Publications

Trademark infringement occurs when a third party uses a mark in a way that infringes upon a trademark owner’s exclusive right and use of a trademark. Often, the third party will use a similar mark in a way that confuses consumers as to the source of the goods and services. For example, a fast food restaurant named “Wendi’s” would likely cause confusion with “Wendy’s.” Trademark infringement can occur only when it is likely that consumers will be confused as to the source of the goods. The purpose of this article is to examine the test and factors that courts use to determine if such infringement exists.

Many courts have developed a balancing test to determine if a mark infringes on another. This balancing test has largely grown from the seminal case Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2nd Cir. 1961). In that case, the court identified several variables to consider when assessing if a mark is infringing on another mark. This balancing test seeks to determine if consumers would likely be confused as to the source of the marks. If the test favors that confusion would likely result, then the court will likely rule that infringement exists. On the other hand, if confusion is unlikely or minimal, the court will likely rule against infringement.

The following are factors used by courts to assess the possibility of trademark infringement by looking at the likelihood of consumer confusion. Not one of these factors is dispositive to the issue of consumer confusion, and each factor must be examined in the context of the ultimate likelihood of confusion.

The first factor the court will look at is the strength of the marks in question. The strength of the marks is determined by distinctiveness of the mark. The more unique and distinct the mark, the more likely the mark will be protected against junior users. On the hand, the more descriptive and generic the mark, the less protection courts will provide to these marks. For example, the mark KODAK will receive more protection than a similar product that uses the mark FAST PHOTO.

Another factor examined is the similarity between the marks. Similarity of marks is tested based on sight, sound and meaning. The marks will be considered in their entirety to determine any similarities. A mark that looks different from another but gives off a similar commercial impression might be considered similar and thus weigh in favor of confusion. For example, a trademark that consisted of the word MONEY might be confused with the mark $$$ because the marks have similar commercial impressions.

The courts will also look at the proximity of the goods in the marketplace. This test relates to the channels of trade used by the goods. The more related the goods the greater the likelihood that they would exist together in the marketplace. Similar marks that are also are related would likely cause confusion as to the source of those goods. Highly related goods are more likely to cause confusion compared to unrelated goods.

The above three factors weigh heavily in determining likelihood of confusion. A mark will not be found confusingly similar with another mark if the two are not found similar in one of these areas, and the complaining mark is considered a weak mark.

After reviewing these, the courts will examine the likelihood that the prior owner will “bridge the gap” in the marketplace. This factor addresses the possibility that a mark will expand into other product lines. The more likely expansion will occur, the more likely consumer confusion will exist.

Next the courts examine evidence of actual confusion. When a case is brought to trial, the evidence is usually in the form of consumer surveys done by the parties. Survey evidence of this nature is often critical in determining likelihood of confusion in infringement cases.

The courts will also look to the sophistication of the buyers of the goods or services to determine likelihood of confusion. Courts have found that sophisticated buyers, such as those who have expertise in a specific area, are less likely to be confused by similarities in marks. In addition, courts have held that consumers of goods and services that are expensive exercise a higher degree of care in making these expensive purchasers. For example, a consumer would exercise a higher degree of care when purchasing a car compared to when that consumer purchases a piece of candy.

The last factor courts examine in a trademark infringement case is the intent of the defendant. If the defendant copies an existing trademark in bad faith to capitalize on that trademark’s goodwill, the courts will lean in favor of finding infringement. The likelihood of confusion, however, is the main consideration in determining infringement regardless of intent. If an individual copies a mark that does not lead to consumer confusion, the courts will likely not find infringement.

The above are not a rigid set of factors used by the courts. Most jurisdictions use some form of the above factors to determine if a likelihood of confusion exists. Regardless of the different variations, courts ultimately are seeking to discover if marks, as they are used in commerce, cause consumer confusion and lead to trademark infringement.

Last October I had the good fortune of being invited to attend my friend’s “man shower” in Las Vegas. What made this trip interesting was the fact that this all guy’s version of a baby shower would be the subject of an episode of the VH1 reality TV show “Scott Baio is 46 and Pregnant.” While there are a number of interesting stories that came out of this first and only man style baby shower, the “what happens in Vegas stays in Vegas” rule prohibits me from telling you any. However, the tales fit for this article comes from my observations of the numerous, IP issues that came up during our two days of shooting.

As regular readers of my articles may know, part of my practice includes representing independent motion picture and reality television producers. While I have been production counsel for a number of movies and reality television shows, most of my work occurs before the cameras ever roll. Part of this work involves working with the production staff and preparing them to deal with those issues that may arrive when shooting in an environment you don’t entirely control. However, being on set and having to identify issues on the fly (especially when the person identifying the issues is not a lawyer) is very different from engaging in theoretical and hypothetical discussions.

Shooting on an existing location presents a number of complex and interesting IP issues. Where the location is the floor of the Hard Rock Casino as it was in the VH1 show, this makes it even all the more interesting. The first issue is dealing with the crowd; not from a logistic standpoint, but from a right of publicity standpoint.

Most states provide some type of protection of an individual’s right of publicity. In California, Civil code section 3344 and 3344.1 protect against the use of another’s name, voice, signature, photograph or likeness in connection with a commercial activity without consent. There are a number of ways production companies deal with crowds and securing the right of publicity. First, if the production company is dealing with a controlled location and is able to cast extras to play in the crowd, the extras would sign some type of agreement. In addition to items such as the extra’s fee, this agreement would contain certain language resulting in a grant of the extra’s right of publicity to the production company. This situation is more common for my motion picture production company clients.

My reality television production company clients do not enjoy the benefit of controlling all aspects of their shoot. It’s reality television, which usually means dealing with a live set and a crowd of ordinary people. If the shoot is such that the group of people being photographed is relatively small, the production company will usually get those who appear on camera to sign a standard appearance release. Depending on who drafted the release, it could have a variety of different language. However, most appearance releases grant the producer the right to make use of the subject’s image, likeness appearance, voice or musical performance in the form of one or more photographs, video images, sound recordings, illustrations or other media for any and all programs, advertisements, promotions, product endorsements and any and all other uses relating to promoting, advertising, marketing, selling and/or exploiting the subject television show, and all ancillary products related thereto, including but not limited to “out takes,” and “making of” specials.

Where the production is dealing with a very large crowd, the producer will post a number of large signs stating that filming is in progress and to vacate the area if you do not want to be videotaped, photographed, or recorded. The notice will also usually state that your presence within the filming area constitutes consent to be recorded and portrayed in connection with the television program and that you expressly authorize and permit the use of your name, voice and likeness and all reproductions thereof for any purpose whatsoever throughout the world, in perpetuity, in any and all media, and without limitation and without any compensation whatsoever. I am unaware of any case where a person challenged the validity of such a notice; usually people are thrilled to be on TV.

The “more complex issues” which arise during an on-location shoot usually involve the inclusion of a third party trademark or copyright protected material into the program. When shooting on location, the production company will have the owner sign a location release. In addition to photographing the interior and exterior of the location, location releases usually also include the right to photograph and use the owner’s name, logo, signs, marks or slogans, as depicted in, on, and/or about the location in connection with the production, exhibition, advertising and exploitation of the television program. What’s usually not included in the location release is the right to photograph third party trademarks which may be incorporated into signs or goods on or about the location.

Case in point, the VH1 production crew shooting the Baio show at the Hard Rock casino had to deal with scenes that were shot in a bar on the casino and in a diner. In those shots, they had to deal with Hines® mustard jars, Budwiser® beer bottles and neon signs for all types of beverages. While the production crew had obtained permission to shoot at the Hard Rock, that permission did not, and could not, extend to include third party brands such as these. The serious risk is that the brand owner may object to its mark being used in the television show and threaten to sue for trademark infringement. (15 USC 1125(a) – Any person who, on or in connection with any goods or services… uses in commerce any [mark]…which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.) So, producers hide product labels or peal them off bottles, move or cover signs, and, if that doesn’t work, blur them out in post production.

Works subject to copyright protection also offer interesting challenges. Paintings, photographs, background music or a television playing in the background all present problems. These works fall under Copyright law, and the owner of the copyright enjoys the following exclusive rights:

(1) to reproduce the copyrighted work in copies or phonorecords;

(2) to prepare derivative works based upon the copyrighted work;

(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; and

(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly. (17 USC 106)

For example, if a producer accidentally includes recognizable background music in a segment and does not secure the necessary rights, this would infringe on the copyright owner’s exclusive rights. This may or may not result in a lawsuit, but it certainly would cost the production company an little more to secure the necessary rights than it otherwise would have cost had the rights been cleared in advance.

There are a multitude of other complex issues that arise in the production of a television show or motion picture, which explains the proliferation of lawyers that practice entertainment law.

As 2008 gets underway, its time for companies to take a fresh look at how they manage intellectual property assets. This applies to companies that have never taken serious steps to protect intellectual property, and those companies that have an understanding of the value of intellectual property and take active steps to secure and protect these assets. The three steps below are a good starting point for companies addressing this issue for a first time, and are a well needed refresher for companies that already have IP management protocols in place.

Step No. 1 – Know Your Inventory

Intellectual property is a company asset, just like inventory. You wouldn’t think of running a company where you didn’t know the extent of your inventory. Likewise, it doesn’t make sense for a company not to have a firm understanding of all of its potential intellectual property assets. Even companies that regularly take steps to protect intellectual property through, for example, registering trademarks, or registering copyrights, a yearly review can prove beneficial. Sometimes marketing departments and independent divisions spin out valuable intellectual property assets that, for one reason or another, never made it past the desk of general counsel or a responsible executive.

You would want to review your company’s marketing and promotional materials, and website for trademarks, logos, or slogans that the company is using with frequency. If these trademarks have not been cleared, be sure to read Step No. 3 below on preventing unintended liabilities. You would also want to look at domain names and toll free numbers, which may also serve as potential trademarks. If your company has changed its product packaging, point of sale displays, or product design, these may also be protectable trade dress. In order for the above to constitute trade dress, the packaging, or product design would have to be more than merely functional.

You would also be wise to take stock of the company assets protectable under the federal copyright laws. For example, a company’s website, marketing materials, manuals, promotional videos, software, articles, white papers, etc. are all protectable under the federal copyright law. Although you may ultimately decide that the cost benefit of securing protection is such that registration does not economically make sense, the company should at least maintain inventory of its copyrightable works.

In addition, a company needs to be mindful of any new inventions that were developed by the company or its employees during the last year. Such inventions may be protectable under federal patent laws. However, unlike copyright or trademarks, an inventor must secure a patent application within a very short period of time in order to prevent the work from falling into the public domain. Companies that routinely produce new inventions should put into place a process which enables inventors to disclose a potential invention to a responsible executive well prior to the invention being disclosed to the general public.

In addition, a company should take stock of those items that it considers proprietary trade secrets. Trade secrets are items not generally known by the public but have economical value and are the subject of reasonable precautions to maintain their secrecy. In general, trade secrets have no duration of protectability and there is not a method for registering a trade secret in the United States. Items that may be protected by state trade secret laws include software source code and related documentation; customer lists, employee knowledge, training and experience; proprietary terminologies or definitions; specially developed customer information; sales practices; negative information such as negative results from research and development projects; and customer and consumer surveys. Each of the above could constitute proprietary trade secrets depending upon whether its owner took reasonable steps to maintain its trade secret status. (See Step No. 2 – Taking Steps to Protect Intellectual Property.)

In addition to employee created and company created intellectual property, a company should take stock of its inventory of intellectual property acquired by way of contractual agreements. For example, a company should review agreements with its employees and make sure that these agreements have proper assignment language and confidentiality provisions. In addition, the company should review items that were developed or created through the use of independent contractors, such as photographers, web developers, software developers, advertising agencies, graphic artists, production companies, and the like. If the company intended to own all of the rights, including any intellectual property rights, in the works created by these independent contractors then the agreements with these independent contractors should have proper intellectual property vesting language – such as work made for hire language or an assignment provision. If the company’s agreements were only verbal or did not contain such language, then the company needs to make another resolution: make sure you own the intellectual property you paid for.

Step No. 2 – Take Reasonable Steps to Protect Your Intellectual Property

After you have created a working intellectual property inventory list, the next step is to identify those items that are already the subject of active protection efforts (i.e. pending or issued registrations) and those that are not. Then, the company executives, along with corporate counsel and if appropriate outside intellectual property counsel, should review the list of unprotected intellectual property and determine whether taking steps to secure their protection make economic sense. Sometimes, a company might find that the cost to secure protection of an intellectual property asset outweighs the potential economic value of that asset or that protection would be mostly duplicative of another item which is already protected. However, companies should take advantage of the intellectual property protection that costs less to secure. For example, securing copyright registration and trademark registration can be substantially less than securing patent protection. Most often, copyright protection is the least expensive intellectual property protection to obtain and the benefits of securing such protection prior to an act of infringement far outweigh the cost of securing the cost of filing the copyright registration application.

Step No. 3 – Prevent Unintended Liabilities

A fair number of clients who become involved in disputes involving intellectual property rights find themselves on the receiving end of a cease and desist letter. Although most don’t intend to infringe, often the infringement occurs either through poor oversight or lack of prior due diligence or investigation. For example, most often in trademark disputes the potential defendant adopts and begins using a mark without having a trademark attorney perform a trademark search. Most of the time clients believe that if a Google web search did not uncover any conflicting references, they are home free. This is not the case. Google does not pick up entries in the federal or state trademark databases, or in the multitude of other proprietary databases that a full search would encompass. A trademark search performed by an experienced trademark attorney is the only way to go when it comes to clearing a mark for use.

Other unintended liabilities result from the company’s interaction with independent contractors that have been hired to create something for the company. Whether it is a web designer hired to redesign a company’s website, a graphic artist hired to create a new logo or artwork, or a copyrighter hired to write content for company’s documents, a company needs to remember that in the past these types of vendors have been known to take shortcuts and “borrow” from existing sources. Unless a company executive is closely managing these professionals when they do their work, it would difficult to determine whether or not they engaged in acts that may be considered infringement until such time as the company receives a cease and desist letter. However, there are precautionary steps a company can take to prevent unintended liabilities. A company should always have written agreements with vendors such as these which unconditionally requires them to indemnify the company for any claims of infringement resulting from the works they were hired to create. Additionally, a company should require these vendors to carry insurance that would provide coverage for such a claim (either E&O or professional liability insurance) and that the company be named an additional insured on the policy. Lastly and most important, the company should have a general understanding of who they are doing business with. A little time spent researching whether the vendor has negative claims with the Better Business Bureau, has licensing issues, generally has satisfied customers, whether there are any lawsuits pending, etc., can tell a company quite a bit about the work habits and ethics of any potential vendor.

Lastly, a company should take a careful look at its data collection practices and make certain that its policies comply with a existing data management laws. There have been some changes in existing laws and the passage of new laws concerning the management of consumer data and companies should make sure that its policies are in line with today’s requirements. If not, a company could potential face both civil and criminal liabilities depending on the circumstances.

These steps are part of good IP management practices. It is always the easiest thing to settle back into the routine that we have always known. However, there is a substantial benefit to taking a fresh approach to IP management, and the benefit can drive directly into a company’s bottom line.

Last week, the Second Circuit affirmed a summary judgment against an advertising consultant in a suit against American Express. The consultant, Stephen Goetz, sued American Express for misappropriation and trademark infringement for the slogan “My Life, My Card” that Goetz claimed to have introduced to American Express. The court affirmed the summary judgment stating that Goetz never actually used the slogan in commerce. Since Goetz never used the slogan in commerce, he had no trademark rights in the mark.

In the summer of 2004, Goetz worked as a consultant for Mez Design. While at Mez Design, Goetz formulated an idea to allow credit card customers to personalize their credit cards by choosing a photograph to be displayed on the face of the card. Goetz then developed software to produce these cards with the idea of selling or licensing the software to credit card companies. After developing the software, Goetz mailed proposals to large credit card companies, including American Express. In these proposals, Goetz prominently displayed the slogan “My Life, My Card.” On July 30, 2004, Goetz mailed a proposal to American Express.

In addition to sending out these proposals, Goetz created an internet-based demonstration of his concept. The website also prominently displayed the slogan “My Life, My Card.” On September 7, 2004, Goetz registered the domain name www.mylife-mycard.com, and he also filed an application to register his trademark with the United States Patent and Trademark Office. Although American Express never expressed interest in the concept, MasterCard replied to his proposals. MasterCard viewed Goetz website which included the slogan “My Life, My Card.”

During this same time period, American Express was searching for a new global advertising campaign. They hired an agency which was brought in to develop the new campaign. On July 22, 2004, a week before Goetz sent his proposal, the agency proposed the slogan “My Life. My Card.” to American Express. American Express pursued the idea and asked the agency’s counsel to conduct a full trademark search on the slogan. This trademark search did not produce any results that referenced Goetz. American Express proceeded with the campaign, and on September 1, 2004 they registered the domain name www.mylifemycard.com. On September 15, they filed an intent to use application for the trademark “My Life. My Card.” A few months later, the global campaign featuring numerous celebrities was launched on television, print and internet ads.

Shortly after American Express’s campaign began, Goetz filed an action claiming that American Express infringed his trademark rights. The court in that case dismissed Goetz’ claims because Goetz had no protectable trademark rights in the slogan because he did not use the mark in commerce. Goetz also did not dispute the fact that American Express independently developed the slogan. Goetz appealed the ruling to the Second Circuit and argued that he was the first to use the mark in commerce based on his sales proposals to several credit card companies. This included his presentation to MasterCard. Goetz argued that since he used the slogan in commerce before American Express, he is the senior user of the mark.

After hearing these arguments, the Second Circuit affirmed the previous ruling. The court held that under the Lanham Act, a trademark or service mark is “any combination of words, names, symbols or devices that are used to identify and distinguish goods or services and to indicate their source.” On the other hand, copyright law protects the content of the creative work. A trademark identifies the source of the product and does not protect the creative content of the product. For example, a title of a song or movie may be a trademark, but the content of the song or movie is not. The court noted that an advertising agency that creates a slogan does not have a trademark in that slogan. The slogan is the agency’s creative work and does not usually identify the source of goods and services of that agency. The slogan, however, can become a trademark for the company that uses the agency’s slogan on their goods. Until the slogan is used by the company in commerce, it will not become a trademark.

Goetz, however, claims that his slogan was used in commerce by Mez Design where Goetz was employed. The court disagreed. The court stated that “My Card, My Life” slogan did not distinguish the goods of the advertising agency. It is merely the creative work of the agency. The court examined the facts of the case and found that Goetz never used the slogan in commerce to sell his agency. Rather, he used the content of the slogan as part of an overall campaign to sell the credit card company’s products. The court found that the slogan never referenced the agency nor Goetz himself. In fact, each letter contained the Mex Design logo. This logo identified the source of the services of the agency. The slogan was merely the creative work of the agency, and was used to entice credit card companies to use his services.

Because Goetz never used the slogan in commerce as a trademark, Goetz had no protection from trademark laws. The slogan was the creative work of Goetz and did not identify his services. Goetz could pursue his claims under copyright law, but since he did not argue against the fact that both slogans were created independently, he would not be able to show such infringement.

By Andrea Anapolsky

The “work made for hire” doctrine is a major exception to the fundamental principle that copyright ownership vests in the person who created the work. The significance of this doctrine is that, as the copyright owner of the work, an employer will own all exclusive rights to the work and may freely commercialize the property to its fullest extent. This article examines the provisions and case law underlying the “work made for hire” doctrine and provides some practical advice for employers when hiring an independent contractor or an employee who may create an original work during the course of the parties’ relationship.

The U.S. Supreme Court first recognized the “work for hire” doctrine as early as 1903, when it held that copyright to certain advertisements created by an employee during the course of his employment belonged to his employer. (Bleistein v. Donaldson Lithography Co., 188 U.S. 239 (1903)). The courts did not truly examine the meaning of “ownership” of a work “for hire” until the Copyright Act codified this doctrine, which defines the word “author” as including “an employer in the case of works made for hire” (17 U.S.C. ¬ß 26). Accordingly, an employer may claim to be the “author” of a work under one of two prongs: first, if the work is prepared by an employee within the scope of the employee’s employment; and second, if an independent contractor and employer agree in writing that the work created by the independent contractor shall be considered a “work made for hire”.

When determining who owns a written work, the first question to ask is whether the creator of the work falls under the employee prong or the independent contractor prong. Generally, if the creator of the work is an employee, it is presumed that the employer owns the copyright. Any unease under this prong rests on whether the creator was an actual employee of the employer. The U.S. Supreme Court resolved much of the tension underlying this issue in 1989, in Community for Creative Non-Violence (“CCNV”) v. Reid, which involved a dispute over ownership of a sculpture commissioned by a nonprofit organization. (CCNV, 490 U.S. 730 (1989)) The Court held that the artist was an independent contractor and not an employee since the sculptural works did not fall within one of the nine specific categories of “commissioned” works listed in the Copyright Act, and no written agreement between the parties existed. In reaching this conclusion, the Court examined the common law agency principles, which include: (1) the hiring party’s right to control the manner and means of creation, (2) who provided the materials and tools, (3) the skill required by the hired person, (4) the location of the work, (5) the length of the relationship between the parties, (6) how the hired party was paid, (7) who hired and paid assistants, (8) whether the work is part of the regular business of the hired party and (9) the tax treatment of the hired party. CCNV has been viewed as a major legal victory for independent contractors in that creators who produce work at the request and expense of a third party do not necessarily give up their copyrights in the process. For hiring parties, it stands as a warning that the hiring party does not automatically own the copyright just because they paid for the commissioned work.

If the creator of the work is not an employee, then three requirements of the independent contractor prong must be satisfied in order for the hiring party to own the original work. The requirements are: (1) prior to the commencement of the work, the parties must agree in writing that the work shall be considered a “work for hire”; (2) the work must have been “specially ordered” or “commissioned” by the employer; and (3) the work must fall within at least one of nine statutorily mandated categories of commissioned works listed in the Copyright Act. The nine categories include: using the work as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas. (17 U.S.C. ¬ß 101). An original must fall into one of these nine categories; otherwise a “work made for hire” provision in an agreement does not always result in a work becoming “for hire.” A novel, for example, can never be a work made for hire because it does not fall into one of these nine categories.

To avoid problems concerning copyright ownership with independent contractors, the hiring party should always reduce its intentions to writing, and include a provision in the written agreement which contains a clause stating that the work created by the independent contractor is considered a “work made for hire.” The agreement should also contain a “back up” clause which states that in the event the work does not qualify as a “work made for hire”, the employer may obtain the exclusive rights to a copyrightable work created by an independent contractor through an assignment.