Monday, October 30, 2006

Viral Marketing As Implied License?

"Let's be bad guys!" -- Jane Cobb in Serenity

As first reported on Whedonesque, and later picked up (and apart) by the likes of Slashdot and Instapundit, the legal team at Universal Studios Licensing have fired up the C&D machine and taken aim at fan-created merchandise related to the late, lamented television show Firefly and the excellent movie it spawned, Serenity. A fairly routine story on first glance, but there's a bit more to it. Prior to Serenity's release, Universal carefully cultivated the existing Firefly fanbase and actively encouraged them to spread the word about the movie, not only via websites and message boards, but through the creation of home-brewed Serenity merchandise. Indeed, the official Serenity web forum had a sub-forum (now offline) where fans were encouraged to offer their creations for sale. The fans' efforts were moderately successful in generating buzz, and while Serenity suffered a rather tepid theatrical release it's done quite well on DVD.

Despite the fact that the film's underperformance likely killed any thoughts of a sequel, the fans have kept the flame burning, and the unlicensed merchandise flowing. Someone at Universal decided that had to stop, and out went the letters demanding, in some cases, retroactive licensing fees upwards of $9000. Returning fire in rather inventive fashion, the fans who feel that whatever success the movie saw rested in large part on the back of their viral efforts are now billing Universal for their time, to the tune of $1.7 million thus far.

It's unlikely the people on the wrong end of the C&D will take the fight to court, of course. This is unfortunate, as I expect discovery could uncover some very interesting information regarding the creation and development of viral marketing campaigns. And from the defendants' perspective, were it revealed that Universal, either directly or through some marketing agency, did actively encourage Firefly fans to put Universal's IP to use, perhaps they might claim they had an implied license to make limited use of those properties to further the marketing campaign. If so, they might even argue it was a naked license, as it appears Universal let the fans run wild for the past few years -- from the months leading up to the film's release through today -- without exercising any control over the nature or quality of the Serenity-related products they were producing. This is an off-the-cuff analysis, of course, but it bears further examination given the increasing use of professionally organized viral marketing campaigns. Any comments that might expand on the topic would be welcome.

Legalities aside, I won't even bother delving into the obvious "don't bite the fans that feed you" discussion. That lesson has been taught many times over by now, though companies like Universal seem to be slow learners.

Whedonesque has the latest.


Saturday, October 28, 2006

Sold! The Right To Be A Litigant

WSJ Law Blog reports from the Ocean Tomo IP auction.

Regarding the the Jimi Hendrix lots:

It’s a high-risk purchase: Hendrix’s catalog is currently the subject of a bitter legal dispute between Jeffrey’s estate and the Hendrix family. Jeffrey, who died in a plane crash in 1973 just three years after Hendrix died, left his estate to fourteen U.K. charities. But Hendrix’s heirs claim they own the rights to Jimi’s music and yesterday, a spokesman for the family told Reuters, “Whoever bought this bought themselves the right to be a litigant.”


Wednesday, October 25, 2006

POS and Post-Sale Confusion

Counterfeit Chic on why explicit disclaimers included with counterfeits at point-of-sale do not protect sellers from liability.


Thursday, October 19, 2006

Windows Vista EULA Analysis

Wendy Seltzer analyzes parts of the Windows Vista EULA.


Wednesday, October 18, 2006

Steve Wynn on Art, Literally

Retinitis pigmentosa, a sharp elbow, and a Picasso worth $139 million.


New Massachusetts Tax Regs. for Computer Products

On October 6, 2006, the Massachusetts Department of Revenue released regulations that cover the Commonwealth's tax treatment of computer products, including software and hardware. The regulations contain hypothetical examples as a guide.


Tuesday, October 17, 2006

Truth About Fakes

A brief report by IPFrontline from the International AntiCounterfeiting Coalition's annual fall conference in Dallas.


Ringtones are Phonorecords

Please note the date of the article linked to in the previous post below. The Copyright Office has decided that compositions used for ringtones may be subject to a compulsory license. RIAA rejoices. Publishers call their lawyers. Commentary from Prof. Patry. As Prof. Patry notes, the Register's rejection of Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (9th Cir. 1988) could have implications well beyond ringtones.


Compulsory Licenses for Ringtones

Responding to a RIAA request, the Copyright Royalty Board is asking the Copyright Office to issue an opinion on whether a publisher must license a composition for ringtones under a compulsory license.


Monday, October 16, 2006

Logo ID Quiz

Logo ID quiz. (via Metafilter)


Saturday, October 14, 2006 (Not a Cybersquating Story)

Universal Tube & Rollform Equipment Corp. receives some unexpected attention. About 68 Million hits worth.


Wednesday, October 11, 2006

IP in the Kitchen

Claiming copyright in recipes is only the beginning. This article in the November issue of Food & Wine discusses recent attempts by chefs to protect their intellectual property.

It’s an image of cheerful pink cotton candy printed on a tiny sheet of edible paper that tastes like cotton candy. The paper measures roughly two-by-2.75-by-zero inches[.] The truly historic feature of Cantu’s two-dimensional treat is the legal notice printed beneath the cotton-candy image:

Confidential Property of and © H. Cantu. Patent
Pending. No further use or disclosure is permitted
without prior approval of H. Cantu.

[Cantu] has already filed 12 applications for patents, including one detailing the process for making cotton-candy paper, and says there are more to come.

Cantu may talk to his lawyer more often than John Gotti, Jr., does. Together they have filed patent applications for a fork that adds flavor to food and a polymer box with walls that, once heated, retains enough energy to cook a fish filet.

Cantu requires almost everyone who enters his kitchen to sign a four-page nondisclosure agreement. He says he runs background checks on some potential cooks to make sure they’ re culinary school graduates and not corporate spies, and he uses caller ID just in case that party of two looking for a table next Thursday night is phoning from Burger King headquarters. Cantu says his closed-door policy mainly applies to big business. He’s generally happy to talk techniques with fellow chefs. Sometimes, though, even they can’t be trusted.

Moto, where Cantu is the chef, certainly plays up the novelty of his approach to IP protection. Commentary from megnut. I can't believe that Ferran Adria of El Bulli fame is not mentioned in the Food & Wine article. Ferran Adria article from February 2005 Food & Wine. There was also a great episode of Anthony Bourdain's No Reservations which featured Adria.


Monday, October 09, 2006

The Branding and Marketing of Rosa Parks

Branding Rosa Parks. (via The Trademark Blog). In case you were wondering why CMG is based in Indiana:

While California's statutes are perhaps the most debated right of publicity laws due to their visibility, the distinction of having the most comprehensive right of publicity statute to date belongs to the State of Indiana. Indiana enacted its statute in 1994, which is considered by many to be the most broad and sweeping of the right of publicity statutes. Indiana's law protects a deceased individual's right of publicity for a period of 100 years. Ind. Code Ann. §§32-36-1 et seq. (Michie 2002).

I should point out that under IC 32-36-1-8 the term of protection is life plus 100 years. The question that inevitably arises in CMG litigation is which state's law should apply.


Project Posner

Project Posner: The Judge Richard A. Posner search engine. Via Boing Boing.


Sunday, October 08, 2006

Branding Non-Profits

Tips on marketing a non-profit brand.


Saturday, October 07, 2006


The news keeps getting worse for Leo Stoller.


Thursday, October 05, 2006

Trademark Law Can Be A Grind

The maker of In-Sink-Erator garbage disposals files complaint against NBC alleging that the depiction of the shredding of a character's hand on the pilot episode of the NBC series "Heroes" "implies an incorrect and dangerous design for a food waste disposer" and paints the device "in an unsavory light, irreparably tarnishing the product, Emerson's In-Sink-Erator trademarks, and the associated goodwill."

Matt adds: Emerson says the scene "suggests that Emerson's In-Sink-Erator brand food waste disposers will cause debilitating and severe injuries, including the loss of fingers, in the event consumers were to accidentally insert their hand into one." Quite frankly, I'd be shocked if anyone who saw that scene (as I did) didn't think the girl's injuries were the expected result of her actions. Is Emerson officially taking the position that jamming your hand into a running disposer won't cause severe injuries? Anyone care to test that?

The Motley Fool takes a stab at why NBC's use of the IN-SINK-ERATOR mark makes a difference: In contrast with peer broadcasters like CBS or ABC, both of which can generally be described as "entertainment" businesses, the GE conglomerate owns numerous non-entertainment businesses. Crudely put, these other businesses "make stuff." That stuff competes with other companies' stuff, and so when GE depicts its competitors' stuff in a negative light, it leaves itself wide open to lawsuits for unfair competition.

Although interesting, the Fool article certainly is not a legal analysis. The complaint may have been filed regardless of the network as part of the policing procedures of the plaintiff. The Fool mentions trademark fair use but does not even give the briefest explanation of what fair use entails. The seems to be a common problem, writers mentioning "fair use" and leaving readers to invent their own definitions. In this case it is not crazy to think that there was sponsorship or affiliation between plaintiff and defendant. Here is a fairly concise summary of trademark fair use.


Tuesday, October 03, 2006

7th Cir. Gray Market Goods/Material Difference Case

IP Legal Lounge reports on a recent Seventh Circuit decision regarding the "material difference" test for gray market goods. Even where marks are affixed with authorization, if the goods are produced for a foreign market and reimported into the US by a third-party, the importation may violate the Lanham act when the domestic and foreign products are materially different. Previously.


Monday, October 02, 2006

Brent Musberger Discloses Trade Secrets?

USC complains that Brent Musburger revealed privileged quarterback signals during broadcast.


Grosso Goes Bust

In this post, we noted that while the 9th Circuit's decision in Grosso would likely lead to more implied contract claims brought by screenwriters against movie studios, the success rate of those claims was still in doubt. And as of now, the screenwriters are batting zero. Grosso himself lost in state court, and barring some appellate heroics, Miramax is off the hook for using his script to develop Rounders. Hollywood Reporter Esquire examines what this might mean for the future of the implied contract claim, with emphasis on the question of just who exactly is left to sue?


Tips for Spotting the Fakes

The always excellent Counterfeit Chic on spotting fakes on eBay.