Tuesday, June 30, 2015

ICANN Considers Eliminating Anonymity For Commercial Websites

ICANN is studying a proposal to eliminate the ability of owners of commercial websites from hiding their identity through alias registrations. Presently, a commercial website owner can register its domain with an alias so as to avoid identification by a WhoIs search. ICANN is considering changing its policy concerning alias registration by commercial website owners. Toward this end, ICANN is inviting public comment through July 7, 2015 on this issue. The title of ICANN's policy study is "Next-Generation gTLD Registration Directory Services (RDS) to Replace Whois Preliminary Issue Report." To provide comment, contact ICANN within the coming week via e-mail, at policy-staff@icann.org, attention Marila Konings.

Thursday, June 25, 2015

What Does A Brand Owner Want From A Brand?

This brief essay on the meaning and power of brands to communicate with customers is provided by David Altschul of Character LLC. David advises brand owners on the development of brand character.

Subject: What kind of relationship do you want with a brand?
The whole point of using story as a strategic marketing tool is to help develop a relationship between the brand and its audience. But saying that begs some important questions: What kind of relationship are we talking about? And what kind of relationship is even possible?

I was thinking about these questions as I was rereading Predictably Irrational, Dan Ariely’s insightful and highly entertaining deconstruction of human decision making. At the beginning of the chapter on social norms, he describes what might happen if you offered to pay your mother-in-law a few hundred dollars in cash as an expression of your gratitude for a well-prepared Thanksgiving meal. The story is used to illustrate the difference between social relationships and commercial ones. The offer of cash—any amount of cash—makes the relationship a commercial one. Most relationships fit pretty clearly into one bucket or the other. In fact, presenting yourself as a friend when you actually have a selfish, mercenary motive is symptomatic of an unhealthy, perhaps toxic, relationship. And as Dan Ariely points out later in the same chapter, it doesn’t take much to subvert a social relationship, turning it into a commercial one, but it is a long, hard road to reestablish a social relationship once it has been undermined.

Brands want to have close relationships with their customers because it’s good for business. A customer who feels connected is more willing to pay a premium and more likely to forgive occasional lapses on the part of the brand. (Remember when the iPhone 4 was dropping calls if you held it a certain way? Steve Jobs called a press conference and said, “Don’t hold it that way,” and most Apple loyalists let it pass.) Loyalty is a quality we expect, to one degree or another, in all social relationships. In fact, loyalty is a defining quality of a good social relationship. But loyalty in a commercial relationship is kind of an odd duck. Why should you be loyal to a company that doesn’t know you, a company whose interest in you, as far as you can tell, is to make money by transacting business with you?

I recently heard a senior brand marketer describe the relationship he wants between his brand and its customers by comparing it to a strong relationship between good friends. But I think that’s a mistake, unless he’s the kind of person who is always trying to sell Amway products to his close friends at a backyard barbeque or routinely studying his friends to find out what they want so that he can be the one to sell it to them. Story theory suggests another model, however, which I think is much more useful:

Think about the relationship between your brand and its customers as if the brand were a character in a drama and your customers were the audience.

I know that the characters I encounter in a movie, a TV show or a book are fictional. But I willingly suspend my disbelief and begin to care about them if the story feels true and meaningful.

It is important to note that, in this metaphor, the brand is in a much better position to connect emotionally with its audience if it is the protagonist in the drama. An awful lot of brands, particularly CPG brands, do their archetype studies and end up defining themselves as some kind of helper or mentor. But here again, the profit motive gets in the way. A helper or mentor from a story who only gives his services in exchange for money is either a villain or a rogue who will later learn the error of his ways and begin to act more selflessly (think Han Solo).

Further, true helpers and mentors tend to be secondary characters. They don’t struggle, they aren’t particularly vulnerable, and they don’t grow. We may like Gandalf or Mr. Miyagi or Obi-Wan Kenobi, but we don’t identify with them; we don’t see ourselves in them. The protagonist, however, is the “point-of-view character”; we see the world through this character’s eyes, and identify with the character because he or she struggles with the same internal issues that we struggle with. Protagonists feel relevant and meaningful to us because we recognize ourselves in them and we learn from what they’re going through.

When Jim and I were still at the animation studio, we used to say that we knew an animated character was successful when we felt as if we could see it feel and think. A brand is just as fictional as an animated character, and a brand comes to life for me when I have a sense that I know how it’s feeling, what it’s thinking and how it is likely to respond to whatever the world throws at it.

So that’s our suggestion for how to think about the way your brand relates to its customers. Don’t imagine your brand as their helper, mentor or favorite aunt. All of those relationships seem fake if they turn out to be based primarily on financial considerations. Instead, think of your brand as a character engaged in a struggle that is meaningful and relevant to your audience. Your job isn’t to fake a close, personal relationship with your customers but to show them what you believe in and care about. Customers who share your beliefs will find your brand relevant (in fact, that’s the only useful definition of relevance for a marketer), and they may reward you with their loyalty.

I’d love to know what brands you feel loyal to and how you think about your relationship with them.


David Altschul
Character LLC

Thursday, June 18, 2015

Mein Kampf Copyright Expires This Year

Hitler died 70 years ago, in 1945. The term of copyright under German copyright law expires 70 years following the author's death. And since copyright terms run to the end of the year of termination, the copyright to Mein Kampf will pass into the public domain by the end of this year. The Bavarian State has used German copyright law to inhibit the distribution of Hitler's and Nazi writings. But copyright law will no longer be availing next year and Mein Kampf can be freely copied. The bigger question is, why?

Trademarks and License Plate Law

The Supreme Court ruled today that the State of Texas does not have to issue a license plate bearing a privately proposed design if it does not want to. Some citizens of Texas desired to obtain a state issued specialty license plate bearing an image of the Confederate battle flag. The Texas Department of Motor Vehicles Board has the authority to approve and issue license plates bearing privately proposed graphics and slogans. The board said No to the Confederate flag's adornment on Texas plates. And the Supreme Court today holds that the State of Texas can decline to issue a plate for speech that it disapproves of because license plates represent government speech. Government cannot be compelled to adopt speech that it does not agree with.

What does this have to do with trademarks? Recently, the Federal Circuit elected sua sponte to hear en banc the appeal of Simon Tam taken from the refusal of the federal trademark office to register the mark THE SLANTS for an Asian American music group. The PTO took the position that the mark disparages Asian Americans, a portion of which found the slang term offensive. The Federal Circuit panel upheld the PTO's refusal to register based on disparagement. But one week later, on April 27, 2015, the court sua sponte entered its order vacating the panel opinion and ordering a rehearing. Oral argument en banc will likely occur later this year.

So, is there not an interesting connection between the compelled issuance of a license plate bearing a symbol that Texas finds offensive and the issuance of a federal trademark registration certificate for a mark that the PTO finds offensive? And would it not be interesting for the Federal Circuit to strongly consider today's license plate decision in reviewing the demand of Simon Tam to compel the PTO to issue a registration certificate for an offensive slang term?

The Statute of Liberty Was Patented

The Statute of Liberty, designed and crafted by Frederic Auguste Bartholdi of Paris, was patented in the U.S. on February 18, 1879. The patent applied for pertained to the design of the statute, bearing the title Liberty Enlightening The World.

Bartholdi used the patent to assist in fund raising efforts for the statute, selling six inch replicas for $1.00.

Bartholdi (1834-1904)

Bartholdi created many other pieces of public art that are still on display in the U.S., including the Bartholdi Fountain in Washington, DC, the Marquis de Lafayette statute in Union Square, New York City, and icons on the Brattle Square Church tower in Back Bay, Boston.

Monday, June 8, 2015

Intent To Use Trademark Filings Require An Objective Bona Fide Intent

U.S. trademark law permits the filing of a trademark application based either upon an actual present use of the trademark in commerce or upon a good faith intent to use the proposed mark in commerce in the future. But too often as to the latter, these "Intent To Use" applicants do not possess the necessary bona fide intent.

In a case of first impression the Federal Circuit recently addressed the meaning of bona fide intent. The court ruled that an Intent To Use applicant must possess an objectively established intent to use the mark in commerce as of the date of its application. A generalized intent to reserve the trademark will not suffice. A subjective intent to use the mark some day is not acceptable. The necessary intent to use must be objectively "demonstrable and more than a mere subjective belief."

An Intent To Use applicant must be in possession of documents prior to the date of the application showing a good faith and firm intention to develop an in-commerce use of the proposed trademark. Alternatively. the applicant must provide good faith testimony demonstrating the firm action undertaken prior to the filing to develop an in-commerce use of the proposed trademark. Documents developed merely to assist in the prosecution of the application are insufficient to establish bona fide intent. And conflicting testimony from the applicant's employees creating confusion surrounding steps taken to use the mark will not support a bona fide intent.

In the recent Federal Circuit case, the Intent To Use applicant, M.Z. Berger & Co., manufactured, imported and sold watches, clocks and personal care products. It filed an Intent To Use application for the proposed trademark iWatch for watches, clocks and associated goods (e.g., watch bands, etc.). Swatch AG filed an opposition, claiming that the proposed iWatch mark was confusingly similar to its mark SWATCH, and that Berger lacked the necessary bona fide intent to use its proposed iWatch mark.

In attempting to establish the existence of its bona fide intent to use iWatch, Berger offered both testimonial evidence of its staff and documentary evidence from its files. But the staff testimony was conflicting, and the staff "failed to tell a consistent story about the company's intent at the time the application was filed."

The documentary evidence was of three types: (1) a trademark search, (2) internal company e-mails relating to the application, and (3) internal company e-mails relating to "images of watches and a clock bearing the iWatch mark." These documents, however, only related to the trademark application and did not establish an objective business intent to use the mark in commerce. That is, the trademark search was not undertaken as a step to begin use of the mark, but rather as a step to make the trademark filing. The internal documents relating to images of the mark and watches were prepared to support the trademark application and not for commercial purposes.

The lesson learned from this recent case is that, notwithstanding the relatively simple process of applying for trademark protection in the U.S. based on a future intent to use, it is necessary at the time the application is filed for the applicant to have an objectively demonstrable intent to use the mark in commerce. Necessary proof of bona fide intent requires that the applicant possess documents and consistent testimony establishing plans to undertake actual use, and not merely documents to support a trademark application.

Reverse Image Search Technology Will Increase Infringement Claims Over Photographs

It used to be the rule of dumb luck that accounted for the happenstance detection of a wrongful use of a photographic image. The owner of a photo previously had little ability to detect an infringing use unless the owner happened to stumble upon an unauthorized image. But today's technology significantly expands the ability to detect the misuse of an image on the Internet. Services such as TinEye, Google Images, and others, now allow fairly sophisticated detection of images. These services can have a panorama of applications. Not only can a photographer detect misuse of a protected image, but a business can prevent misuse of product images wrongfully taken from its on-line product catalog. And misuse of trademark logos can be more easily targeted, along with the right of publicity misuse of a person's image.

The sophistication of new reverse image search technologies will likely increase the number of infringement and right of publicity claims related to unauthorized use of personal and product images.

Tuesday, June 2, 2015

Creating Something Out Of Nothing -- Copyright In A Compilation

There are many things that can serve as subject matter for a valid copyright, including music, text, photos, motion pictures, sound records and architectural works. But there is one additional area of copyright -- a compilation copyright -- that is perhaps the strongest, the most powerful, type of copyright. This is so, in part, because a compilation copyright can create something out of nothing.

A compilation copyright is a "super duper" copyright.

A compilation is a work created from preexisting material. A compilation copyright exists when the preexisting material is selected, coordinated or arranged in a creative way so that the resulting work, as a whole, is creative. For example, creating a fabric print from preexisting zebra stripe designs can be copyrightable as a compilation of preexisting zebra stripes provided that the zebra stripes are selected, coordinated or arranged in a creative manner. Or, for example, the creation of fabric designs from preexisting third party art can be copyrightable if the selection, coordination or placement of the preexisting art is itself creative.

Section 103(b) of the Copyright Act provides that a copyright in a compilation does not extend to the preexisting material, but it does cover the newly contributed material. That is, the compilation copyright covers the selection, coordination or placement of the preexisting material. And Section 103(b) provides that the copyright in the compilation of preexisting material is independent of the preexisting material.

In other words, the compilation copyright exists by the use of common items, over which there may not be any originality or the right to copyright, in a work produced by the selection of the items, coordinating the items or arranging the items. It is the selection, coordination or arrangement that is protected by the compilation copyright.

Two recent cases from the Ninth Circuit underscore the tremendous power of the compilation copyright. In Meridian Textiles v. Topson Downs of California, issued on May 22, 2015, the Ninth Circuit reversed a dismissal of a case involving fabric print of zebra stripes.

The Ninth Circuit stated that the selection, coordination or arrangement of designs in the fabric could itself serve as a basis for a compilation copyright independent of any preexisting design: "and the district court may not say as a matter of law that 'the differences in the placement of geometric shapes should be regarded as trivial.'”

In ITC Textile v. Wal-Mart Stores, issued June 1, 2015, the Ninth Circuit held that the compilation of design elements in a fabric print can be copyrightable even if the elements consist of preexisting design. In this case, there was evidence that plaintiff's fabric designs consisted of paisley graphics taken from third party sources:

The Ninth Circuit held that the selection, coordination or arrangement of preexisting designs can be separately creative and copyrightable.
But the declaration submitted by Appellees to rebut the presumption of validity did not actually show that the designs were unoriginal in the relevant sense, because it presented no evidence that the compilation of elements in either the Symphony Sweet or Medallion Art design lacked originality. 
Further supporting the super duper status of a compilation copyright, this type of copyright is one of the limited number of works that is a work-for hire. Plus the transfer of a compilation copyright, as a work for hire, is not subject to early termination.

So, a compilation copyright is super duper, indeed.