Duke v. Duke

The Daily Mail (UK) has this article about a trademark infringement lawsuit filed by the family of the late Hollywood legend John Wayne. The Wayne family wants to trademark the “Duke” name and image to sell specialty bourbon, since John Wayne was known for years as “the Duke.” But Duke University objects to the Wayne family’s proposed trademark. It will be interesting to read Duke University’s response (if any), but based on the Wayne family’s complaint, the Wayne family appears to have a strong case that their proposed trademark should be granted, since it’s in a different context (international class, in trademark lingo) than Duke University, and consumer confusion would be unlikely.

If my law firm, Johnson Law KC LLC, can help you with your copyright, trademark, or IP litigation needs, call me at (913) 707-9220 or email me (steve@johnsonlawkc.com) for a complimentary, convenient consultation.

(c) 2014, Stephen M. Johnson, Esq.

Washington Redskins’ Trademark Cancelled – Deja Vu?

So reports the NYT on a decision by the Trademark Trial and Appeal Board (TTAB, in trademark lingo). Some Native American groups filed a lawsuit to cancel the NFL team’s long standing trademark (dating to 1967 and 1990) by alleging that the mark disparages people, or brings them into contempt or disrepute. And that Court said yes, the trademark is disparaging to Native Americans, so it should be cancelled.

Trademark Law 101

By way of background, U.S. law grants trademark protection to marks (e.g. logos, slogans, pictures, or phrases) used continuously in the stream of commerce in a particular context by someone in a distinctive way. So if you have a logo or slogan that you use on your website, business card, letterhead, company shirts or hats, or other items, you can get a limited monopoly (a trademark) to use that logo or slogan, and prevent others from using it in the same context or other contexts where it would be confusingly similar to an average person. (Note confusingly similar is different from the parallel copyright and patent law infringement standards.) Protected trademarks are labelled “TM” or “®” and service marks (usually slogans) are labelled “SM.” International trademark protection arises under a different, but related legal regime. Individual states also offer trademark protection, for substantially less cost than U.S. trademarks, but state protection only applies within the state’s borders.

No Trademark Protection/Canceling Trademarks

But trademark protection can’t be granted for marks that are immoral or scandalous, that disparage people, or that bring people into contempt or disrepute. IP lawyers have read the (amusing) cases and seen the pictures of various logos and slogans that didn’t make the cut. This decision indicates that the controversy over the NFL team’s name and alleged disparagement of Native Americans may be percolating into making race or ethnic background into a category of banned trademarks (the previous challenge of the Redskins’ trademark appears to be the first trademark cancellation for race or ethnic background). That may be a positive trend – Americans probably don’t want someone trademarking a neo-Nazi logo or a racial slur. It may also reflect a new legal cause célèbre (over other, less worthy or socially sympathetic causes) – one can’t easily imagine a group of pirates winning a disparagement lawsuit to cancel the Captain Morgan’s Rum trademark. The Founding Fathers (or modern politicians) couldn’t trademark mud slinging logos or slogans attacking their opponents. But how far do we go? Canceling a trademark is a step towards curtailing or banning products or manifestations of people’s free speech and press. And the Courts (and American people) have traditionally taken a broad, liberal view on free speech and press.

Stare decisis

Canceling a trademark 24-47 years after the U.S. trademark protection was granted raises a precedent or reliance question. Was the mark always disparaging or scandalous or casting a bad light on people? If it was originally ok, when did it go bad? Have people come to recognize and rely on the mark as a sign of bona fide goods or services (e.g. authentic NFL apparel, a professional football team, etc)? Canceling a trademark a generation after the fact begs the stare decisis question – Latin/legalese for “let the decision stand,” respect for precedent. Courts are reluctant to overrule previous decisions just because a party says (or even proves) they got the law wrong before. Law requires stability and order, which you don’t get if you reverse or change every bad legal decision ever made. In several high profile cases, the Supreme Court has refused to overrule a decision that was admittedly bad law because people had come to rely on it. Other times, the Court will overrule a case because things have changed or the old case burdens rights or liberties. Does a similar principle apply to trademarks and consumers? Should it?

Déjà Vu and Appeal

As the article notes, the Washington Redskins’ trademark lawyer anticipates appealing the ruling, and he says this is déjà vu – they’ve been there, done that on trademark cancellation some years ago. And even if the trademark is cancelled, the team could still use the name, logo, and other manifestations of the mark – they just wouldn’t be protected under federal law from infringement (e.g. unauthorized use by others), which could cause confusion for consumers.

This KC Business Journal article explores the implications for the Chiefs, our hometown NFL team. Forbes has this article. KCUR, KC’s NPR affiliate, had this report. UCLA Law Prof. Eugene Volokh had this analysis. And The Wall Street Journal and NYT have dueling editorials – NYT and WSJ.

My law firm, Johnson Law KC LLC, has experience working with individuals, companies, and nonprofits on state and federal trademarks. If I can help you navigate the waters of trademark law, give me a call (913-707-9220) or email me (steve@johnsonlawkc.com) for a free, convenient consultation.

(c) 2014, Stephen M. Johnson, Esq.

Photographer Wins Copyright Lawsuit

The NY Times Lens blog has this report of a Haitian photographer (Daniel Morel)’s victory in a copyright lawsuit for willful copyright infringement of 8 pictures Mr Morel took during the Haiti earthquake and published over social media. 4 years ago, Morel sued Agence France-Presse and Getty Images for copyright infringement. Mr Morel said he pursued his case “because someone had to fight for photographers.” Mickey Osterreicher, the National Press Photographers Association’s general counsel praised the jury verdict and damage award ($1.22 million) as a victory for “photographers’ rights in the era of social media.” “Like anything of value, people need to ask permission, give credit and pay fair compensation for those images,” he said. “And when they don’t, photographers need to be able to stand up for their rights.” And he added: “far too often we find that photographers don’t have the power to stand up to those that infringe with impunity. I hope that this sends a message, but in reality we need a cultural change so that once again photographs are valued.”

If my law firm, Johnson Law KC LLC, can help you or your company protect your photos, art, or other creative work, call (913-707-9220) or email me (steve@johnsonlawkc.com) for a convenient, free consultation. My firm is experienced at helping clients navigate the complex twists and turns of IP law, while adding value to clients’ creative arts and IP, and provides friendly, affordable counsel for your legal needs.

(c) 2013, Stephen M. Johnson, Esq.

Vintage digital photography

The LA Times has this roundup in its Framework section of new vintage-inspired entries in the digital photography market. As an amateur photographer, my main camera is a Canon EOS T3 DSLR. Some years ago, I inherited a Nikon F (circa 1960s) from my grandparents, including a separate electric flash and multiple lenses. It’s interesting how the vintage designs are re-emerging with digital flourishes. What’s your favorite vintage camera? How about digital photography?

If my law firm, Johnson Law KC LLC, can help you or your company protect your photos, art, or other creative work, call (913-707-9220) or email me (steve@johnsonlawkc.com) for a convenient, free consultation. My firm is experienced at helping clients navigate the complex twists and turns of IP law, while adding value to clients’ creative arts and IP, and provides friendly, affordable counsel for your legal needs.

(c) 2013, Stephen M. Johnson, Esq.

Judge Posner on Patent and IP Litigation

I’ve always had a fondness for patent and IP law, as my late grandfather, Don Johnson (1921-1992), was a patent attorney and partner for many years with a boutique IP law firm (now Hovey Williams LLP) in Kansas City. (While I read history instead of electrical engineering in college, I enjoyed pursuing my IP passion with numerous IP, copyright, music, and digital IP classes at KU Law.)

Judge Posner (7th Circuit Court of Appeals in Chicago) recently gave this interview on patent and IP litigation, focusing on patent damage and remedy issues. While Judge Posner doesn’t have a technical background (he read English at Yale, graduating Phi Beta Kappa), he often has keen legal insights. Many areas of law have benefited or been clarified from the information tsunami flowing from his prodigious pen. Judge Posner’s interview showcases his formidable intellect, his common sense/pragmatic approach, and his seamless interweaving of real life examples and abstract legal ideas.

About the time my grandfather retired from his law firm, Congress authorized the Federal Circuit (sitting in Washington D.C.), to hear patent law appeals. Patents (and copyrights and trademarks) are governed primarily by federal law, with some state law counterparts for copyrights and trademarks, and international components in our increasingly globalized world. The U.S. Patent and Trademark Office handles all trademark registrations and patent applications. When litigation arises, the case goes to federal court. Most federal cases go to a (regional) federal court of appeals – so Kansas cases go to the 10th Circuit (in Denver), while Missouri cases go to the 8th Circuit (in St. Louis) – but patent law often hinges on technical scientific and engineering issues (prior art adds a dimension of complexity to precedents) and is rapidly evolving as the state of the art advances, so Congress set up the Federal Circuit (made up exclusively of patent attorneys) to hear these complex appeals. Every year or two, a Federal Circuit case arrives at the U.S. Supreme Court for the Justices to analyze an IP issue with constitutional implications (e.g. can you patent a human gene?). Posner’s remarks touch on a wide range of questions running the gamut of the patent law process, from the early stages – R&D, what should be patentable, etc – and the later stages – patent appeals, enforcement and exploitation of patent portfolios, varying degrees of vigorousness in prosecuting infringement, etc.

If my law firm, Johnson Law KC LLC, can help you or your company with your IP needs – copyrights, trademarks, related litigation, or patent litigation, call (913-707-9220) or email me (steve@johnsonlawkc.com) for a convenient, free consultation. My firm is experienced at helping clients navigate the complex twists and turns of IP law, while adding value to clients’ creative arts and IP, and provides friendly, affordable counsel for your legal needs.

(c) 2013, Stephen M. Johnson, Esq.

How Lawyers Write

Legal writing is a required course for all 1st year law students. Yet for all the emphasis on tight, logical argumentation, pithy style with comprehensive analysis, and its application in most lawyer’s practice and judges’ work (often on a daily basis), lawyers are notoriously horrible writers. Lawyers invented legalese and are pilloried (rightly so) for using phrases like “such,” “said,” “hereintofore,” etc. No one (including lawyers) wants to read or interpret the small print or endless legalese warnings we’ve grown accustomed to seeing in daily life. Yet lawyers continue to use legalese like it’s going out of style.

Here’s Scott Turow, acclaimed novelist and attorney, on how he writes, courtesy of The Daily Beast. And here’s Louis Auchincloss, the late estate planning attorney and author of many novels about old money New York society, on his writing techniques. Enjoy.

If my law firm, Johnson Law KC LLC, can help you or your company with your IP needs – copyrights, trademarks, or related litigation, call (913-707-9220) or email me (steve@johnsonlawkc.com) for a convenient, free consultation. My firm is experienced at helping clients navigate the complex twists and turns of IP law, while adding value to clients’ creative arts and IP, and provides friendly, affordable counsel for your legal needs.

(c) 2013, Stephen M. Johnson, Esq.

How Judges Write

The Daily Beast has this interesting interview with Judge Richard A. Posner (7th Circuit, Chicago) about his writing habits. Lawyers and judges are familiar with Judge Posner’s legendarily prolific output (dozens of books and over 2,000 published opinions), covering many legal, economic, and political subjects. Posner is an intellectual polymath, a sort of Isaac Asimov meets lawyer with a day job on the federal court of appeals. He is the most cited legal scholar of the 20th century. He regularly blogs with Nobel Laureate Dr. Gary Becker (Chicago) on various topics. Whatever one thinks of his jurisprudential views and legal philosophy (pragmatic libertarian), Posner’s work has had a dramatic effect on the law, legal writing, and the rise of the “law and” movements (law and economics, law and literature, law and race, etc). Judge Posner co-founded the law and economics or cost-benefit analysis of law movement from the University of Chicago’s Law School, where he has been a faculty member (first a professor, now a senior lecturer) for decades. Posner fans and critics alike agree that when Posner retires from the bench, he will be remembered alongside Judges Learned Hand and Henry Friendly as one of the most brilliant, prolific, and influential judges of his time.

If you’re a writer, artist, inventor, or otherwise enjoy creative expression and the creative arts, you need to protect your intellectual property. If my law firm, Johnson Law KC LLC, can help you or your company with your IP needs – copyrights, trademarks, or related litigation, call (913-707-9220) or email me (steve@johnsonlawkc.com) for a convenient, free consultation. My firm is experienced at helping clients navigate the complex twists and turns of IP law, while adding value to clients’ creative arts and IP, and provides friendly, affordable counsel for your legal needs.

(c) 2013, Stephen M. Johnson, Esq.