Larry Flynt: Trademark Guru?

In a case that is both interesting and humorous on so many levels, Larry Flynt - the publisher of Hustler magazine - is suing two of his nephews for trademark infringement. The trial started earlier this week in U.S. District Court in Los Angeles. The nephews - Jimmy Jr. and Dustin Flynt - used to work for their uncle, but he fired them in 2007 for being "unproductive". In an effort to show he wasn't an altogether bad fellow, Uncle Larry gave each of the nephews $100,000 as severance money. The nephews then used the money to start an adult film company using the brand name FLYNT that competes with Hustler's adult film company. In what would otherwise be a fairly typical trademark infringement case, Uncle Larry filed suit to stop the nephews from using his name and arguably confusing the public into thinking the nephews' company is somehow associated with Larry Flynt and Hustler. This aspect of the case highlights one of the unique facets of trademark law: trademark laws are designed not just to protect the trademark owner; they are also supposed to protect the public from being confused as to the source of the goods or services sold under the trademark.

Uncle Larry hired an expert to conduct a survey and the survey showed that a majority of consumers presented with images of the nephews' films with the FLYNT name on them associated the nephews' FLYNT films with Uncle Larry. If the jury is persuaded by that evidence, that is going to help Uncle Larry's case. So will the fact that the nephews used the following phrase in their promotional flyers: "You know the name, you know the game". That might convince the jury that the nephews were trying to trade on their uncle's fame. The nephews' lawyer has countered with a good - if slightly tongue-in-cheek - response: consumers of pornographic films are "careful and discerning" when it comes to choosing the films they watch or buy and carefully study the product before making a purchase. Therefore, there is not much of a chance that consumers will be confused or led to think that the nephews' FLYNT films come from the same source as Hustler's films. Although many people find jury duty boring, we suspect that the eight jurors in this case will be able to pay attention during the trial. After all, as Uncle Larry has said in criticizing the films produced by his nephews: "I think there is a thin line. As a society we've come to accept what I like to refer to as 'vanilla sex'. But if you get too trashy, people get uncomfortable". We can hardly think of anyone these days who would be able to speak more authoritatively than the elder Flynt on this subject. Filtering out the subject matter for the moment, from a pure trademark perspective we believe Uncle Larry has a compelling case. More to follow as the trial is scheduled to end next week.

Grammy Nominations - 2010

We are pleased to report that our good friend and client Steve Vaus - professionally known as Buck Howdy - has just been nominated for two (count 'em - two!) Grammy nominations. The nominations were announced last night. The first nomination is for Buck Howdy's "Pete Seeger Tribute - Ageless Kids' Songs" in the Best Musical Album for Children category. The second nomination is for Buck's "Aaaaah! Spookey, Scary Stories & Songs" in the Best Spoken Word Album for Children category. Some artists get multiple nominations for the same song or same album in multiple categories. But it is pretty rare for one artist to get nominated for two separate albums in the same year. Congratulations to Steve!

Copyrights: Online Copyright Application Tips

The U.S. Copyright Office ("USCO") may have implemented an online copyright application system a little more than a year ago, but there are still some serious bugs in the system that need to be worked out. Here are a few important tips to keep in mind when filing a copyright application online: print out and keep hard copies of (1) your copyright application; (2) the application filing receipt you receive by email from USCO after you file your application; (3) the fee payment receipt you receive from USCO; and the deposit specimen receipt you receive from USCO. Keep all the hard copies in a safe and easy-to-locate place until you receive your actual registration certificate. Why? Because it will probably take USCO anywhere from 12-18 months to process your application and issue the actual Copyright Registration Certificate. In the meantime you may need your complete copyright application package if you need to prove to anyone - including a court - when you filed your application and that you filed everything properly. Along those lines, be sure to keep an exact copy of the work (screenplay, novel, computer program, illustrations, etc.) you submitted to USCO with your copyright application. The reason: since authors and creators often develop different versions of the original work, it is vitally important to be able to prove exactly what version of your work you submitted with your copyright application.

Report From the Intellectual Property Front Lines

Having just returned from the three-day annual Intellectual Property Law Institute sponsored by the State Bar of California, we are still processing what we heard. As you might imagine, the odd combination of the ongoing growth of technology and the recession continues to create new intellectual property legal issues that simply did not exist ten years ago. We plan to provide more in-depth reports about the IP Institute in the days to come, but here is a short list of some of this year's highlights:
* Trademark and domain name disputes are continuing to explode and the landscape will only get more challenging for brand owners as the number and variety of top level domain names (.com, .net, .org, etc.) expand almost geometrically;
* Although the U.S. Copyright Office's efforts to implement an online copyright registration system have been well-intentioned, the Copyright Office is seriously underfunded and the online registration system is slower than the previous hard paper-only procedure;
* As the cost and difficulty of enforcing patents increases, so does the importance and value of using trademarks, copyrights and trade secrets to protect and exploit your brands, content and inventions; and
* In what may be more than just a nod to the explosion of social media/networking, Facebook's former privacy chief who is running for California Attorney General delivered one of the Institute's keynote addresses.

More to follow in the days to come; stay tuned.

Endorsements, Bloggers & The Federal Trade Commission: New Rules

The U.S. Federal Trade Commission ("FTC") has just released new rules and guidelines that will govern the disclosures advertisers must make about endorsements contained in their ads and any payments that are made by the advertiser for the endorsement. The rules include bloggers and place a greater duty on celebrity endorsers to be truthful about their connection to products they endorse. Here is a brief FTC summary of the new guidelines. Our initial thoughts about the new rules: be upfront and disclose who is really behind the advertisement, blog, etc. This is going to be interesting and challenging. More to follow.

Copyrights & Music:Does a Cell Phone Ringing in Public Violate Copyright Law?

In an important ruling for the millions of cell phone users whose ringtones play in public - and for the cell phone companies that provide the ring tones - a federal court in New York just ruled that merely playing the ring tone in public for personal (not commercial) purposes is not a "public performance" that would trigger a royalty payment to the copyright owner of the song the ring tone is based on. One of the keys to the decision was that it is limited to personal uses of ringtones "without any purpose of direct or indirect commercial advantage". Thus to the extent someone might be interested in playing ringtones in public for commercial purposes - let's say a "Battle of the Ringtones" contest - this ruling would not apply. Beyond that, one of the interesting tidbits that came out of the court ruling is confirmation of the amount of money the cell phone companies pay in royalties for reproducing the song to begin with: 24 cents. Here is a summary of the court opinion and for those who are really ambitious, here is a copy of the court opinion itself.

A New Kind of Musical Rhapsody: Brian Wilson Set to Complete Some of Gershwin's Unfinished Works

The L.A. Times reported today that Brian Wilson - the legendary songwriter and co-founder of The Beach Boys - has been granted permission to complete some of the unfinished musical works that George Gershwin left behind when he died prematurely at age 38 about seventy years ago. The newspaper story goes into some detail to explain how this came about after all this time and why Gershwin and Wilson may not be the strange musical bedfellows they appear to be at first. This kind of extraordinary creative endeavor holds great promise. We will look forward to the results with great anticipation. And....here is a link to one of our favorite Brian Wilson/Beach Boys compositions of all time which wasn't necessarily a hit: "The Warmth of the Sun". [Brian W. reportedly wrote it the day of the JFK assassination].