Plaintiff winery licensed the MARILYN MONROE name and likeness from the Monroe licensing entity, and sold wine under the MARILYN MONROE brand for many years, displaying a succession of images of Marilyn on its labels, over the years. At one point it also licensed the copyright in a famous nude photograph of Marilyn on Red Velvet, from the photographer (historical aside – nude photos used to be scandalous) and sold wine with the photo on the label. The photographer terminated the license and then licensed the photo to Defendant, a different winery, which reproduced the photo on its label. Plaintiff sues on trademark infringement for use of a photo that it can no longer use, but defendant can.
As discussed here by Prof Patry, plaintiff prevails. Even though defendant utilized the work under a valid copyright license, such use created a likelihood of confusion with plaintiff’s trade dress, which consisted in part of the likeness of Marilyn on the label. The good professor questions the decision, noting the paradox that the plaintiff could prohibit the use of an image by the rightful owner, when itself could not use that image.
I’ve been emailing and phoning Bill this week about this paradox, and I think we pretty much agree now that the decision is ok. I guess I would phrase it this way – the bundle of rights that is a trademark, contains a negative right to prohibit all those usages that would create the likeihood of confusion but the bundle of positive rights is not identical – the trademark owner cannot use all similar images to its own, if it does not own copyright in them.
Example: Coca Cola has by now built up strong rights in the use of polar bears as trademarks for Coke. I might create a polar bear and own valid copyright in it – except that I cannot use it as a trademark for soda if it creates a likelihood of confusion with Coke’s trademark rights (and, Coke cannot use an image of a polar bear that infringes my copyright in my polar bear).
So the scope of protection for a ‘fluid’ trademark can be hard to articulate with precision. Take images that have been updated many times over the years, such as the BETTY CROCKER or AUNT JEMIMA logos. Some of these images have been modified so any times that, from a copyright point of view, had they been independently created, the first in the series might not infringe the copyright in the last of the series (see the series of Betty Crocker images below, for example).
One would have to do a likelihood of confusion analyis of the marks still in use, a copyright analysis of images no longer in use, as well a ‘residual goodwill’ analysis of logos no longer in use, to identify all the potential images that would infringe the trademark rights in this ‘series’ of marks. I’ll call the totality of the prohibited usages the negative penumbra.
However, within that negative penumbra may be certain images in which third parties lawfully own the copyright, for example because it was an artistic work that makes fair use of the protected image.
It would seem therefore that the ‘positive penumbra’ of trademark rights would be smaller than the negative penumbra, as the trademark owner would not itself be able to use those images without the permission of the copyright owner – the Red Velvet Marilyn photo being one such example.
Berry Croker image from here.
‘Home Cookin’ image from here.
The Trademark Blog picks up another award, this time from someone I didn’t pay (I justify linking to these articles with the pretence that I’m giving you a list of good blogs to read, but my savvy readers see through that and know vanity when they see it).
My son asked me to order a “Get Fuzzy” book for him and I wound up blogging.
From the decision:
“The hula is a general name for many types of Hawaiian folk dances. . . Hula movements have standard forms and to perform an `ike motion, “a dancer raises one hand out and one arm is bent at the elbow and the hand is open and placed behind the eye with the thumb facing downwards and the finger to show the seeing motion.” . . . At the hearing, de Silva testified that the right hand would naturally be up — “always up because your knowledge does not come from yourself. It comes from your kupuna. It comes from everything that’s come before you and that’s always up towards the heavens.”
. . .
The angle and perspective of the pieces are very similar (both viewed in profile
from the dancer’s left side), but the position of the subject dancer relative to her
setting is not. The dancer in “Makanani” kneels in the shorebreak with waves
splashing her knees, facing the ocean, and appears large and tightly focused in
relation to the unfocused shoreline distant in the background. On the other hand,
the dancer in “Nohe” kneels on the beach, but does not face the ocean — which is
directly behind her — and the top portion of the piece is dominated by the smaller
island jetting out of the ocean. The angle and position of the dancers’ bodies are
in the standard `ike position, but even those angles vary slightly.
. . .
The medium each artist has chosen in which to express the hula
kahiko performance contributes to the different feel and concept of the works as a
whole. The sepia photograph’s stark contrasts between darkness and light are
characteristic of the Plaintiff’s choice of film, exposure and timing. An entirely
different feeling emerges from the brightly colored and textured stained glass
collage, which can be viewed from either the front or reverse.
Decision in preliminary injunction motion here.
Hawaiian Advertiser story of case here.
Sunday Times of London: “Homeless in Cyberspace” (in which the author forgets to renew her domain name, and a speculator offers to sell it back to her for $888).
IHT: “MGM seeks control of Wargames.com site name.” MGM is apparently planning a sequel to the film ‘Wargames.” The domain name registrant has put up a war games-related site since receiving the demand letter, which of itself will not be all that probative. This registrant also has been in the news in 2005 when he won the papal name domain name sweepstakes.
If I disclose that I refer all my IT contract work to my friend Dennis Kennedy, does it cheapen this award? In any event, here’s a list of good law blogs (and mine).
Defendant purports to own rights in ASPEN. Plaintiff (Victoria’s Secret) uses a skiing theme in its seasonal promotion, including references to the ASPEN ski resort. Defendant requests cessation. Plaintiff alleges that it is not using term as a trademark. Defendant threatens lawsuit but doesn’t sue. Plaintiff files action for declaration of non-infringement. Complaint here.
Christopher Little Literary Agency
10 Eel Brook Studios
125 Moore Park Rd
Domain name: DEATHLYHALLOWS.COM
Created on: 2006-12-21
Expires on: 2008-12-21
Christopher Little is JK Rowlings’ agent. It was announced today that Harry Potter and the Deathly Hallows will be the name of the seventh book.