Have you worked hard to develop and maintain a brand name or online presence for your business? Would you care if somebody used that brand to promote porn?

Tomorrow is the last day you can opt-out from having your business's name or mark being registered as a .xxx domain name — .xxx is the forthcoming top-level domain dedicated to the global adult entertainment industry.

For example, if you are the proud owner of the Hair Club for Men company, which has its website at www.hairclub.com, and you fail to opt-out of the .xxx domain, you leave the door open to someone else registering the name www.hairclub.xxx. Imagine the fun that they could have with that domain name! It costs only $300 to opt-out, and recovering your name after it's already registered could cost thousands (or worse, it may be unrecoverable).

For more information on opting out, refer to ICM Registry, the company responsible for bringing us the .xxx domain.

Who knew that the word tweet wasn't even owned by Twitter? Apparently, since 2008, a little-known advertising agency named Twittad has owned the exclusive rights to what has become a household phrase.

Twitter has finally laid its hands on trademark rights to the word “tweet,” but the case provides yet another lesson in why companies have to nail down intellectual property rights early on.

This is a valuable lesson to be learned from what may at first seem funny or trivial. Although some might liken Twittad's registration of tweet to a variation of cybersquatting, the relevant standard here is bona fide use in commerce, which Twittad was able to demonstrate.

Here's a situa ... uhhhm, I mean a circumstance where the opposite is true: Instead of paying the actor or show to showcase their product, the teeny, fratty clothing purveyor Abercrombie & Fitch has offered Mike "The Situation" Sorrentino a substantial amount of money to refrain from wearing A&F gear.

For nearly two decades, A&F has made billions by exploiting teenaged and young twenty-somethings' six-pack abs, which also happens to be Sorrentino's self-proclaimed calling card. (He actually tried to get trademark protection for his abs, but fortunately the USPTO thought better or it.)

I disagree with those who are quick to call this a mere publicity stunt for A&F. This was a strategic decision by Mike Jeffries (A&F's CEO) to dissociate from the raunchy, douchebag image perpetuated by Sorrentino and the reality show. It's just Jeffries' eccentric way of policing the Abercrombie brand.

Policing your brand goes hand-in-hand with trademark protection, because those who fail to police their brand/mark end up losing it altogether. Most of us are too young to remember that aspirin was once a brand-name drug.

Sorrentino's people haven't said whether they're considering A&F's offer, but regardless of whether he takes the deal, doesn't this set a dangerous precedent for the future? Is Glock going to pay Plaxico Burress to switch to Smith & Wesson? Are the Yankees gonna pay wannabe-thug rappers to don Red Sox lids instead? Instead of paying Sorrentino not to wear A&F clothes, why not send him a cease and desist letter, on the basis that he is disparaging their brand? Even if Abercrombie were to lose that fight in court, it would send a strong message that they do not condone or endorse the lifestyle portrayed by Sorrentino and his goombahs.

Here's a little background on the subject matter involved in the infringement claim. In the beginning of the world wide web, developers and code writers figured out early on that they could trick search engines into driving traffic to their sites by embedding their competitors' names and keywords in the metadata of their own websites. This practice may have been effective in the short run, but the search engines quickly figured out what was happening, and modified their search algorithms to ignore the metadata, which was easily manipulated, and to instead focus on the real (i.e., visible) content on webpages.

But when Google sells its AdWords advertisements, it effectively allows whatever company is the highest bidder to jump to the top of Google's search list whenever a websurfer searches for certain (purchased) key words. (For more on how Google AdWords works, see the Frank & Catalina article.)

What the latest appeals court decision does is place different emphases on the factors that courts use to determine whether any infringement has occurred:

Given the nature of the alleged infringement here, the most relevant factors to the analysis of the likelihood of confusion are: (1) the strength of the mark; (2) the evidence of actual confusion; (3) the type of goods and degree of care likely to be exercised by the purchaser; and (4) the labeling and appearance of the advertisements and the surrounding context on the screen displaying the results page.

Although the court's decision appears to draw a line in the sand that is more liberal than what's been the rule, it's probably too soon to call the proverbial floodgates open. First, this ruling is just from one circuit court of appeals; until the U.S. Supreme Court rules on the issue, one way or another, other circuits are free to distinguish (or even disregard) the Ninth Circuit's holding. Something else to keep in mind—this was not a trial on the issue of trademark infringement; the only issue before the Ninth Circuit was whether it was appropriate to grant a preliminary injunction, which places a higher burden on the aggrieved party than that in a full trial.

The issue is that trademark law—which is set forth in the Lanham Act of 1946 (Title 15 of the United States Code)—does not afford exclusive protection for marks (terms, phrases, etc.) that are merely descriptive, which, arguably is the case with BigLaw and SmallLaw. When a mark is deemed merely descriptive, the mark's owner can only get protection of that mark if it has acquired secondary meaning. Secondary meaning "denotes an association in the mind of the consumer between the trade dress or name of a product and a particular producer.”

In the lawsuit, Lawyerist claims that at least seven other legal websites use the terms BigLaw and SmallLaw, and if that's the case, it would seem that the marks are not worthy of trademark protection. Having said that, this is a situation in which you should weigh the pros and cons of making a federal case out of something. Why? Because it's expensive, and because there isn't much upside if you win. If the court invalidates Technolawyer's trademarks, there isn't a recognizable monetary benefit available to Lawyerist. And on top of that, they will spend hundreds of thousands in legal fees to achieve that result.

Lawyerist seeks the following relief:

a. A declaration that Lawyerist’s use of the phrase―small law‖ and the terms SmallLaw and BigLaw does not infringe on PeerViews’s trademarks;

b. Cancellation of the trademarks SmallLaw and BigLaw;

c. Costs of litigation and reasonable attorney fees; and

d. Such other and further relief as this Court deems just and proper.

NB: Just because Lawyerist asked for the court to award them attorneys' fees doesn't mean they'll get it. This is a situation where just because you can do something, that doesn't mean that you should. If I were counsel for Lawyerist, I would probably have advised them to sit tight, and wait to see whether Technolawyer files an infringement suit against them. (I don't subscribe to the old adage that it's always better to be a plaintiff than a defendant.) My position could be different if I were only interested in generating revenue for my law practice. The irony is that you would think that a bunch of attorneys would be insightful enough to figure this all out on their own.

The United States Patent & Trademark Office (USPTO), in Washington, D.C. has temporarily foiled Sarah Palin's plans to receive trademark protection for her name. (See U.S. Trademark Application No. 85170226 pdf file). The reason for the agency's disposition: She (or her attorney) forgot to sign the application. Seriously? That sounds like a WTF moment to me.

Registration is refused because the applied-for mark, SARAH PALIN, consists of a name identifying a particular living individual whose consent to register the mark is not of record. Trademark Act Section 2(c), 15 U.S.C. §1052(c).

According to Reuters news, Thomas Van Flein—the attorney who filed the trademark applications on behalf of Sarah and Bristol Palin—has been relieved of his services with the Alaska law firm of Clapp, Peterson, Tiemessen, Thorsness, Johnson, LLC. At the time of this posting, Van Flein's bio was still on the firm's website, but could only be accessed using the URL http://www.akcplaw.com/thomasvanflein.asp. Reuters reported that attorney John Tiemessen has assumed control of the matter. Neither Tiemessen nor Van Flein are noted as having any experience in trademark law, though I'm not sure that trademark experience would have prevented the obvious error in the Palins' USPTO applications.

Actually, there was another reason that the USPTO denied the application. You can't get trademark protection arbitrarily, because you have a good idea (regardless of whether it's original), or because you figured out how to send in the application and filing fee. Part of the reason for this is that the policy reason for trademark protection isn't so much about the owner of the mark, it's to protect consumers from the likelihood of confusion with regard to the source or purveyor of goods and services. This is a whole topic in and of itself, but what it means is that trademark protection is only afforded to those who demonstrate bona fide use of the mark in the ordinary course of trade. Quite simply, the Palins failed to show any bona fide use in their trademark application:

In this case, the specimen submitted for the “Information about political elections” is a news story on the Fox® Network about Ms. Palin. The specimens submitted for the “Providing a website featuring information about political issues” are postings on Facebook®. The specimen does not show use of the mark as “providing a website featuring...” Rather[,] the proposed mark merely appears as a posting name...

 

None of these specimens show use of the mark SARAH PALIN in relation to the services specified of “Information about political elections” and “Providing a website featuring information about political issues."

The Palins have 6 months to amend their application, and resubmit it to the USPTO together with another filing fee. If they don't, the trademark office will deem the mark(s) abandoned. No word on whether the Palins intend to sue their former attorney for malpractice—however, if they do decide to sue, their current attorney specializes in professional malpractice (conflict of interest notwithstanding). It is also unknown whether Levi Johnston, Bristol Palin's somewhat estranged former fiancé, is also seeking any kind of trademark protection—for his name, or his "junk."

Follow-up: Jury Awards Professors $5M in Defamation Suit Against West

No surprise here; West Publishing has filed a motion to set aside the jury's $5,000,000 verdict in the case brought against them by the two law professors whom West defamed by selling books bearing the professors' names, which contained out-of-date and erroneous statements of law. West claims that:

(1) There was no evidence to support the jury's finding of actual malice;

(2) There was no evidence that anyone understood that the book in question was defamatory to the professors; and

(3) The damages were excessive.

To my knowledge, the story is only available on www.law.com, which requires a subscription (and it ain't cheap). I have, however, attached a copy of West's motion here in pdf format: West's Memorandum of Law. West filed this motion with the trial court, which tolls the time during which West can file an appeal to the Third Circuit. (See Fed. R. App. P. 4(a)(4)(A)).

Obviously, I haven't read the transcript of the trial proceedings, but even so, it's difficult for me to believe that West will win. The reason being the legal standard that the trial court must apply to determine whether West's arguments have any merit:

If a party has been fully heard on an issue during a jury trial and the court finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue, the court may:

(A) resolve the issue against the party; and

(B) grant a motion for judgment as a matter of law against the party on a claim or defense that, under the controlling law, can be maintained or defeated only with a favorable finding on that issue.

Fed. R. Civ. P. 50(a)(1) (emphasis added).

Basically, this means that the trial court has to view all the evidence in a light most favorable to the other side (i.e. the professors), and can only set aside the jury's verdict if that evidence is legally insufficient to support the verdict. It does happen, but it's a very high standard nonetheless.

I'm not convinced, however, that the trial court won't reduce the jury's award, and I say this for a couple reasons: First, $5,000,000 is a hell of a lot of money—far more than these professors make in several years (if not their entire careers); and second, the amount is grossly disproportionate to the amount of money that West profited from the books in question.

If the court does reduce the award, it's likely that both sides will appeal, but what often happens is that before the case would be decided by the appellate court, the parties agree to settle the case. This type of settlement often benefits both sides because the plaintiffs—who probably aren't filthy rich, but by the looks of them, aren't getting any younger, and can probably use the money before Brett Favre makes it into the hall of fame and then un-retires—get some compensation much sooner than they would if they wait for all the appeals to play out. And it benefits the defendant because they don't have to spend even more money fighting the case, but at the same time, they get off without paying the professors the full amount owed.

The case of David Rudovsky & Leonard Sosnov v. West Publ'g, No. 2:09-cv-00727-JF is scheduled for a hearing on the motion(s) before U.S. District Judge John P. Fullam on February 10th (pdf of hearing notice).

For everyone who says that juries aren't giving out mega-verdicts anymore, here's your exception: Last week, a federal jury in Philadelphia gave a $5,000,000 early X'mas present to a couple law professors in a defamation suit.† (Jury's Verdict pdf file).

Outside of legal contexts, the term defamation gets thrown around a lot, and although many people know what it is, most non-lawyers do not know what it takes to win a defamation lawsuit. In reality, defamation suits aren't very common, because they are in fact difficult to win. Why? Because the plaintiff must prove all of these elements:

(1) the defendant made a false & defamatory statement (if the statement was printed it is libel, an oral statement would be slander);

(2) to a third party;

(3) knowledge that the statement was false (or in some cases, merely negligence about the statement's truthfulness); and

(4) damages, or special harm that was caused by the statement.‡

Since 1987, the two professors, David Rudovsky (Penn. Law) and Leonard Sosnov (Widener) were the authors of the treatise Pennsylvania Criminal Procedure: Law, Commentary & Forms, published by West, but after they got into a dispute with West over royalties and compensation, they withdrew from the project. See Complaint (pdf file). But after the authors withdrew, West went ahead and published an update (aka "pocket part") which is supposed to contain important changes and updates to the laws that are the book's subject matter. Also, West continued to list Rudovsky and Sosnov as the authors. The problem was (in addition to using the authors' names without their consent) that the update West published omitted material changes in the law, and basically made the purported authors look like imbeciles.

The authors sued the legal publishing giant for (1) false advertising, under the Lanham Act; (2) unauthorized use of name, under Pa. state law; and common law claims for (3) defamation; (4) invasion of privacy/appropriation of name; and (5) false light. The trial court ultimately dismissed the first 2 claims, but the jury rendered a verdict in the authors' favor on the defamation and invasion of privacy claims. It seems likely, however, given the enormous resources of West Publishing and its parent company is Thomson Reuters this case is probably headed to the Third Circuit Court of Appeals, where West will argue that the punitive damages award is grossly disproportionate to the compensatory damages.

†Credit: Erika Wayne, of The Legal Intelligencer first reported this story in her blog, which has additional case history and details.

‡ See Sheldon W. Halpern, The Law of Defamation, Privacy, Publicity, & Moral Right: Cases and Materials on Protection of Personality Interests 4th ed., 6 (JPM Books 2000).

And in 2005, fantasy sports league operator CBC Distribution filed suit against Major League Baseball Advanced Media (MLBAM, MLB's Internet division) after CBC was denied a new licensing agreement with the players' association giving it the rights to player profiles and statistics.

MLB argued that the league owned intellectual property rights in the players' right-of-publicity, which made it unlawful for fantasy leagues to profit from the identities or statistics of MLB players. In 49-page order granting summary judgment to the fantasy league, U.S. District Court Judge Mary Ann Medler said that even if the league did have intellectual property rights in the players' stats and likenesses, the First Amendment trumped the league's property interest, because the information that the fantasy leagues disseminate are facts. Facts, Medler, wrote, appear in newspapers everyday. Nobody can own them. (CBC v. MLBAM pdf file)

Paul Weiler's textbook Sports and the Law (see previous post) is nearly 1200 pages long, yet it devotes fewer than 100 pages to sports and IP law. In fact, in that single chapter of the book that addresses IP, Weiler tackles broadcast rights, copyright ownership, player publicity rights, trademarks, and group marketing of IP rights. By contrast, the book has three chapters on antitrust, two on labor relations, and even has a full chapter devoted to Title IX and intercollegiate sports. But because of how every sports franchise, conference, and league is continuously exploring how to increase the revenue earned from their branding and intellectual property, IP law, will nonetheless continue to impact the sports world for many years to come.

So what about entertainment law? I realize that I just devoted three entire posts to explain sports law, and even though this is the Sports & Entertainment Law Playbook, I haven't so much as mentioned entertainment law. Again, there is no such body of law per se, though there are so-called entertainment lawyers. I happen to be one of them. Like sports and the law, there are many different areas of law that intersect with the entertainment industry, although IP is probably the most prevalent. Artwork, sheet music, and sound recordings all need copyright and in some circumstances, trademark protection. Also, composers routinely license their scores and compositions to filmmakers and advertisers. This process inevitably involves attorneys. And just like professional athletes, artists, actors, and musicians work under contracts as well, and they also need competent legal counsel to represent their interests during negotiation. The record companies, opera houses, and concert promoters are certainly going to come to the table with the best attorneys that money can buy, so it behooves the artist to also come prepared.