Category Archives: Branding

Who Controls Your Likeness? Balancing Right of Publicity and Free Speech

Originally Published in TEXAS LAWYER*

Sharing photos has never been easier. From checking out Ellen Degeneres’ selfies at the Oscars to uploading family vacation pictures, even lawyers don’t always think through how third parties might use their likenesses. But two pending court cases might change that.

Imagine that a photographer allows an engaged couple to post engagement photos online. Then, a political mailer features—without the couple’s permission—a photo of them kissing, superimposed on a new background with the prominent text “State Sen. [XYZ]‘s idea of ‘family values’?” It happens during a heated primary race where gay marriage is a hot button topic, the mailers oppose same-sex marriage, and the newly engaged people are two gay men.

Or, imagine someone learning via Facebook that a full-color, quarter-page advertisement used her likeness and included the statements: “I am positive (+),” “I have rights,” and “People who are HIV positive are protected by the New York State Human Rights Law. Do you know your rights?” By the way, the woman doesn’t have HIV and didn’t authorize use of her likeness.

Both fact patterns are the subjects of current litigation, with the plaintiffs bringing causes of action for misappropriation of the right of publicity and/or privacy.

Colorado common law governing torts for appropriation of name or likeness controls the political mailer case. The law requires a plaintiff to prove that: the defendant used the plaintiff’s name or likeness; the use was for the defendant’s own purposes or benefit, commercially or otherwise; the plaintiff suffered damages; and the defendant caused the damages.

In a March 31 opinion in Hill v. Public Advocate of the United States, the U.S. District Court for the District of Colorado granted the defendants’ motions to dismiss in relevant part; the defendants are all political advocates. The Hill court stated, “[A] plaintiff will not prevail on [an appropriation claim] if a ‘defendant’s use of the plaintiff’s name and likeness is privileged under the First Amendment.’” But the use of the name and likeness must occur in the context of, and reasonably relate to, a publication concerning a matter that is newsworthy or of legitimate public concern.

The court found that the men’s images were used without permission, but the use was not commercial. The use communicated a matter of legitimate public concern and did not issue a call to purchase a product or service. The mailers were sent before an election in a year when gay marriage was a campaign issue. The mailers also went out before Colorado lawmakers enacted the Colorado Civil Union Law, which grants same-sex couples the right to enter into a civil union.

The district court determined that the use of the gentlemen’s likeness reasonably related to a matter of legitimate public concern: same-sex marriage. The court’s balancing act weighed heavily in favor of free speech based upon the timeliness of the mailers. In the end, the First Amendment trumped the individual right of publicity.

Let’s revisit the HIV awareness campaign issue. According to the complaint filed on Sept. 18, 2013, in Nolan v. Getty Images (US) Inc., Avril Nolan alleged that a photographer took her picture years ago for an unrelated project. Nolan never signed a release or license with the photographer to use the picture. Subsequently, the photographer licensed the photo to Getty, a worldwide commercial supplier of images. Getty licensed Nolan’s picture to the New York State Division of Human Rights to place in the AIDS awareness “I am positive(+)” campaign.

In the March 6 New York trial court opinion, the court stated that New York does not recognize the common law misappropriation torts of privacy or publicity. Instead, the rights and cause of action are statutory. Under New York Civil Right Law §50, an entity “that uses for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person … is guilty of a misdemeanor.”

The trial court denied Getty’s motion to dismiss for failure to state a cause of action on March 6. The court found Getty’s action—placing Nolan’s image on its website for viewing by potential licensees—met the statutory requirement of “use” within the state.

Questions to Consider

It’s unclear to me how Getty’s alleged actions violate §50. But what if Nolan had sued the New York State Division of Human Rights? In that scenario, the Colorado federal court’s reasoning in Hill might provide insight. Arguably, the HIV awareness campaign communicated a matter of legitimate public concern, so free speech might trump the right of publicity or privacy.

I wonder if, in either case, it would make a difference if the individuals pictured in the likeness allegedly used without authorization had been famous. Would a “commercial nature” begin to arise if it looked as if a famous athlete or actor was opposing gay marriage or supporting HIV awareness? While the tort of misappropriation applies to people who aren’t famous, the scales balancing First Amendment and right of publicity might tip differently if the likeness used is well-known.

These cases should reminder lawyers to think twice—and perhaps a third time—before posting that next selfie. You just don’t know where it might end up.

Tamera H. Bennett is a trademark, copyright and entertainment attorney and mediator practicing law in Texas and Tennessee as president at Bennett Law Office in Lewisville.

*Reprinted with permission from the April 14, 2014 print edition of Texas Lawyer. © 2014 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited.  Read more: http://www.texaslawyer.com/id=1202650390510/Who-Controls-Your-Likeness%3F-Balancing-Right-of-Publicity-and-Free-Speech#ixzz2zdHbeUxd

Kind Sues Cliff For Trade Dress Infringement

Kind, LLC thinks new product packaging from competitor Cliff Bar & Company is an infringement on the KIND brand trade dress shown above.

Currently Cliff Bar & Company packages their MOJO bar with a half-moon transparent opening.

The proposed new packaging for the MOJO bar has a transparent cover separated by a non-transparent stripe. Kind says the change in packaging is just too close and consumers will be confused.

Click here for a visual of the transformation of MOJO packaging.

Trade dress for product packing and product design may be registered with the U.S. Patent and Trademark Office. Famous trade dress includes the design of the COKE bottle and the “Golden Arches” of McDonald’s.


Venom v. Venom in the Trademark World

NIKE, Inc. might end up in a choke hold in its trademark infringement battle against mixed martial arts clothing brand VENOM.

NIKE has used the trademark VENOM for athletic equipment and apparel since 2002.  And, NIKE has a U.S. trademark registration issued in 2003 for softball bats. NIKE claims common law trademark rights for apparel.

Defendant,  Dragon Bleu SARL, a French company, has a U.S. trademark registration issued in 2011 for VENUM with a snake design for “Martial arts and boxing clothes, namely, martial arts uniforms, shorts, kimonos; Sport shoes, especially for the practice of martial arts.”

And, the venom is spewing in Federal District Court in Oregon as well as France.  Dragon Bleu SARL filed suit in France alleging the NIKE brand of HYPERVENOM is an infringement of the Dragon Bleu brand VENOM.  NIKE responded with the suit in Oregon for trademark infringement, false designation of origin and cancellation of the VENOM with design mark.

Link to the complaint.


Entertainment Law Update Podcast – Episode 47

bennett tamera color close crop Gordon FiremarkFilm/TV lawyer Gordon Firemark and Copyright/Trademark lawyer Tamera Bennett cover a “Motley Crew” of topics this month including trademark, copyright, film and tv legal issues surrounding the “Counting Crows,” “Raging Bull,” “Insane Clown Possee,” and “Sherlock Holmes” …. to name a few.  Click here to listen.


Ambush Marketing – Sochi Olympics 2014

Ambush marketing, the act of a product or service trying to attach itself to a big event without being an official sponsor of the event, is alive and well surrounding the Sochi Olympic Games.

Here’s a round-up of news stories worth a read:

American Apparel Strikes Marketing Gold – The company released a line of “Principle 6″ clothing which includes a variation of language from the Olympic Charter.

Any form of discrimination with regard to a country or a person on grounds of race, religion, politics, gender or otherwise is incompatible with belonging to the Olympic Movement.

The Canadian Olympic Committee thinks a LaBatt beer commercial featuring a large Budweiser blimp designed to look like a hockey goal light, along with scenes of fans in Moscow, is a little too close.  While Budweiser has an affiliation with the US Olympic Committee, LaBatt Brewing Company is not a sponsor for the Canadian Olympic Team.

And, more from the Canadians, they Canadian Olympic Committee sued outerwear/cold weather brand NORTH FACE for launching a line of clothing in Red/White featuring the maple leaf and referring to the clothing line as the “international collection” ready for “village wear.”

Samsung, an official sponsor of the Sochi Games, gave the athletes a Galaxy Note 3. But, there was another “note” included in the gift bag saying cover up logos on any other phone you might be using.  Samsung, like the other 10 official sponsors of the Winter Games, does not want their competitors’ trademarks on display.


Duck Dynasty – What Contract Clause Did Phil Violate? The Morals Clause?

This post is not about agreeing, disagreeing, supporting, or not supporting the comments made by Duck Dynasty Patriarch Phil Robertson.  As an entertainment lawyer, this post is to raise conversations with lawyers and industry professionals on what contractually grounds give A&E the ability to terminate Phil from the Duck Dynasty show.

Phil made public statements regarding his personal beliefs that did not sit well with A&E.  While I do not have a connection to A&E or Duck Dynasty, I do have sample contractual language that may be similar to Phil’s agreement.  Interestingly enough, the language I suspect A&E used to terminate Phil is found in what we entertainment lawyers call a “Morals Clause.”  This is the clause that was used by GILLETTE and other endorsers of Tiger Woods to terminate his endorsement deals when facts about his personal life came to light.

A Morals Clause allows the studio/production company/endorser to terminate a contract when the actor or athlete commits conduct that “casts disrepute on the studio or industry.”

If the Network or Producer becomes aware that Artist has previously committed any such acts or has engaged in behavior that the Network or Producer reasonably determines brings or may bring Artist, Producer, the Network or the Network’s sponsors into widespread public disrepute, scandal or ridicule or which reflects or may reflect unfavorably upon Artist, Producer, the Network or a sponsor, then Producer shall be entitled to terminate this Agreement forthwith by giving Artist notice of termination in writing at any time after the Network or Producer acquires knowledge of such act or conduct.

Termination under the Morals Clause usually occurs when there has been an allegation of criminal or civil charges against the artist or athlete.  Or, in the case of Tiger Woods, many allegations of marital infidelity.

Does A&E have an implied covenant of good faith and fair dealing not to act arbitrarily, irrationally or unreasonably in exercising discretion to execute its termination rights under the morals clause of the contract?  At least one court held recently that invoking a Morals Clause because of a Tweet made by an athlete the brand endorsed was not enough to trigger termination.

Lawyers and industry professionals, please leave your thoughts and comments.  I may delete comments that do not add to the legal conversation.


Charbucks Trademark Does Not Infringe Starbucks

Starbucks Trademark Charbucks Trademark  New Hampshire coffee roaster, The Black Bear, won its 12-year battle against Starbucks, when the Second Court of Appeals confirmed the lower court’s ruling of no trademark infringement.   The district court found no likelihood of consumer confusion between the coffee blend called “Charbucks” and the trademark Starbucks.

Starbucks takes an aggressive stance against potential trademark infringers. I blogged in 2006 about many of Starbucks then on-going cases.  In the Charbucks case, the survey evidence submitted by Starbucks to try and prove a likelihood of consumer confusion, actually worked against Starbucks and the fact finder in the case did not find it persuasive that consumers were confused.


Do I Need A Trademark Lawyer?

trademark Having a trademark attorney on your product or service branding team is key to success.  A trademark lawyer can spot potential pitfalls and help you navigate the complex application and follow-up process with the US Patent and Trademark Office (USPTO).  While anyone can file a trademark application with the USPTO, there are intricacies to 1) determining the strength of your trademark; 2) reviewing how other people might be using the same or similar trademark; and 3) appropriately answering the questions on the trademark application.

A trademark lawyer can advise you on legal issues regarding existing trademark applications, registrations and/or common law trademark rights that may help you save money in the long run.

The job of a trademark attorney is to guide you in selecting  a strong trademark; navigate the application process; counsel you in your options if your trademark application is refused (office action issued); and prepare you for what happens after you secure a registration.

If you are ready to learn more about the trademark application process click here.


Hells Angels Sue Dillard’s and Rapper Clothing Line for Trademark Infringement

Hells Angel Trademark8732 Trademark

The Hells Angels Motorcycle Club’s distinctive brand identifier of the winged skull logo called the “Death Head,” in use by the club since 1948, is the driving force behind a trademark lawsuit against 8732 Apparel, LLC and Dillards, Inc.  8732 is owned by rapper Young Jeezy.

The test for trademark infringement is likelihood of consumer confusion regarding the source of the product.  The first part of the test determines the similarity of the marks.  Removing my trademark lawyer cap and simply looking at these jackets as a consumer: I’m confused.  Even without going through all the steps of the likelihood of confusion test, it looks like HAMC should have a winner.

What do you think?

Link to complaint at www.jdsupra.com.


New Recording Artist Checklist: What Every Artist Should Think About

Music lawyer Tamera Bennett co-presented with music attorney Joe Stallone at the Dallas edition of Grammy GPS on the topic “Legal Considerations for Every Aspiring Artist.”  The 75 minute presentation was fast paced and hit the high points on items new recording artists and folks breaking into the music business should consider.  Below are the four broad areas discussed as well as links for additional information on each topic.

Assembling Your Team

When do you need a manager, an entertainment attorney, a financial manager, publicist?

Get it in writing — Now

Protecting Your Most Valuable Assets: Trademark, Copyright, Right of Publicity

Trademark:

Copyright

  • US Copyright Office
    • There is a copyright in a musical composition; and
    • A copyright in the sound recording of a musical composition.
    • Copyright arises the moment an original works is fixed into a tangible medium of expression.
    • Who will own the songs?  All the members of the band?  Just the members that wrote the songs?
    • Who will own the sound recordings?  The band?  The business entity formed by the band?
    • Will you form a music publishing company?
    • What performance rights organization will the songwriter’s join ( BMI, ASCAP or SESAC ) for collection of public performance royalties of the songs?
    • Has the artist, band, producer, label joined Sound Exchange for collection of digital performance royalties?

Right of Publicity
Separate and apart from the band name and the songs/hits of the band, the band members each have an individual “right of publicity” in their persona.  Who controls that right? The band? The manager?  This is a state law right.  In Texas the right arises under common law, but is descendable by statute.

Paying For Stardom – Financing Your Career

  • Fan Funded Deals
  • Record Deal — A label is advancing the costs
  • Investors

    Texas Music Office

  • The link to the Texas Music Office will provide you a wealth of guidance on getting started in the music business.  The information is not Texas specific.

  • Texas Grammy GPS: Music Business Professional Development

    The Texas Chapter of the Grammy Organization is hosting “Grammy GPS” in Dallas, Texas on Monday, November 1, 2010.

    RSVP

    GRAMMY® GPS: A Roadmap for Today’s Music Biz

    Monday, November 1

    Workshops 10:30 a.m. – 4:30 p.m.

    Trammell & Margaret Crow Asian Art Museum (2010 Flora Street, Dallas, TX 75201)

    Join fellow music makers for a professional development event designed to inform musicians and industry professionals about today’s ever-changing music industry. Enjoy networking and camaraderie during the mixer immediately following the event.

    Workshops Include:

    Legal Considerations For Every Aspiring Artist
    with Texas Music Attorneys Tamera H. Bennett and Joseph Stallone

    Lunch With Chuck Rainey and moderated by Bob Parr

    Booking and Touring Trends with Kris Youmans

    Brave New World: Music In The E-marketplace with Aaron Sainz, Jessica Bailis and Theda Sandiford.

    Networking Mixer:

    4:30 – 6:30 p.m.

    The Screen Door

    1722 Routh Street, Dallas, TX 75201

    Admission (includes lunch):

    Members $25

    GRAMMY U $25

    Non-members $75

    Parking is available at the Trammell Crow Center for $3.

    RSVP BY THURSDAY, OCTOBER 28

    SPACE IS LIMITED

    A GRAMMY professional development event


    Entertainment Law Update Podcast Episode 14

    Dallas Music Lawyer Tamera H. Bennett and Los Angeles  Theater Lawyer Gordon P. Firemark discussed Mockumentaries, Downloads, Licenses, and First Sale issues in Episode 14 of the Entertainment Law Update Podcast.

    If you are a licensed California attorney, CLE credit hours are available.  In most other states, listening to the podcast will qualify for “self-study” cle hours.


    Social Media Marketing Workshop In North Texas

    Women Business Owners of North Texas is hosting a Social Media Marketing Workshop on Wednesday, September 14 from 11 am to 2:30 pm at The Pourhouse Sport Grill located at 3350 Unicorn Lake Blvd., Denton, Texas.

    Click here to RSVP.

    11:00 – Registration

    11:15 – Session One: The Real World of Social Networking for a Small Business

    In this session, we’ll explore

    • The best social media tools and the advantages of using them
    • Being consistent, yet unique – defining your brand and carrying it across the channels

    12:00 – Lunch and Panel Discussion

    During the panel discussion, we’ll answer audience questions as well as questions submitted through our survey.

    12:45 – Session Two: Blogging and Microblogging

    In this session, we’ll explore

    • Setting up a WordPress blog
    • What blogging is and what blogging is not
    • 10 things to consider when blogging- structure, content, etc.
    • Microblogging, a quick definition

    1:30 – Break

    1:45 – Session Three: Making it work in the Real World

    In this session, we’ll explore

    • Time management
    • Tools for using your social media tools effectively

    Our goal is to help those in attendance get answers to their questions and increase their level of knowledge about such topics as blogging, Twitter, Facebook and LinkedIn. What should you participate in and why? How do you go about doing it?

    Plan to be with us and invite anyone you know who may be interested in joining us for this extended meeting event. And the good news is that we are offering the workshop at the regular luncheon cost: $15 for members and $20 for guests with timely reservations.

    RSVP by Thursday, September 9th, for a timely reservation. After that date, add $5 to the meeting cost, i.e. $20 for members and $25 for guests.

    Speakers

    Tamera H.  Bennett, Bennett Law Office, PC

    Louellen Coker, Content Solutions

    Kristy Nolan, Southwest Airlines

    Heather Steele, Blue Steele Solutions


    Dead Celebrities on CBS’ 60 Minutes

    CBS’ 60 Minutes feature “A Living for the Dead” focuses on deceased celebrities right of publicity and strategies for maximizing revenue from the use of name and likeness rights.

    To view the segment and learn more, click here.


    Attorney Tamera Bennett Interviewed on CW33/Dallas Today

    Intellectual property lawyer Tamera Bennett was interviewed today by reporter Giselle Phelps/CW33 regarding the proposed social networking policy for the Lewisville Independent School District (LISD).

    The news broadcast will air at 5pm and 9pm CST, today, June 10, 2010.

    More about this trending topic can be found at the Dallas Morning News website here.  To view the interview click here.


    “Nexus One” Likelihood of Confusion With “Nexus” Says Trademark Examiner

    Google, Inc. received an initial refusal from the U.S. Patent and Trademark Office for its trademark application for “Nexus One” in connection with mobile phones (Serial number 77891022).

    The trademark examiner held  there was a likelihood of consumer confusion between the mark “Nexus One” for mobile phones and the mark “Nexus” for a variety of telecommunication services.

    Here, the applicant seeks registration of the mark NEXUS ONE for use in connection with “mobile phones”.  The registrant uses the mark NEXUS in connection with “providing telecommunication services, namely, transmission of data and voice, and enhanced calling features, namely, conference calling, call forwarding, call rejection, call return, call waiting, caller ID, caller ID block, continuous redial, specialized ringing services, fax overflow services, line hunting, speed calling, long distance telephone service, inbound toll-free service, voice mail, and high-speed access to a global computer network, all of the foregoing excluding providing multiple-user access to a global computer information network for participants in the physical oil industry”.

    Google will have a period of six months to prepare and submit a response to the USPTO.  If Google cannot overcome the refusal, a Final Refusal will issue and Google will have six months from the issuance of a Final Refusal to file any new information and/or an Appeal.

    This is a long ways from being over.

    Attorney Gordon Firemark and I discussed this matter in January 2010 in Episode 8 of the Entertainment Law Update Podcast.


    Michael Jordan Sues Chicago Grocers False Endorsement

    In two separate complaints filed December 21, 2009 in Illinois’ Cook County Circuit Court, Michael Jordan, via his licensing company, alleges two Chicago area grocers violated his right of publicity, engaged in false endorsement, false designation of origin, deceptive business practices, and unfair competition.  The complaint against Dominick’s Finer Foods is here and the complaint against Jewel Food Stores is here.

    The ads were independently created by grocers Jewel Foods and Dominick’s Finer Foods and both were in “celebration” of Jordan’s accomplishments in a 2009 Sports Illustrated issue commemorating Jordan.   The problem really arises from the fact that coupons to be used at the stores are located on a portion of the ad.  Jordan says he never granted permission for either advertisement, and Dominick’s steaks is a conflict of interest to the steak he endorses.

    Jordan has a registered trademark for MICHAEL JORDAN in connection with product endorsements and a registered trademark for 23 (his basketball jersey number)  in connection with restaurant, bar, and catering services.

    Jordan is seeking $5 million in damages from each defendant.


    Counterfeit Items For Charity

    by Tamera H. Bennett

    I just posted over at the Ask Before You Act blog some insight on how/when/why counterfeit items can be donated to charities such as homeless shelters.

    In light of the tragedy in Haiti this week, this may become an even hotter topic as the need for clothing and shoes becomes so apparent for our neighbors in Haiti.


    Entertainment Law Update Podcast Episode 6

    by Tamera H. Bennett

    Once again, my thanks to entertainment attorney Gordon Firemark for asking me to co-host the Entertainment Law Update Podcast.  Episode 6 is available for downloading here. Make sure to take a look at the show notes, which I have summarized below.

    • Noonan v. Staples -  Jury: Truthful E-Mail Sent About Fired Staples Manager Wasn’t Libelous
    • Disney settles with Luxo over the Luxo Jr. Lamp
    • Carly Simon is suing her record label & starbucks over poor marketing of record
    • FTC New Guidelines For Bloggers
    • Vent v. Mars Snackfood U.S., LLC — idea submission case in New Jersey
    • The Weinstein Co. v. Smokewood Entertainment: Decision reached in “Push” case regarding writing required to transfer exclusive rights.
    • Jon Gosselin has countersued TLC
    • California’s new anti-paparazzi statute
    • Beatles music catalog finally available online.. but is it legal?
    • Radio Station liable for wrongful death of contestant
    • ASCAP lost Public Performance lawsuit on ringtunes; ASCAP and BMI may bring case for Public Performance in film/tv downloads
    • Copyright Termination of Transfers under §203 and §304.
    • Celebrity Identity Theft with guest Samantha Rothaus.

    Lawyer Tamera H. Bennett on FaceBook

    Come “Fan” us over at FaceBook.  Here’s a taste of our posts….
    Bennett Law Office, PC/Tamera H. Bennett

    Up Close & Personal with Richard Perna Music Publishing Essentials: An Insight Into Copyright, Licensing, Royalty Collections, & Marketing
    Time:5:00PM Wednesday, October 14th
    Location:The Loft, 1135 S Lamar St. Dallas, Texas 75215 http://www.theloftdallas.com/directions.php
    Bennett Law Office, PC/Tamera H. Bennett

    Bennett Law Office, PC/Tamera H. Bennett The Soundtrack Album is back. Twilght, 90210, Greys Anatomy ….

    Source: latimesblogs.latimes.com
    Remember that awesome opening scene in this season’s premiere of “90210”? It was the music that made that scene for me. Iconic, retro, youthful – everything you’re supposed to feel as the gals stripped to their bathing suits and jumped…
    Bennett Law Office, PC/Tamera H. Bennett

    Bennett Law Office, PC/Tamera H. Bennett Singer Songwriter Carly Simon Sues Starbucks alleging “concealment of material facts,” “tortious interference” with contract, and “unlawful, unfair and fraudulent business
    practices.” All because album sales were lower than anticipated.

    Broken trust, men misbehaving, women trying to recover these sound like themes from a Carly Simon song. But this time Ms. Simon was telling a story about her most recent record.

    Bennett Law Office, PC/Tamera H. Bennett

    Bennett Law Office, PC/Tamera H. Bennett Paul Anka Gets Credit For Song Co-Written With Michael Jackson. Anka is co-writer of song and owns music publishing interest.

    Up to the minute breaking news from the world of music, from the editors of Rolling Stone.

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