Daily Archives: January 14, 2009

Meep-Beep-Huh? New Mexico’s trademark troubles

As reported by the New Mexico Business Weekly, a Massachusetts company called RailRunner N.A, Inc., which develops truck-and-rail systems and is the owner of RAILRUNNER (U.S. Trademark Reg. No. 3,227,113) and RAILRUNNER (Stylized) (U.S. Trademark Reg. No. 2,966,296), for, among other things “Railway bogies,” “Railway vehicles,” “Repair of railway vehicles” “Logistics management in the field of railway vehicles,” “Custom manufacture of railway vehicles,” and “Educational services [related to maintanence and operation of railway vehicles” has sued the New Mexico Department of Transportation for its use of NEW MEXICO RAIL RUNNER  EXPRESS for a commuter passenger rail system running from Santa Fe to Albuquerque to Belen, NM.

The allegedly offending mode of transport

The allegedly offending mode of transport

According to the article, RailRunner (the company) has been warning New Mexico authorities about the use of the name for a while now.  RailRunner also brought an opposition to the state’s application to register NEW MEXICO RAIL RUNNER, and the Board granted summary judgment to RailRunner on the ground that the New Mexico agency that originally applied for the mark wrongfully transferred the application (an “intent-to-use” application) to another New Mexico agency, in violation of Section 10 of the Lanham Act.

Now that the state (and its subdivisions) have not renamed the commuter line, RailRunner’s speeding them off to federal court in Massachusetts.

A state official was quoted in the article as saying that she was “confident” that the state would be able to work something out, but, on the merits, it looks like the state should be expecting to end up face-first in a big, flat rock.

Who's the coyote, and who's the Road, er RailRunner?
Who’s the coyote, and who’s the Road, er RailRunner?

But, the state may have one saving grace– Sovereign Immunity.  The Eleventh Amendment to the U.S. Constitution essentially prevents individuals from suing states in federal court, and the U.S. Supreme Court has specifically recognized that Congress can’t “force” a state to waive that right through the Lanham Act.  As I’ve not been extensively involved in any trademark litigation matters in federal court against state subdivisions, and I’ve not been involved in this apparently long-running dispute between these parties, I don’t know whether sovereign immunity is available in this situation or whether any of the actions of the state has resulted in a sovereign immunity waiver.  But only time will tell who’s a wile coyote with their branding and litigation strategy and who’s just Wile E. Coyote, missing the prize and ending up with flattened face and some seared fur.

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As if one post about a strip club a day wasn’t enough…

Developments in the small town of Zumbro Falls, Minnesota, where a local couple wants to put up a strip club.  A Minnesota attorney has filed a lawsuit to enjoin enforcement of a 2006 Minnesota state law regulating placement of strip clubs.  According to the attorney, Randal Tigue, the law “effectively bans adult entertainment in almost all small towns.”

I’m not that up on my “strip club law,” but I recall from law school a few things:  The First Amendment covers dancers’ expression, even if that’s sometimes nude.  However, it does not protect “all nude dancing.” Further, while reasonable time, place, and manner restrictions may be placed upon adult-oriented businesses [pdf, from the League of Minnesota Cities no less], zoning them out altogether is the same as banning them outright.

I lived in Minnesota when this statue was enacted but, alas, I don’t remember hearing anything about it.  To the extent that Mr. Tigue’s interpretation of the statute is correct, his clients would seem to be in a good position. Something tells me he may be stretching the truth a bit.


The lucky jurist who gets to hear this case
The lucky jurist who gets to hear this case

U.S. District Judge Joan Ericksen has denied the plaintiffs’ request for a temporary restraining order to prevent enforcement of the law, noting that the plaintiffs cannot prove immediate, irreparable harm. (I guess the strip club hasn’t eve been constructed yet.)  We’ll see what happens, and perhaps I can get a copy of the statute and of the lawsuit for more in-depth analysis.

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“Stripper Idol” competition strips trademark law to its bare bones

As reported by the Houston Chronicle, the Dallas Morning News, and the local Austin TV station KVUE, FremantleMedia, owner of the popular FOX television program American Idol, has sued local Austin strip club Palazio Men’s Club (reasonably safe for work) for the Club’s creation of a weekly amateur special called “Stripper Idol.”

An ad taken from the club's Myspace page.

An ad taken from the club's Myspace page.

FremantleMedia, which owns the country’s most-watched TV show, says Palazio’s weekly amateur stripping contest is a trademark violation, one that tarnishes the company brand and could lead the public to believe the TV show is sponsoring the event.


Palazio managers, who first thought the lawsuit was a joke, say they have no intention of ending the Thursday night strip-off.

They say the contest – where girls have 60 seconds to dance topless, then are ranked by audience applause to win $500 – bears no resemblance to the hit TV show.


FremantleMedia’s lawsuit takes issue more with the club’s marketing than with the contest itself. The suit notes that Palazio uses the word “idol” in the contest name – a direct link to American Idol, which starts its new season Tuesday. And it has designed a contest logo that uses a “color scheme, design and font” mirroring that of the TV show. In addition to using the logo in advertisements, the club has waitresses wear T-shirts emblazoned with it – T-shirts cut, tied and tailored in revealing ways.


The suit’s claims are hogwash, said “Kinky” Kelly Jones, a club manager and the show’s emcee. Fremantle can’t lay claims to the word “idol,” he said.

“That word is biblical,” he said, “and has been around for thousands of years.”

And while Stevenson said the club would alter the logo if necessary, he added that he thought the whole suit was a bum deal.

“I didn’t know you could copyright an oval,” he said.

This is seriously a hard case.  “Kinky” is probably right–it will be a stretch for Fremantle to say that any entertainment service featuring a contest in the United States cannot use the word “Idol” in its title.  What Kinky doesn’t realize, though, is that the Lanham Trademark Act protects a junior trademark user from using any mark likely to cause consumer confusion or mistake not only as to the source of goods or services (that is, who provides the service or produces goods) but also “as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.”  In other words, if Kinky markets his stripper competition in such a way that a customer is likely to be confused or deceived that Stripper Idol is been sponsored by, or is affiliated with, American Idol, then American Idol can win its lawsuit. Most courts use a multi-factor test to determine likelihood of confusion, which usually includes balancing the fame and distinctiveness of the senior user’s mark, the similarities of the trademarks, the care of the consumers, the channels in which the  products are marketed, any instances of actual confusion, and the intent of the junior user in adopting the mark.  If you examine the STRIPPER IDOL advertisement above, there are certainly similarities with the well-known (and perhaps famous) AMERICAN IDOL and Design logo that is used on the TV show:

The TV show's logo

The TV show's logo

The consumers of both American Idol and Stripper Idol are not particularly careful (just look at the voting on the show!) or “sophisticated”, and while stripping and musical talent aren’t exactly the same, one could argue that the goods and services are “related” enough (just look at the promo for the new season, with the girl singing in a bikini and Simon allowing her to go on.) When you consider that Kinky probably didn’t just “come up” with the “Stripper Idol” name on his own, but rather likely intended his prospective customers to at least think of the Fox show, it would appear that many of the factors would favor Fremantle.

Kinky’s quote also illustrates a common misconception (and confusion) among Americans. Fremantle doesn’t have a “copyright” on an “oval,” (you likely cannot copyright the shape of an oval, as it lacks minimal creativity) but that is a design element of its trademark, which can be used to determine whether confusion is likely.

I haven’t even addressed the issue of “trademark dilution,” the concept that regardless of competition, a “famous” trademark’s market power and presence can be “diluted” by a similar (usually identical) use by a junior user.  Trademark dilution comes in two flavors — dilution by blurring (blurring the unique distinctiveness of the mark) or dilution by tarnishment (a connection that causes harm to the reputation of the senior user).  Associating an amateur strip contest with American Idol just may fall into that latter category.

On the other hand, I’m sure Fremantle’s attorneys thought long and hard about filing suit in this case.  Because rather than shutting down a potential (embarassing) infringer, it has made the club (and its amateur strip competition) more famous and more popular.  On the one hand, trademark owners have to police their rights, or otherwise the marks will become “diluted” and unprotectable (and perhaps even generic–like aspirin and almost Xerox).  On the other hand, fighting needless battles against small proprietors delivering unrelated goods and services just creates negative goodwill.   My guess is that they saw a rather unsympathetic defendant using a very similar logo to create a knock-off competition and believed this could be a prime case to “set an example” to prophylactically prevent others from using the IDOL trademarks or trade dress in simiar ventures.

I’m not sure that stuffing a few smelly singles into Fremantle’s g-string alone will put a smile on this media giant’s face. But it wil be a fun one to watch.

(All puns, intended.)

UPDATE: Conde Nast Portfolio.com has posted a similar story, except that the author contends that it’s a case of “copyright infringement.”  Indeed, there is sometimes some crossover between articles that are copyrighted and articles that may be entitled to trademark protection– the characters Mickey Mouse or Popeye may be examples.  But, alas, it appears that the Conde Nast journalist is just as clueless as strip club owner Kinky on the differences between copyright and trademark.  I’ll blog on this more soon, but for now, here’s a handy primer from the PHOSITA blog.


This story continues to grow legs, now being picked up by the Boston Globe and the New York Daily News.


Filed under Law, Trademarks

If only Wagner played rhythm guitar?

Europeans are considering the extension of their copyright term for recordings, which is set at 50 years, with a consequence that the “session musicians,” those who merely perform on a recording virtually anonymously, get a bigger cut.

In this fantastic article from the British New Statesman, Tim Blanning looks at the debate from a historical perspective, noting that piracy and misappropriation was even more common in 17th and 18 Century Europe than it is today.  He also makes the argument that stricter copyright laws do not necessarily guarantee better music:

If modern copyright protection had been in place in Germany in the middle of the 19th century, Richard Wagner would have been a rich man. As his biographer Ernest Newman pointed out, it was the system that made him a beggar – and then condemned him for being a debtor.

One of the reasons why Wagner – and every other composer – was so keen to make a name in Paris was that legislation introduced during the French Revolution had given France the best intellectual property rights in Europe, and consequently the continent’s most vibrant musical culture. The result was that Auber, Meyerbeer and Halévy became very rich. That these three succeeded where Berlioz and Wagner failed ought to be sufficient warning that secure access to the market is not a guarantee of superior quality. When copyright protection came to Italy in the late 19th century, it marginalised the im presarios and prompted the now dominant music publishers to cosset their star composers. Whether the music produced under these new conditions by, say, Puccini is superior to that of Rossini, Bellini, Donizetti or the younger Verdi is a different matter.

Richard Wagner-- A guy who needed better lobbyists

Richard Wagner-- A guy who needed better lobbyists

I would disagree slightly that the purpose of copyright is to secure the best quality of expression possible.  Indeed, the purpose is to encourage creative folks to produce.  Musical ingenues would likely still follow their calling, even if they have to be insurance salesmen on the side. Copyright ensures quantity, people who might not want to produce but for the financial incentive  they could receive from royalties. Like the session musicians the EU seems to be so concerned about.

Blanning also examines the relationship between the composer and the public, noting that once the patronage system was abandoned for the “anonymous public” paying for performances, a tension was created:

The public knew what it liked – and that was easy listening in the shape of plenty of variety, good tunes, regular rhythms, and pieces that were not too long or difficult. Haydn’s symphonies fitted the bill, but Beethoven, especially in his later years, was altogether too demanding.


Composers have responded in all kinds of ways to the emergence of the philistine public as the major source of patronage, from “giving the punters what they want” to “doing my own thing regardless”.

Sounds pretty familiar, eh? And you thought that it was Clear Channel that brought about the “dumbing down” of music.

But it wasn’t until musicians could make money as performers that the music industry got going:

When the subsequent explosive growth of the public sphere across Europe created a new Eldorado, it was the composer-performers who did best, since it was they who could achieve a direct relationship with their audiences. Paganini and then Liszt dem onstrated just what riches and honours were now available to the charismatic musician. When Liszt left Berlin after a series of recitals in 1842, he did so in a carriage pulled by six white horses, accompanied by a procession of 30 other coaches and an honour-guard of students, as King Frederick William IV and his queen waved goodbye from the royal palace. As the music critic Ludwig Rellstab put it, he left “not like a king, but as a king”.

Recordings have greatly increased the wealth that can be produced by a performer, but, as Blanning noted “[e]ver since musicians emerged from the servile but cosy world of aristocratic patronage into the harsh daylight of the public sphere, the musical profession has been a pyramid with a broad base and a sharp top. The new opportunities brought by every major technological shift have also left many casualties among musicians unable or unwilling to adapt.”

This guy is worth 20 years

This guy is worth 20 years

Does this mean that Europeans should extend the copyright term? Or is 50 years’ worth of payments for an “anonymous” musician sufficient?  We in the United States have repeatedly answered this question with a strong “yes”– extending copyrights any time any work believed to be “valuable” nears its expiration term.  Sonny Bono’s singular enduring legacy as a U.S. Congressperson is the Sonny Bono Copyright Extension Act, a/k/a the Mickey Mouse Protection Act, signed into law in 1998, and extended the copyright term to life of the author plus 70 years, or 120 years after creation or 95 years after publication for works of corporate authorship.* It was lobbied for strongly by Disney, whose copyright in “Steamboat Willie” was then about to expire.**

Even assuming that the performance rights about to expire in Europe comprise some very “important” session work, perhaps governments have to realize that “important” may not mean “deserving of continued financial support”.  It’s unfortunate, however, that copyright extension seems to come ex post facto when “important” works are about to expire.  Because whether copyright exists to encourage “superior” work or exists just to encourage creative productivity, that incentive no longer exists after the work has been out and about in the world for 50 years.

But whether the US or the EU is beginning to structure its laws to encourage a future Wagner to be an anonymous rhythm guitar player instead of a composer, Blanning’s article is certainly worth a read.

Courtesy of techdirt.com.

* By the time the Act was passed in the US, the copyright term for authors in Europe was already life plus 70 years; performance rights last for fifty years, however.

** Recent evidence has suggested that, notwithstanding the Act, Steamboat Willie has faled into the public domain due to a failure of the authors to provide proper copyright notice

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