In this digital age, branding is important because your business’ image can be seen anywhere and everywhere.  But what if a business has a famous brand and was also known by a famous nickname?  Is that nickname owned by the business?  Can another business trademark the nickname? 

Here is the story of the Yankees and the “Evil Empire”.  I’m not a baseball fan so I’ve never heard of the Yankees being referred to as the Evil Empire.  I think of Star Wars and Darth Vader’s ominous entry music.  Apparently, the Yankees and a company called Evil Empire, Inc. think there’s a commercial opportunity in the mark “Baseballs Evil Empire”.   When Evil Empire, Inc. filed an intent-to-use application, the Yankees opposed the application based on their claim that they own the proprietary right to the mark and the Evil Empire Inc.’s registration would create a likelihood of confusion because people who would see this name on a shirt would likely think the Yankees are selling it.  And even though the Yankees haven’t used the mark, the public’s adoption of the mark is enough to associate the mark with the brand, a.k.a. the Public Use Doctrine.

In this February decision, the Trademark Trial and Appeal Board (TTAB) recognized the moniker given to the Yankees by the Boston Red Sox as protectable by the Yankees, even though the Yankees never used it in public.  The TTAB is part of the USPTO (link) and decides cases involving trademark applications and oppositions.  It based its decision on the Public Use Doctrine and found that a business may obtain rights if the term is strongly associated with the company.  It found that the use of Evil Empire for baseball popularly refers to the Yankees.

The Yankees were trying to protect their image as well as an image they did not create.  Whether that decision came because they wanted the opportunity to control that image or monetize that image is something only the Yankees franchise will know and we may see in time if, when and how they use the phrase. 

The chance a small business being able to oppose a mark they never used to begin with is small.  The Yankees provided a large amount of evidence showing people referring to the Yankees as the Evil Empire and fans saw the term as a badge of honor.  Both the Yankees and “Evil Empire” as it refers to baseball are both famous marks, which are allowed great legal protection.  The simple take away is that a business brand can own rights to a mark they never claimed or used if the business brand is famous and the mark is famous. 

In March, Facebook published their Asset and Logo Guidelines, which provides strategies for Facebook users in using and marketing Facebook materials.  In the guide, they show various marketing and design techniques such as color combinations for the logo.  The guide clearly states, “Our goal is to make sure Facebook is a brand people can trust.”  It goes on to explain the do's and don’ts of customizing images and modifying screenshots while not infringing on the Facebook look and structure.   The best part?  The guide is to help you, the user, help them communicate their brand effectively.  Isn’t that just genius?!

This got us thinking.  Legally, we usually see companies set up trade secret policies, social media policies, employee policies and the like for internal use only.  Why not create asset and logo guidelines for the public's use?  Whether this is a section in a business plan, social media plan, marketing plan or other method, providing a public plan for your customers and clients to read and follow is a clever idea. 

It provides the following benefits:

1.       Clear guidelines for your customers on how you want your company represented
2.       Provides a good marketing tool for your brand assets
3.       Shows customers you care about how your company is represented to the public
4.       It draws a clear brand picture for new customers

And asset and logo policy would seem helpful to all brand focused companies, which would be almost all companies these days.  Will you be creating one for your business?

Since opening up Pinterest accounts for businesses, Pinterest has been adding tools, like analytics, to help businesses see their return on Pinterest posts.  In this visual social media atmosphere, checking on the analytics of the boards and specific pins can help determine what pins are receiving the most attention.  We are still testing out the business aspect of pinning for The Legal Boutique, but if your business involves providing DIY tutorials and product shots, pinning those shots could be a great way to maximize and repurpose your blog posts. 

Now, this wouldn't be The Legal Boutique blog if we didn't add a legal spin on pinning.  For business pins, make sure it is your original content you are pinning and you are not repinning someone else's content and claiming it to be yours - as similar as the service or product may be.  And given the recent copyright concerns over Pinterest pins and repins, as the pinner you may be responsible for any intellectual property infringement.  On the other hand, if you see others pinning your shots and you find them to be infringing on your intellectual property, see Pinterest's policies on copyrights and trademarks.

This past March, an attorney who used to be a model, Bassil Hamideh (Hamideh) sued Dolce & Gabbana (D&G) for the unauthorized use of his photo taken in an old advertising campaign.  In 2002, D&G hired Hamideh and had him sign a release for the use of his image in various media.  He alleges that the release expired in 2003.  The interesting part of this case is that in 2012, Hamideh had sued D&G on behalf of another model client for unauthorized use of the client’s image in an advertisement.  That
lawsuit was dismissed.  Then, in what Hamideh claims is retaliation, D&G used photographs containing
Hamideh’s image from the 10 year old campaign in a recent Facebook advertisement.  

If you are a photographer, how many images do you have from years before that may strike a cord now? 
It’s possible you could find a gem of a photograph from a trip you took or a campaign you photographed years ago. Keeping good records of the model release and applicable photographs can be crucial if you intend to publish and monetize the work.

The take away: 1) make sure your releases cover anticipated and unanticipated technology and media uses 2) make sure your release is still in good order and effective.

We just uploaded our model release on our Products Page!

On March 16, 2013, the United States moved to the first-inventor-to-file patent system, which means patent priority is awarded to the first inventor who files a patent application. If you’re wondering what the US was using before this, it was the first-to-invent system, which awarded the patent to the applicant who conceived the invention first.  Most other countries use the first-inventor-to-file system and people happy with this change believe it will make the patent process smoother and provide a better guide for the examining officers because this removes the burden of the Patent Office in determining who invented the item first.

To patent something in the US, the invention needs to be “novel”.  The new requirements focus on whether documents or activities existed before the effective filing date of the invention:

1. The invention was patented, described in a printed publication, on sale, publicly used, otherwise available to the public before the filing date.

2. The invention was described and published (per the appropriate guidelines) effectively filed before the effective filing date.

Because of the evidence of prior art, claims may be subject to rejection.  Smaller businesses and inventors worry that this would create a “race to the patent office” to protect ideas and because smaller businesses cannot compete with larger businesses in paying for filings, the system creates an obvious inequality.

An inventor, who publishes his invention or shows it at a conference (i.e. making it publicly available), has an “absolute right to priority if he files an application within one year of his disclosure”.  This grace period allows some protection to the inventor so as to be considered prior art against another patent application, and no subsequent work can defeat the invention.  In any case, filing as soon as possible is key.

As with all new laws, we have to see how this will work over time and whether it will develop into a useful and efficient process.  Look at the USPTO website for additional videos and training materials.

In December 2012, The US District Court in Los angeles decided that Bikram Choudhury's yoga college sequence of 26 poses in a heated room could not be protected under copyright. Though Choudhury had registered the copyright describing the sequence in writing and visual materials, the judge found the copyright protected the expression of the sequence but not the sequence itself.  The court found the yoga poses were not copyrightable as the sequence was merely a "process, system, concept" outside the protection of copyright.  Choudhury had been very aggressive in filing lawsuits against those who used the sequence and style without permission and previous cases had been settled.  This ruling will provide a benchmark for future yogis and performers to consider when they decide to copyright a performance/process.