Seattle Trademark Lawyer

These last few years, the Seattle Seahawks have been good. Really good. And the Sounders, too. Here’s to a lot more of that!

With the rise of our teams’ success, I get more of the same type of question. It focuses on whether local craftspersons can incorporate team names, logos, slogans, and/or colors in their handmade clothing, cakes, beer labels, and art. It’s to celebrate team pride; it’s to give the people what they want; and it’s to make a buck.

So what’s ok, and what’s not ok?

The answer turns on trademark law. Names, logos, slogans, and even colors tell consumers where goods and services come from. By incorporating these indicators into a product, an artisan risks misleading purchasers into thinking the goods are made by the team, are licensed by the team, or are approved by the team. Mistaken consumer assumptions hurt the team because it doesn’t profit from the sale, it doesn’t have a say in how its brand is used, and because bad-quality or inappropriate goods could hurt its reputation.

For practical purposes, small-time producers probably can fly under the teams’ radar. But that doesn’t mean it’s legal for them to wrap up their products in a team’s brand without permission.

The more a craftsperson takes from the team’s image — particularly its name and logo — the more likely he or she is to infringe the team’s trademark rights. As long as you’re selling goods or services, you’re subject to trademark laws. So, you shouldn’t be surprised if you hear from your favorite team if you use their brand without permission.

The same is true if you take your favorite athlete’s name. Natural persons often have extra rights against use of their names, likenesses, and signatures for commercial purposes without their permission, thanks to “personality” rights laws.

Artists are often exempt from these concerns. As long as the artwork contains a minimum amount of artistic embellishment, the First Amendment usually trumps trademark and personality rights protections. But regular folks who want to sell crafts on Etsy or in front of the stadium: you probably can’t “borrow” from your favorite team without stepping on its toes.

I’m now back from Germany, where I traveled to help with a program sponsored by the University of Washington School of Law.

It combined UW law students with law students from Europe. The Europeans learned about American intellectual property law, and the Americans learned how they do things in Europe.

I spoke on two topics: “look and feel” protection under U.S. trademark law, and right of publicity under U.S. law. These issues come up from time to time in my practice, so they may be of interest to trademark owners.

The takeaway for “look and feel” protection: distinctive elements of product packaging, store interiors, or product design can be protectable under trademark law as “trade dress” if together they tell consumers where the product comes from. In other words, if they function the source-identifying role that trademarks play.

However, there are two big caveats. First, the elements can’t be functional. If they serve a useful purpose, they can’t be protectable under trademark law (though they could be protectable under patent law). Second, if they are part of the product themselves, the owner must prove that they have acquired secondary meaning, meaning that over time consumers have come to associate the trade dress (such as the product color, shape, or style) with a particular producer. Until that happens, product features can be freely copied.

The most important thing to know about right of publicity protection is that some states — including Washington — have statutes that protect against the commercial use of a person’s name, likeness, and voice without the person’s permission. The First Amendment is the biggest exception to such protection. The press can do most anything it likes without fear of liability. So can artists — as long as the artist embellishes the literal image of a person enough to transform it into a work of art (regardless of whether the art is good or bad, flattering or critical). Almost everyone else needs the person’s permission before making use of their “personality” in marketing a product.

My slides are available here (look and feel) and here (right of publicity).

Celebrities’ right of publicity claims are stronger than their Lanham Act claims, the Ninth Circuit recently found. At least in some situations.

On July 31, the court decided two cases former football players brought against Electronic Arts, Inc. The players argued the video game publisher featured avatars that many users would recognize as depicting them, without their permission.

In one case, former college quarterback Samuel Keller, representing similarly-situated former college football and basketball players, argued the use violated his right of publicity under California state law — the statutory right to stop the unauthorized use of his likeness for commercial purposes.  In the other, former pro football great Jim Brown focused on the federal Lanham Act, arguing that use of avatars with his likeness was likely to confuse consumers into believing the players had endorsed EA’s games.

In the Keller case, EA filed a motion to strike under California’s statute against Strategic Lawsuits Against Public Participation, arguing its use of Keller’s likeness was protected by the First Amendment. The Ninth Circuit affirmed the district court’s finding that EA’s use was not constitutionally protected as a matter of law. It instead applied the “transformative use” test the court had applied in earlier right of publicity cases, finding that EA’s use of Keller’s likeness was the reason why consumers would purchase its games — not because its artistic expression had transformed his likeness into something akin to an expressive work of art.

The court concluded: “Under the ‘transformative use’ test developed by the California Supreme Court, EA’s use does not qualify for First Amendment protection as a matter of law because it literally recreates Keller in the very setting in which he has achieved renown.”

In the Brown case, similar facts yielded the opposite result. Due to a different claim for federal jurisdiction. Brown relied on the Lanham Act rather than a state claim for right of publicity.

That difference made all the difference. As a Lanham Act claim, the court applied prior precedent adopting what’s known as the “Rogers” test. Under that test, Lanham Act claims “will not be applied to expressive works ‘unless the [use of the trademark or other identifying material] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the [use of trademark or other identifying material] explicitly misleads as to the source or the content of the work.’”

Applying that test, the court affirmed the district court’s dismissal of Brown’s claim.

“As expressive works, [EA’s] Madden NFL video games are entitled to the same First Amendment protection as great literature, plays, or books. Brown’s Lanham Act claim is thus subject to the Rogers test, and we agree with the district court that Brown has failed to allege sufficient facts to make out a plausible claim that survives that test. Brown’s likeness is artistically relevant to the games and there are no alleged facts to support the claim that EA explicitly misled consumers as to Brown’s involvement with the games. The Rogers test tells us that, in this case, the public interest in free expression outweighs the public interest in avoiding consumer confusion.”

Big decisions, both. Among other things, they illustrate how legal strategy can determine how similar cases can yield opposite results. 

The case cites are In re NCAA Student-Athlete Name & Likeness Licensing Litig., __ F.3d __, No. 10-15387, 2013 WL 3928293 (9th Cir. July 31, 2013), and Brown v. Elec. Arts, Inc., __ F.3d __, No. 09-56675, 2013 WL 3927736 (9th Cir. July 31, 2013).

Mel Simburg and I presented today at the King County Bar Association IP Law Section’s monthly meeting. As discussed, it was on recent developments in rights of publicity.

Our slides are accessible here.

Great turnout, and interesting discussion. Here are some of the highlights:

• Parties who oppose expanding rights of publicity argue that amending statutes to expand such rights impoverishes the public domain and hurts third parties (like photographers and publishers) who relied on the public status of such rights.
• Creative parties defending against expanded rights accorded to the heirs of deceased personalities also argue that the new right constitutes a valuable windfall that wasn’t probated (and thus improperly wasn’t subject to estate tax).
• There’s a tension between copyright and state statutes granting a right of publicity, which could lead to arguments about copyright preemption.
• It’s an open question how far a plaintiff can stretch trademark law to get rights akin to those that are not available under a statutory right of publicity (i.e., if a plaintiff can’t assert publicity rights on behalf of a celebrity who died before the statute that granted the right of publicity was enacted, can it obtain similar rights under the Lanham Act?).
• Indiana’s expansive statute — the country’s broadest — may be in the process of being narrowed in court. This summer, the Southern District of Indiana found that the heirs of persons who died before the right of publicity statute was enacted can’t avail themselves of rights under the statute.  See Dillinger, LLC v. Electronic Arts, Inc., __ F.Supp.2d __, 2011 WL 2446296 (S.D. Ind. June 15, 2011). Courts also don’t automatically enforce contractual choice of law provisions agreeing to resolve disputes in Indiana according to Indiana law. See CMG Worldwide, Inc. v. Uupper Deck Co., Inc., 2008 WL 4690983 (S.D. Ind. Oct. 22, 2008).
• One correction: I stated that Judge Zilly’s order declaring parts of Washington’s publicity rights statute unconstitutional wasn’t available on Westlaw, which I found curious because it’s an important decision. Well, it used to not be available, but I just found it on Westlaw, so it apparently is now.

Surprise, surprise!

Ok, not really.

Plaintiffs Experience Hendrix, L.L.C., and Authentic Hendrix, LLC, are appealing to the Ninth Circuit their Pyrrhic victory over HendrixLicensing.com, Ltd., HendrixArtwork.com, and Andrew Pitsicalis.

Sure, the Western District granted judgment in their favor. But along the way, it also peeled off all but $60,000 in damages and $50,000 in attorney’s fees of the $1.7 million judgment the jury awarded them. The court also found unconstitutional the expansive amendment to Washington’s right of publicity statute that gave them — as Jimi Hendrix’s heirs — the right to sue in Washington, even though Mr. Hendrix was domiciled in New York at the time of his death. (STL posts on the decisions here and here.)

On Oct. 17, the plaintiffs filed a notice of appeal. They state they want the Ninth Circuit to review the Western District’s orders:

• Granting defendants’ motion for judgment as a matter of law, and in the alternative, for a new trial;
• Denying plaintiffs’ motion to dismiss defendants’ counterclaims for declaratory relief;
• Granting in part and denying in part the parties’ cross-motions for summary judgment; and
• Denying plaintiffs’ motion for treble damages and denying in part plaintiffs’ motion for attorney’s fees and costs.

Of course, plaintiffs also seek review of the final judgment the court entered in the case.

Among other things, it will be hugely interesting to see what the Ninth Circuit does with the Western District’s right of publicity ruling.

The case cite is Experience Hendrix, L.L.C. v. HendrixLicensing.com, Ltd., No. 09-285 (W.D. Wash.).