Legal Geek No. 161: Celebrity Patents

Welcome back to Legal Geek. This week, while many are preening over the outfits and the awards given to celebrities at the Oscars, we take a look at some patents granted to celebrities which may surprise you.  Who knew some of these people were also inventors?

https://archive.org/details/LegalGeekEp161 

Good ideas can really come from anyone, and celebrities are no different. Let's look at a few granted U.S. patents and their well-known inventors famous for something entirely different.

Back in the 1980's when Jamie Lee Curtis was working on Halloween movies among other hits, she was also having children. One time when changing a diaper on her daughter, she discovered she left the wipes across the room, which made for a tough conundrum of leave the messy diaper open to go get the wipes, or try to deal with the mess without wipes. So she invented and patented the Dipe and Wipe, a diaper with a pouch to hold wipes on site at all times. This patent granted in 1988 and was never heavily marketed, but it is in the public domain now for all to use, if wanted.

Neil Young is better known for his music as a two-time Rock and Roll Hall of Fame inductee, but his passion on the side is model trains. He has a barn filled with model trains on his property. He actually held an ownership stake in the model train company Lionel for a while in the 1990s, and developed and patented several things for the company during that time. One patent covers a controller that sends signals to model train locomotives using an electromagnetic field rather than requiring actual contact with the metal track materials, which was developed to helped his son with cerebral palsy control and enjoy the trains. He also patented a model train horn system that better allowed an operator to simulate many of the locomotive noises a real train makes.

Before Bill Nye became "The Science Guy" on children's TV, he was a mechanical engineer who worked at Boeing Corporation. Just because he stopped being a full-time engineer doesn't mean he stopped inventing, and it's no surprise many of his inventions stem from the shows he produced. But one particular patent on ballet toe shoes stands out as way outside Bill Nye's normal field. When he interviewed Seattle ballet dancers who were appearing on an episode about bones and muscles, he realized the toe shoes ballet dancers use to dance en pointe could be improved to help avoid many of the injuries young women were experiencing from this dance form. His patented shoe from 2005 adds a tubular support sleeve and a particular polymer material for additional shock absorption. 

The Bottom Line is, the patent field is full of inventors from all walks of life, including these celebrities who we consider to have extraordinary skill in another art. Inspiration can come from everyday problems, and those same problems being solved is precisely the type of evidence patent offices in the U.S. and other countries find persuasive when deciding to grant patents. While many look forward to the next fashion statement on the red carpet from celebs, I look forward to being surprised by new inventions these same people can come up with.

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Legal Geek No. 160: Expiring Digital Copy = False Advertising?

Welcome back to Legal Geek. This week, we review a question sent in by a listener Justin regarding expiring digital copy codes on movies, and whether that can be deemed false advertising.

https://archive.org/details/LegalGeekEp160

Most of us have probably experienced this: you buy a movie from the sales or clearance rack at the store, take the disc home and log on to your computer to claim the included digital copy...and bam, code expired. No digital copy. Or perhaps you forgot to enter the code when you bought the movie and you discover this a couple years later, only to find that the digital copy code is no longer valid. In either case, it's highly frustrating, especially as many move away from print media and discs and store everything digitally or in the cloud.

Well that's roughly what happened to Justin, our listener with the question. He bought a movie with a "digital copy included" label on it, with no expiration date listed on the package, only to find out once he opened the movie that the code expired 5 days earlier. He cannot return the movie since it is open, but he did not get the deal he was hoping for. Does that create a false advertising claim under the law?

You'll be shocked to hear that it's a gray area, the lawyer's favorite playground. False advertising under the law requires advertisement of a product in a misleading way, to make the purchaser believe the product performs better than it actually does. Although many states have some false advertising laws, we will focus this segment on the two federal laws on point: the Federal Trade Commission Act and the Lanham Act, the latter of which establishes trademark law in the U.S.

The FTC Act defines false advertising as advertisements that make representations that the advertiser has no reasonable basis to believe, and only the FTC can enforce this act. We covered some FTC cases a couple months ago, but looking through their archives, it does not appear that expiring digital movie copies have led to a decision under this law as of yet. It seems unlikely that a movie seller would be liable because the representations made of a digital copy being available were likely reasonable and true when the movie disc was produced and sent to retailers. In other words, the only way a seller would have no reasonable basis for belief in advertising a digital copy was included would be if the code for the digital copy expired before the discs could hit shelves, or if the codes were never valid at all. This is a high burden to prove and so I don't expect the FTC to weigh in on such a case.

The Lanham Act defines false advertising as having the following 5 elements, each of which must be proven: (1) false statements of fact were made about the product; (2) the false advertisements deceived or had the capacity to deceive a substantial segment of consumers; (3) the deception was material; (4) the product was sold in interstate commerce; and (5) the party suing the advertiser was injured by the deception. 

There's a few potential holes in arguing these 5 factors in Justin's case. First, if the digital copy were valid for a long period of time before he chose to purchase the movie, then it's unclear whether the "digital copy included" label is really a false statement. Especially if the general consumer understands that the standard or common market practice is for digital copy codes to have an expiration date, then it may not be that such a label has a capacity to deceive a substantial segment of consumers. A movie seller could also argue against the materiality of the deception here, as the buyer still receives a copy of the movie they purchased, just on a disc, and if they purchased solely to obtain the digital copy, there were other ways to do that more directly than buy a disc. Particularly if the movie was bought on a sale or clearance rack, the consumer might be expected to understand that the lower price is available in part because the digital copy is no longer available, lowering the market value.

A claim could be made for false advertising, but under the available U.S. laws, it would be exceedingly difficult to prove. It would be best practice for movie sellers to include expiration dates on the outer packaging of a movie, and some do, but it may not be required under the law.

The Bottom Line is, false advertising is a unique branch of law that is honestly more focused on large-scale scams than individual grievances. That being said, some movie companies will still honor the digital copy and offer you a new (valid) code if you reach out to them with your complaint after buying in circumstances like Justin did. That's probably the easiest solution, given that no company wants to deal with bad customer P.R. or a lawsuit, even if such a lawsuit would likely be in their favor in the end. Thanks Justin for this great topic suggestion, and I hope you find some resolution to your digital copy conundrum!

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Legal Geek No. 159: Nobody Outsponsors the Hut, and Cryptokemon!

Welcome back to Legal Geek. This week, we cover an interesting story that broke in the weeks leading up to the Super Bowl: a fight over the trademark for "The Official Pizza of Football."  We also look at another recent trademark opposition involving Blockchain and Pokémon.

https://archive.org/details/LegalGeekEp159 

Our first case comes when Genesco Sports Enterprises, a Dallas based company, filed to register a U.S. trademark for Official Pizza of Football.  One might immediately assume the NFL or NCAA would oppose such a registration to maintain their licensing rights, but you'd be wrong.  Instead, it's Pizza Hut that stepped up to oppose this registration.

Pizza Hut has submitted extensive evidence showing their official and exclusive pizza sponsorship deals with these sports organizations and the ESPN College Gameday show.  As a result, the company claims that Genesco's registration would mislead consumers to assume deals were made that are not actually in place.  The fun assertion here is that Pizza Hut is trying to prove who is the official pizza of football, a rare piece of levity in the opposition board proceedings.  But Pizza Hut spends a lot of money to do those sponsorships, so it makes sense they would spend a small amount of legal fees to protect their brand position.  I suspect Pizza Hut will successfully oppose this other registration based on the overlap of their slogan with this intended mark.

If nothing else, we can all agree pizza is one official food of football, across the board.  But you can do so much better for Super Bowl party food, and I hope you did, considering how lame the game and halftime show turned out to be.

In our second story about recent trademark oppositions, Nintendo is back in front of the board opposing another company trying to register a brand too close to Nintendo's IP.  In this case, the trademark is for Cryptokemon, from a company called S&C Digital Solutions.  The intent is to use Cryptokemon to be a blockchain-based digital collectible pets game.

Sound familiar?  Nintendo thinks it does, as the collectible pocket monsters games called Pokémon would attest.  Thus, Nintendo is claiming that this mark is too similar to Pokémon and would confuse consumers by creating an association between the game properties and companies that will not exist.  Nintendo is trying to snuff out this cute title for a blockchain-based game, and it seems like it will be a close call on whether they will succeed.  The names are similar at the end, but that may not be enough to prove consumer confusion.

The Bottom Line is, whether protecting brand position bought by sponsorships and licensing, or guarding against any competitors using a similar sounding name, big companies continuously monitor those trademark applications about to register and they often oppose such applications.  It can be very difficult for small companies and individuals to compete in expensive opposition procedures, and that's probably what Pizza Hut and Nintendo hope for here.  We will keep you informed if any interesting developments come out of these opposition cases.

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Legal Geek No. 158: Netflix sued by owners of Choose Your Own Adventure

Welcome back to Legal Geek. This week, we won't be rapping like last week, but instead, choosing our own adventure, as we cover how the owners of that brand of books sued Netflix last week for potential trademark infringement and dilution.

LINK

As you probably know, Netflix received critical acclaim and positive fan reaction to continuing the British anthology science fiction dystopian series Black Mirror. In the most recent iteration, Netflix made a Black Mirror movie entitled Bandersnatch, in which a computer programmer is making a video game version of a Choose Your Own Adventure book.  Like the books, viewers have the chance to direct which of many branching paths the story goes down using their remote.

Although this has also been done in some other streaming TV works like children's shows, the direct mention of a "Choose" book and its central place in the story set in 1984 for this movie was too much according to the brand owner of this book series.  That company is Chooseco, a company formed in the mid-2000s by one of the original creators of the series.  Chooseco has relaunched the Choose Your Own Adventure book series, selling approximately 15 million books since that time.

One legal theory that Chooseco sues Netflix on is trademark infringement, namely in the use of the Choose name in the story.  Chooseco argues that this was an unauthorized use of the Choose brand that capitalized monetarily on viewers' nostalgia for those books.  Another legal theory posited is trademark dilution.  To this end, Chooseco argues that the dark and sometimes disturbing content of Bandersnatch dilutes the goodwill for and positive associations with the Choose Your Own Adventure mark, thereby tarnishing the products in the marketplace.

Unfortunately for Chooseco, filmmakers like Netflix are often protected from such claims under First Amendment or Fair Use defenses.  Netflix is not actively misleading consumers by referencing the Choose books, and it serves value in explaining how the story works to the viewer.  Furthermore, relative to dilution, the Bandersnatch film may actually improve the market and demand for Chooseco's books.  It is unlikely that a company like Netflix will be held liable under such legal theories, but every judge views a set of facts differently, so we will see how this plays out in court.

That's of course if it make sit to court at all.  Despite Netflix being in a strong legal position, it may be a legal and PR win to settle this claim and take a license from Chooseco, cutting the bookmaker into a small amount of profits from this streaming film.  That's really what Chooseco is after, a slice of the pie, and it also won't be surprising if that's what happens.

The Bottom Line is, authors of creative works like films have a lot of leeway in using known items in the world to tell their stories, and trademarks do not generally stand in the way of such creative expression.  This is only in court because of the money involved, but it does pose an interesting question.  If you'd like to see Netflix win a motion to dismiss, turn to page 47.  If you'd instead like to see Chooseco win a jury trial, turn to page 83.

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Legal Geek No. 157: The Carlton Dance lawsuit against Video Game Makers

Now this is a story all about how, 

Copyright law got turned all upside down, 

And I'd like to take a minute

Just sit right there

I'll tell you how Carlton Dance is in a court near Bel-Air

Welcome back to Legal Geek. This week, as you might have guessed, we cover the lawsuit filed last month over the use of the Carlton Dance made famous in the 90s TV show The Prince of Bel-Air in two highly popular video game franchises.

https://archive.org/details/LegalGeekEp157 

Alfonso Ribeiro is the actor who brought the character of Carlton Banks to life, in The Prince of Bel-Air. One memorable moment from that show was when Carlton dances a jig to a Tom Jones tune, and the way he flaps his arms about became forever known as "the Carlton dance." Homage to this moment has been paid in many other television shows and other contexts, but Ribeiro now says the use of such a dance in two popular video games has crossed the line of copyright infringement.

His claims are against Epic Games, who makes Fortnite, and against Take-Two Interactive, who makes the NBA 2K series. In the case of Fortnite, a purchasable emote called Fresh allows characters to dance in the style of The Carlton Dance. Both of these video game franchises have one thing in common: they make boatloads of money. Hence the primary reason this lawsuit was filed, as Ribeiro seeks a cut of that pie based on the video game developers' decision to use The Carlton Dance as a fun side element of their games.

We discussed a few segments ago the types of rights Jet Li could have been protecting in his ninja moves when he declined to do a bunch of motion capture for the Matrix filmmakers two decades ago. Any copyright Ribeiro has in this dance is based on a similar theory of artistic performance and expression, although unlike many ninja moves, this dance does have uniqueness in the field of dancing. 

Ribeiro is not the only celebrity suing these game makers under this type of legal theory, as other lawsuits by Backpack Kid, inventor of The Floss dance, and by the rapper 2 Milly are also pending in California courts.  Plus, other celebrities like Mike Tyson have sued when iconic elements of their persona or appearance were used without compensation being paid by video game or movie makers.  But does the Carlton Dance lawsuit stand a chance?

There are a few potential hurdles to overcome for this lawsuit. First, Ribeiro performed the dance while working as a performer on a TV show, so there is an argument that any copyright in the dance could be a Work Made For Hire that belongs to the show's producers instead of him. The copyright may not be valid based on U.S. copyright Office guidance offered last year saying that it cannot register short dance routines consisting of only a few movements, even if novel or distinctive. While the Carlton Dance makes for a stronger case for copyright infringement than the other current suits, there are still a lot of potential fatal flaws in this legal case to expect Ribeiro to succeed on the merits.

The Bottom Line is, once again, where there's a lot of money being made, more attention and lawsuits will follow to try and share in the wealth. There's no doubt these video game developers and others who have incorporated these dance moves before them should have attributed credit and possibly paid a small license fee to include these add-ons, especially when they are paid add-ons like in Fortnite. But the moral right thing to do is not always what is legally required, and while The Carlton Dance makes a better case than most, I suspect the court will tell Ribeiro "yo homes smell ya later" at the end of the process.

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Legal Geek No. 156: 2018 Wrap-up and Board Game Gifting Guide

Happy Holidays, and welcome back to Legal Geek. This week, we close out 2018 with answers to where you can find the Legal Geek content, including on other podcasts this year, and then discuss another holiday gift guide in a field we cover frequently.

https://archive.org/details/LegalGeekEp156 

Throughout the year, I receive several questions on whether there's a separate podcast for Legal Geek or another source for prior segments, especially now that this segment has reached a fifth anniversary from its start in December 2013.  While there is no separate podcast as of yet, you can always find the more than 150 prior installments of this segment over at Archive.org, under the user BuckeyeFitzy.  I also keep a running list of my scripts at legalgeekfitz.blogspot.com, but fair warning, these are typically unedited versions of the audio you find on Archive.

I also make appearances at trade shows in the tabletop and video game industry, providing educational seminars to game designers and publishers regarding my chosen field of practice, intellectual property law.  I provided seminars at Origins Game Fair in Columbus, OH and at GenCon in Indianapolis in 2018 and plan to attend both again in 2019.  There are over 300 gaming conventions in the U.S. annually, so if you know one that needs such a speaker, let me know and I'm happy to explore new ones as we move forward.

Finally, a 2018 Legal Geek recap would be incomplete without mentioning a couple of find podcasts that brought me on to guest for full shows.  As usual, I appeared on The Geek All Stars with Dan the board game man this year, specifically in Episode 166 entitled SDJ, Charterstone, and The Law Star Rides Again.  I also appeared on Ritual Misery Podcast near the beginning of the year in episode 150.  If you want a little longer form Legal Geek, check those shows out.

Before wrapping 2018, I also wanted to provide a second gift giving guide I enjoyed for this holiday season, following up on the privacy law-themed one from 2 weeks ago.  This one is just a great overall guide to the best tabletop board games, an article entitled Ars Technica's Ultimate Board Game Buyer's Guide.  If you're looking for a last minute gift and can get yourself to a local game store or Amazon prime, these lists will provide good ideas for gamers of all experience levels.

2018 was a notable year on multiple fronts, including a contentious Supreme Court replacement and multiple landmark cases at that court, including one opening the door for sports betting in all 50 states and another striking a blow at partisan gerrymandering of congressional districts.  We also had plenty of fun legal stories to cover, including the romance novelist who trademarked Cocky, and the surprising legal problems raised by the electric scooter invasion into many major cities.  

The Bottom Line is, the legal and nerd worlds keep generating interesting content and lessons to learn, and I will continue to provide insights into these fields in 2019.  Thank you for listening to this segment and supporting it with your suggestions, and also to Scott and Tom for making this a part of Current Geek for the last 5 years.

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Legal Geek No. 155: Web Scraping Case highlights lesser-known IP Enforcement Rights

Hi, and welcome back to Legal Geek. This week, we cover a case in Illinois from November suggested by subreddit user Gavreh that shows how internet technologies can sometimes force the spotlight on lesser known laws and methods of trying to enforce intellectual property.

https://archive.org/details/LegalGeekEp155 

The case is titled Alan Ross Machinery v. Machinio Corp., and the allegedly infringing conduct of Machinio included using web scraping to extract sales listings from Alan Ross's website and then copied those sales listings on their own site.  The copied material into the Machinio website was mostly factual and did not include specific branding of Alan Ross, so traditional enforcement of a copyright or a trademark was not really available in this case.  However, Alan Ross generated a couple of lesser-known claims under the copyright and trademark laws to try and defend their rights against this practice of web scraping.

The first claim was for violation of the Copyright Act's prohibition against distributing false copyright management information, or removing or altering such CMI.  CMI is generally defined as identifying information placed on a notice of copyright or on a work, and is most often seen online as visible watermarks on images or copyright information in metadata.  This provision came into effect as a part of the DMCA in the late 90s.  If a defendant knowingly removes or alters such CMI when distributing the underlying work, so as to disguise the potential copyright infringement, the defendant can be liable for thousands of dollars of damages under this legal claim, which is separate and independent from a traditional copyright infringement claim.  Furthermore, the copyright doesn't even need to be registered with the U.S. Copyright Office to sue on this CMI ground, which is the opposite of traditional copyright infringement lawsuits.

Alan Ross failed to prove violation of this law according to the court.  As to distribution of false CMI, which was alleged to be done by Machinio at a blanket copyright notice found in the terms of use of Machinio's website, the court ruled that this separate terms website is not conveyed with the works on other websites and thus cannot be false CMI connected to the works.  As to the claim that Machinio removed the CMI in the form of copyright notice found at the bottom of Alan Ross's webpages, the court ruled this notice covered Alan Ross's website itself and not the particular sales listings, so just copying the facts in the form of sales listings did not allow for a claim of removal of CMI from a copyrighted work.

The second claim was for false designation of origin under the Lanham Act, which is the trademark law of the U.S..  False designation of origin exists when a manufacturer or seller lies about the country or origin or maker of its products.  This is kind of analogous to CMI removal claims, just in the branding or source identifier context.

Unfortunately for Alan Ross, there was a prior Supreme Court case called Dastar which ruled that these claims attach only to the producer of tangible goods offered for sale, not to authors of any idea or concept embodied in those goods.  In this case, the copied elements of sales listings were deemed to be ideas or communications embodied in the sales listings, as the actual website listings of Machinio were made by the source of those products.  In other words, Machinio produced website listings using someone else's content, and these website listings did not falsely designate Alan Ross as the source of the website listings, so no breaking of the laws just like the prior Dastar decision.  This is a nuanced application of that prior case, but it makes sense.

The Bottom Line is, Alan Ross Machinery tried to come up with some creative ways under the U.S. laws to enforce their rights and stop the practice of web scraping done by Machinio on the sales listings from the Alan Ross website, but these lesser-known enforcement methods did not work in this case.  However, the lesson to be learned is that there's usually some way to try and stop copying of content even if the traditional methods of IP enforcement do not work, and good legal counsel can open doors not often known to exist in these fields.  Especially in cutting edge fields like internet commerce with relatively newer practices like web scraping.

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