Overlawyered: Chronicling The High Cost Of Our Legal System

Posts Tagged ‘trademarks’

“The Naked Cowboy versus The Blue M&M”

In a 23-page opinion, Judge Denny Chin of the Southern District of New York ruled yesterday that confectioner Mars inc. did not violate the right of publicity of well-known Times Square entertainer Robert Burck, AKA the Naked Cowboy.

Mars had run a billboard video of its iconic M&M cartoon character in a variety of NY-centric contexts, including one scene in which the character was “wearing only a white cowboy hat, cowboy boots, and underpants, and carrying a guitar–Burck’s regular get-up.

New York’s publicity law (Sections 50 and 51 of the state’s Civil Rights Code) is among the most stringent in the nation, applying to “any recognizable likeness” of a person used in a commercial context, making the win an especially sweet one for Mars. An M&M in underpants and cowboy hat, said the court, was simply not a depiction of Burck.

The court, however, refused to render summary judgment on the Naked Cowboy’s Lanham Act claim of false endorsement, on the grounds that passers-by might confuse the M&M video for the Cowboy’s (somewhat dubious?) endorsement. (Earlier coverage).

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Creatively Challenged

For something like two decades, your computer firm has been known for the cult-like devotion of its followers and its single-button mice, so when it comes time to introduce a two-button mouse, how to placate the hurt feelings of those who’ve spent 20 years arguing that the One Way is One Button? First, it helps if the new device doesn’t actually appear to have two buttons—maybe they won’t notice?—and second, you give it a slightly-deprecating-yet-somehow-still-smug name: “Mighty Mouse” is the all-too-obvious choice and the one that Apple inc., in fact, made.

Don’t assume, just because this is Overlawyered, that Apple is being sued by CBS, which owns the rights to the cartoon superhero—too obvious.

Read On…

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June 7 roundup

  • Monday’s polar bear panel at AEI is a panel about the law of polar bears and the effect of the FWS decision to list them as threatened, rather than a panel featuring polar bears. So no fish will be served. Volokh’s Jonathan Adler will be there, though. [Volokh; AEI]
  • Limiting lawsuit abuses lowers costs from litigation, creates jobs in long run. [Engler & McQuillan @ Detroit News]
  • HBO to small businesses: prepositions are okay, but conjunctions will lead to injunctions. [Baltimore Sun]
  • A one-sided love letter to Cozen O’Connor in the Philadelphia Inquirer over its September 11 litigation is a bit too revealing about its deep-pocket searches: “Cozen lawyers also had to be sure that such a defendant made financial sense, for the firm and its clients.” Culpability, of course, isn’t in the equation; and the newspaper story fails to account for the public-policy implications of having trial lawyers stepping on foreign policy. [Philadelphia Inquirer]
  • Life imitates “The Office”: law firm offers “love contracts” for dating workers. [ABA Journal]
  • More evidence of FDA overwarning, even when the science and law does not justify it. [Kyle Sampson @ Product Liability Law 360]
  • Business tries to bully small website with litigation; small website successfully fights back. [CL&P Blog]
  • “[Ron] Paul accomplished the one thing he’s always been good at: using political appeals to get people to send money. I don’t feel freer.” [Henley via Kirkendall]
  • “It’s infuriating how all three presidential candidates prattle on about the need to fight global warming while also complaining about the high price of gasoline.” [Postrel]
  • Story on Vioxx settlement and Merck winning reversals heavily quotes me. [Product Liability Law 360 ($)]

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Purina vs. “Chow, Baby”

“Three years ago, Purina sent a cease-and-desist letter to Chow, Baby!, a Baltimore area pet supply shop and Web site owned by Robin McDonald, asserting that its use of the ‘Chow, Baby!’ name was likely to cause confusion with Purina’s CHOW trademarks and would dilute the distinctive quality of those marks. … According to the dictionary, ‘chow’ is defined as food, a meaning that dates back to 1860.” (Carolyn Elefant, Legal Blog Watch, May 2). More from Ron Coleman:

But companies such as Purina are not interested in discussing the matter. Brand management isn’t a seminar. They are interesting in executing and maintaining a policy of complete domination of not only their brand equity space, but a comfortable semiotic buffer all around that space to the full extent that they can get away with it. Judges simply do not award fees or otherwise penalize brand owners for overreaching under the Lanham Act, though the Act empowers them to do so (the exceptions are notable and hence reportable). For this reason it is worth it to Purina and companies like it — it is a rational economic and corporate choice — to litigate these cases at the small risk of actually getting to a final adverse judgment regarding a trademark they have no right to anyway, as weighed against the much higher possibility that the other side will surrender $10,000, $25,000 or even $100,000 worth of fees into the process — dollars that are orders of magnitude more significant to the defendant (or declaratory judgment plaintiff) than for a corporation that probably has counsel on a retainer anyway.

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Don’t X

Another bunch of things not to do if you’re a member of the legal profession.

  • Send insulting letters to opposing counsel. (G.F. Pignato, ordered to write an article about civility.) [Legal Profession Blog via ABA Journal]
  • Leave your innocent client in jail by failing to act on new evidence. (William S. Gebbie, surrenders his California license; also accused of stealing client funds.) [ABA Journal]
  • Use the NY Yankees trademark without permission in advertising for asbestos clients. [ATL]
  • Make “jerk-off” motions in court. (Adam Reposa, Texas, sentenced to ninety days for contempt of court; many in blogosphere are appalled at what they call an overreaction.) [ATL; Simple Justice; Mark Bennett and again; and Patterico notes an interesting coincidence]
  • Mock the plaintiffs’ attorney at a jury trial with “Overruled” signs and soccer-style red cards. (Judge James M. Brooks, admonished.) [ATL]
  • As a prosecutor, conceal exculpatory evidence. (Former Sonoma County Deputy District Attorney Brooke Halsey Jr., suspended.) [ABA Journal]
  • And even if you’re a pro se, don’t send a death threat to opposing counsel by fax. [Milwaukee Journal-Sentinel]

Earlier: Feb. 24.

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Update: T-shirts critical of Wal-Mart

Updating our Mar. 29, 2006 post: “Computer store owner Charles Smith has won a two-year legal battle with Wal-Mart, which has demanded he stop making and selling T-shirts and other items with slogans such as ‘Wal-ocaust’ and ‘Wal-Qaeda.’ U.S. District Judge Timothy C. Batten Sr. found that Smith’s products qualified as protected noncommercial speech because his goal was to criticize Wal-Mart, not to make a profit from his products. The judge noted that Smith had sold only 62 T-shirts, including 15 to one of Wal-Mart’s outside law firms.” (Janet L. Conley, “Parody of Wal-Mart Trumps Its Trademark”, Fulton County Daily Report, Mar. 26; Likelihood of Confusion, Mar. 22; Randazza, Mar. 23).

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