I. REVIEW

II. MARKETING MGMT II Right of publicity Unfair trade practice

III. WRAP-UP

TRADEMARKS: CREATION

Inherently distinctive marks (OK) Fanciful Arbitrary Suggestive

Descriptive marks: (OK only if 2nd meaning)

Generic marks (Never)

TRADEMARKS: INFRINGEMENT

Lanham Act 43(a): Prohibits false designation of origin (= trademarks)

Likelihood of confusion claim 8 factors Injunction or $$$ Counterfeit criminal prosecution

CREATION OF COPYRIGHT

Requirements

Originality: Must have minimal originality Fixation: Must be put into tangible form

NBA v. Motorola

Sport game itself is not copyrightable But once recorded with labor, copyrightable

CREATION OF RIGHT

Common law right of famous individuals

From the concept of invasion of privacy Protects commercial value of celebrities’

persona

General rule: A celebrity’s name, likeness, or image cannot be used for commercial purpose without consent

ELEMENTS OF CLAIM (3)

Use of a famous person’s identity

Without consent

To gain a commercial advantage

WHITE V. SAMSUNG ELECTRONICS

Fact Samsung used a robot that resembles Vanna

White Dressed in a wig, gown & jewelry of P The robot was posed next to a Wheel-of-

Fortune-like game board

Rule Using a likeness of celebrity without consent

is a breach of ROP ROP extends to “anything that evokes her

personality (likeness)”

WHITE V. SAMSUNG ELECTRONICS

PUBLIC POLICY: PROTECTION V. LIMITS Why do we protect this right?

Hard work established their commercial value Unauthorized use directly hurts the value

Limits on right of publicity

1st Amendment right (artistic speech) Personal right or property? (inheritable?)

LIMITING THE RIGHT: 1st AM

ETW Corp. v. Jireh Publishing Inc. (2003)

Fact: A painting of TW’s memorable win at the 1997 Masters (sold thousands of copies) & ETW brought an action for breach of right of publicity

Rule: Under 1st AM, an artistic work with significant creative component is protected

Rationale: Literal depiction < expressive artistic speech

ETW CORP. V. JIREH PUBLISHING INC. (2003)

LIMITING THE RIGHT: RIGHT OR PROPERTY?

Pirone v. MacMillan, Inc.

Fact: One of Babe Ruth’s heirs sued calendar publisher for using the baseball legend’s pictures

Rule: Right of publicity extinguishes at death (right)

Right or property?

New York: ROP Extinguishes at death California: Up to 70 yrs after death (property)

CONSUMER PROTECTION LAWS

Traditional market Mostly face-to-face deal “Caveat emptor”: No remedy (“Let the buyer

beware”)

Modern market No face-to-face deal Lanham Act: No false designation of TM FTC Act: No unfair or deceptive practice (FTC

only) State laws: Same as FTC Act (but private

action OK)

DECEPTIVE ADVERTISING: SPALDING V. WILSON

Fact Wilson’s ads claimed that their golf balls are

superior to Spalding’s because of its perfect balance

Spalding argued it’s false & deceptive: (1) balance is only one factor in putting; (2) lab ≠ green

Rule & rationale Advertising claim is legal if not completely

misleading Balancing between fairness & competition

AMBUSH MARKETING: NHL V. PEPSI

Fact

Coca-Cola was the official sponsor of NHL Pepsi launched promotions tied to Stanley

Cup playoffs Pepsi disclaimed any official status in

promotion

Rule

No mark used No infringement under Lanham Act

Disclaimers were enough to dispel any sponsorship status

AMBUSH MARKETING: NHL V. PEPSI

Rationale: Lanham Act 43(a) not applicable

***“FALSE DESIGNATION” of origin in connection with goods, services, or their containers***

Unfair trade practice law does not provide official sponsors with utmost legal protection

Balancing competition and fairness

RIGHT OF PUBLICITY

Protects famous individual’s persona

Elements

Use of famous person’s name, likeness, or image

Without consent To gain commercial advantage

UNFAIR TRADE PRACTICE LAW

False advertising Balancing between competition and fairness Prior substantiation required if claim uses

experts or other reliable sources

Ambush marketing Try to dilute status of official sponsorship Hard to expel ambush marketers