The landmark cases in this area are: In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (color pink registrable for fiber glass insulation) and Qualitex Co. v. Jacobson Products Co., Inc, 514 U.S. 159 (1995 (green-gold color registrable for dry cleaning press pads). Color can also function as a service mark, which tends to be easier to prove; for example, Tiffany & So. owns a trademark registration for their color blue in conjunction with retail services; UPS owns the color brown for shipping services.

Acquired distinctiveness can be established by direct evidence (like testimonies or consumer surveys) or circumstantial evidence (like years of use or sales and advertising figures) and there is no fixed rule as to the amount of proof necessary. In this case, the TTAB found that the evidence proffered by applicant (use of the color for 10 years) was insufficient to support acquired distinctiveness of the maroon color in conjunction with applicant’s industrial products. Applicant provided no evidence that the public identified or recognized applicant’s maroon anchors. The TTAB found that there was “nothing in the record that show[ed] the the alleged mark [was] being promoted as a source indicator” and affirmed the refusal to register the color as a trademark.

Practice Note: If you are seeking registration of a non-traditional trademark (such as color, sound or trade dress), use it and feature it as a trademark. In the case of color, this might include identifying and highlighting the trademark significance of the color on the company’s web site and in advertising as applied to the goods. This case confirms that, especially in the case of a product color, consumer perception is key.

While the King of Pop has passed to his eternal resting place, he leaves behind more than devastated fans, mourning family members, legendary dance moves, and record breaking statistics. With his demise, we have learned that Michael Jackson amassed a substantial intellectual property portfolio, demonstrating a creativity well beyond his musical talents and leaving some to refer to him as an “Intellectual Property Goldmine.”

A little known fact about Jackson, he co-owned a patent for an invention he created that allows dancers to lean forward at a 45 degree angle beyond their center of gravity by wearing specially designed shoes. (U.S. Patent No. 5,255,425, titled “Method and Means For Creating Anti-Gravity”).

His famous gravity defying “lean” can be seen in the music video for the song Smooth Criminal.

Jackson also registering his name with the U.S. Patent and Trademark Office and owned numerous other trademarks for goods and services ranging from merchandise to fan clubs.

And, of course, let’s not forget about the copyrights. In addition to securing copyrights to his own works, Jackson famously outbid Paul McCartney and purchased rights to the Beatles song-copyright catalog for $47 million dollars in what many claim to be his best business decisions, later selling the rights to Sony for $90 million.

Although often maligned for his lifestyle choices and actions, Jackson’s dedication to creating and protecting his art and talents cannot be denied. Love him or hate him, he leveraged his superstardom (and that of others) into substantial intellectual property assets.

Fairey et al v. The Associated Press, Case No. 1:09-cv-01123-AKH (S.D.N.Y, filed 02/09/2009)

A follow up to this blog post. As predicted, copyright ownership in the underlying photograph is turning out to be a point of contention in the federal lawsuit.

To refresh the reader’s recollection, Fairey, filed for declaratory relief on the basis of fair use, after the AP threatened to sue him for using its photograph without permission to create the famous “Hope” artwork; the AP counterclaimed on the basis of infringement of its copyright in the photograph.

Last week, Mannie Garcia, who took the 2006 photo of Mr. Obama which Fairey admits was an inspiration for the “Hope” artwork, filed a Motion to Intervene and Memorandum of Law in the Fairey v. AP case. Mr. Garcia claims that he, not the AP, owns the copyright in the photograph because he was a freelance photographer at the time (in other words an independent contractor, not an employee); and that he never assigned his rights in the photograph to the AP. In support of his claim, Mr. Garcia proffers a copyright registration certificate for the photograph filed in March 2009. Mr. Garcia argues that he should be permitted to intervene in the lawsuit, under FRCP 24(a)(2) or in the court’s discretion, because his “interests are not adequately represented by either party:” on the one hand, Fairey “profited from the sales of Mr. Garcia’s copyright photographic image;” and on the other hand, the “AP seeks to reap some of the profit by claiming that it — and not Mr. Garcia, is the rightful owner of the copyright in the photograph.”

Stay tuned for further developments and the Court’s decision on Mr. Garcia’s motion.

Practice Pointer: This development serves as another reminder of the critical importance of securing copyright assignments in writing from independent contractors whose work you want to own, regardless of what their agreement might provide. It is a prudent practice, whether the contractor created an entire work for you (for example, a logo design or a photograph), or a piece of a larger project (such as a few lines of software code or illustrations for a book).

If you don’t have anything nice to say, it’s not OK to lie.

Increasingly, the FTC is going digital-rambo against false advertisers, and the states are following (law)suit. Lifestyle Lift, a cosmetics company has just settled with New York Attorney General Andrew Cuomo for publishing fake reviews about its cosmetic facelift process.

According to documents filed by the attorney general, Lifestyle Lift got employees to post anonymous product and service reviews on websites owned by third parties, making it appear that the reviews were made by genuine product users.

In addition to violating Section 5 of the FTC Act, which proscribes the use of deceptive advertising tactics to sell products to consumers, such conduct also violates many state laws on unfair business practices and false advertising. Cuomo, in a press conference, called the activity “cynical, manipulative, and illegal.” Cuomo would be right.

In fact, reviews are identical in every legal measure to testimonials, where the law is clear: any positive testimonial provided by consumers must be (1) truthful; (2) authorized by the manufacturer of the product; and (3) and must reflect the “typical” experience of a product user. Thus, even if a consumer is telling the truth about a product, if that truth either is not supported by scientific studies, or does not reflect the average customer experience (and therefore distorts the product’s worthiness), such a review is considered false advertising.

As many following the advertising world know, back in April, the FTC announced it will be going after companies who pay others to create viral and influential websites about the benefits of the companies’ products if information on those sites is not truthful.

It seems the two contest front runners, Team Pragmatic Theory and Team Bellkor in BigChaos, have joined forces and submitted an algorithm that was 10.05 percent better than the one Netflix uses to recommend movies to its subscribers. The result was published on the Netflix Prize leader board on June 26, 2009.

From a promotion law point of view, the contest winner must grant to Netflix, an irrevocable, royalty free, worldwide non-exclusive license under the contest entrant’s copyrights, patents or other intellectual property rights in the winning algorithm. In addition, a description of the algorithm, but not the source code, will be published on the Netflix site. I.e., the winners will “describe to the world how [they] did it and why it works.” Like all well conceived contests, the official rules provide a mechanism for determining the contest entrants actually created the entry submitted. It appears however, that the winners are not prohibited patenting their entry and winners are not prohibited from charging others for the use the algorithm.

This contest, where competitive incentives are offered as an alternative to in-house research and development, looks like a new, workable model to foster innovation.

In a long and hard fought battle, the Second Circuit Court of Appeals has given renowned fashion designer, Joseph Abboud, a chance to reclaim his name.

Issuing a sweeping injunction in June 2008, a Southern District of New York court enjoined Abboud from using his name to sell, market or promote his own business, goods and/or services, finding Abboud’s intended use constituted a breach of contract and would constitute trademark infringement. The Second Circuit, in J.A. Apparel Corp. v. Abboud, et al No. 08-3181-cv (Second Cir.) found here reversed and remanded.

J.A. Apparel Corporation (“JA”), a former joint venture of Joseph Abboud, sued the designer in federal court alleging breach of contract, trademark infringement, and related claims over Abboud’s plans to use his name in the marketing and advertising of his then new JAZZ line, which he intended to promote using with such phrases as “a new composition by designer Joseph Abboud.”

Underlying the dispute, in 2000 JA entered into a sales agreement with Abboud, paying Abboud 65 million dollars for the exclusive rights to the ABBOUD label and related JOSEPH ABBOUD trademarks. While Abboud claimed the agreement only transferred rights in the ABBOUD trademarks but not the rights in his name, JA asserted the contract sold both the trademarks and the exclusive rights to use the Joseph Abboud name for commercial purposes. The district court ruled Abboud had unambiguously conveyed to J.A. all of Abboud’s rights to use his personal name, trademarks, and trade names for commercial purposes and also found Abboud’s planned use of his name would constitute trademark infringement, as it was likely to cause consumer confusion.

Vacating the injunction, the Second Circuit remanded the case, ruling the district court: 1) erred in ruling the sales agreement unambiguously conveyed all of Abboud’s rights to use his name commercially; and 2) erred in rejecting Abboud’s fair use claim as a defense to trademark infringement. The appellate court specifically found that given the conflicting interpretations of the sales agreement, the district court should have considered the parties’ extrinsic evidence to more fully understand the parties’ intent and that the district court should have examined Abboud’s actual or proposed use to resolve his fair use defense.

COMMENTARY: This case highlights the risks inherent in licensing or selling a brand name which also happens to be an individual’s name. Because the parties failed to clearly and precisely define the scope of their agreement, Joseph Abboud stands to lose the right to his very valuable name. Granted, he was paid 65 million dollars, which may seem like more than adequate compensation….but how much is your name worth, and what would it take for you to sell it? As some might say, “priceless.” Take the time to get it right.

According to the San Francisco Chronicle, La Russa’s attorney tried to contact Twitter before filing the lawsuit, but got no response. Hours after the lawsuit was filed, Twitter removed the fake La Russa page and its postings. It is being reported that the case has already settled. “La Russa said Friday [6/5/09] that Twitter has agreed to pay legal fees and make a donation to his Animal Rescue Foundation. The organization is likely to take control of the name www.twitter.com/TonyLaRussa. However, the Wall Street Journal is reporting the opposite.

The truth is out there.

Trademark Note: Using a trademark and then simply claiming “parody” is not a “get outta jail free card.” In trademark cases, when a parody defense is raised, the defendant justifies his use on the grounds of humorous social comment. Funny or not, a defendant’s use may still be enjoined if it is likely to cause confusion with plaintiff’s trademark. Courts must balance the public interest in poking fun at trademarks and the institutions they represent, with the trademark owner’s investment and good will. Courts must also protect consumers from likely confusion.

As of last Saturday, Facebook users have been able to register personalized URLs of their choice for their Facebook home page (e.g., facebook.com/myusername). Approximately 5.75 million users signed up for their own URL over the weekend (also called “Vanity URLs”).

These new usernames could potentially be anything, including someone else’s trademark. To help trademark owners prevent hijacking of their marks, Facebook put in place a temporary procedure for trademark owners to “reserve” their registered trademarks with Facebook in advance and prevent the creation of URLs associated with those marks. Facebook has now closed this reservation period.

So what can trademark owners do who did not register their trademarks with Facebook and discover unauthorized URLs? They can request removal by contacting Facebook via this notice form. The procedure is fairly straightforward. You do not need to be registered on Facebook to use it.

So go to Facebook, check possible URLs containing your marks and, if you discover unauthorized uses, take action sooner rather than later.

Copyright infringement claims can often be reduced to a formula. In instances where the copyright infringement is less obvious and direct, a copyright owner asserts both a valid copyright registration and a theory of how access occurred and then conjectures that because of the substantial similarity between the two works, it may be concluded that defendant’s work infringes. Such a formula is the basis of a copyright complaint filed this week in the Eastern District of New York by a fine art book designer against Urban Outfitters and its subsidiary, Anthropologie. The copyright registration upon which the case relies was effective February 13, 2009, well after the date of alleged infringement. That’s a problem because the Copyright Statute explicitly prohibits the plaintiff from recovering attorney’s fees or statutory damages when the copyright registration is obtained after infringement.

Here are the facts: Purgatory Pie Press attended the fall 2008 Artists Book Fair in New York. Visiting their booth, an Urban Outfitter representative signed the guest book with effusive praise. According to the complaint, the Urban Outfitter representative was “observed surreptitiously taking pictures using small digital cameras and mobile telephone cameras.” But there is no clarity as to whether the surreptitiously taken pictures were of the disputed work.

The complaint includes a blend of claims, not just copyright. Other claims include unfair competition as well as trademark dilution, which is particularly interesting as there is no assertion that the work at issue rises to the level of a trademark.

The prayer for relief includes a demand for attorney’s fees and damages in the amount of $150,000 (the upper statutory damage limit.) This will be hard for the Plaintiff to obtain given that their post-infringement registration bars both attorney’s fees and statutory damages.

This is a complaint by an angry artist who obviously feels ripped off and is seeking orderly revenge. Unfortunately, there is little likelihood of getting more than an injunction and perhaps some modest, actual monetary damages given the late filing of the copyright application and the absence of the image at issue having been used as a trademark. It is a complaint that expresses the emotion, but fails to have many teeth.

Practice tip: Register those copyrights early and often. Having a registration in hand before an infringement occurs empowers the complaint, making it more fierce. The Copyright Statute favors the proactive.

His most recent exposure had been the friendly Twitter war between CNN host Larry King and actor Ashton Kutcher, but his grand daughters each had accounts, so he was all too familiar with inane comments about cute boys and lunchroom antics, and thought that’s all there was. He was shocked to discover many in the non-celebrity, over 40 crowd were actually using it, and reaping benefit.

I won’t go into detail about how Twitter works, except to say the site allows you 140 characters to micro-blog a single thought. Neither will I delve into the numerous macro-blogs that at least partially credit Twitter for successful political events done on short notice. I will say this: Increasingly, Twitter is being used by busy professionals to aggregate information in one place rather than spend time surfing the web to find it. The last thing I need is another website to check, but Twitter has become the ultimate lazy attorney’s reference, because other people do my research for me and serve it up in one place.

For instance, my first morning stop at work (after tea) is my Twitter page, where I follow legal bloggers (for case law updates), news tweets, sports, and grocery stores (for coupons – like I said, “one stop shopping”). Sure, I get the occasional “tweet” about what someone had for breakfast, but the benefit having what I need in one place outweighs the inconvenience – if any – of an occasional social tweet (and lightens my day).

Companies like Whole Foods use the micro-blog site to drive traffic to their own website and alert shoppers to specials. Organizations like CNN simply feed breaking headlines; the company does not even post a link (not enough room). I’m up to date in 5 minutes and spend more time on the articles and issues I really want to understand. If I wanted to, I could even find my congressperson (I don’t). Parents even get some benefit out of it (I’ll leave it to the reader to figure out why).

I’m not worried that Twitter is going to become a bastion of moral decay either. There are always bad actors in any environment (except of course the legal profession). Already, sites like Tweeting Too Hard and Curse Bird are curbing behavior. Moreover, because I pick and choose what I want to see, I don’t have to look at anything that offends me: unlike an RSS or other news feed, I can turn off and on who I follow at any time.

Social media still has some kinks to work out legally. For instance, should employers have policies about what people say on Twitter when they’re on or off the clock? Should an attorney representing a client try to “friend” an adverse party to get access to statements? Can service of process be affected on Facebook. To be sure, we’re in the gold rush phase of the technology. But the sky is not falling, and if Barbara Boxer can tweet, you’re late to the party.

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