Monday, December 24, 2012

Did the Estate of Mario Puzzo Make Paramount an Offer They Couldn't Refuse?

In a new development in the dispute between the Puzo Estate and Paramount Pictures, Paramount Pictures and Mario Puzo's heirs agreed to drop legal action that began when the movie studio sued "The Godfather" author's estate to prevent the publication of a sequel to the novel about a Mafia family.

The parties voluntarily dismissed the lawsuit, according to a stipulation filed Thursday in federal court in Manhattan. No details were given.

According to an article in The Portland Press Herald:

"Paramount said in its complaint that after Puzo died in 1999, the company agreed to allow Bertelsmann's Random House to publish one "Godfather" sequel, "The Godfather Returns," which came out in 2004. The estate published another novel, "The Godfather's Revenge," in 2006, without Paramount's approval, the studio said. Paramount sued after the estate announced a plan to publish a third sequel, "The Family Corleone."
The sequel, written by Ed Falco, was published in May by Grand Central Publishing, a unit of Paris-based Hachette Livre. The terms of an interim settlement reached earlier this year stated that proceeds from the book would be put in escrow pending the outcome of the litigation, court papers said.
Paramount claimed the Puzo estate infringed its copyright with the publication of the novel and infringed its trademark with the design of the book. Puzo's heirs said that the contract between the late author and the studio gave him certain rights, including book publishing."

While the real "mafia" is reportedly a shell of its former self and its various iterations exist on the fringes of a society well aware of its ruthless nature, its archaic and loosely adhered to code of honor (thank you RICCO and automated 25-life sentencing), and its indefensible methods of ensuring compliance with its demands and resolution of its disputes, this present dispute, while reports reflect an innocuous transgression of events, does cause one to take pause and wonder if there is a studio head at Paramount with a headless horse or barely survived an unwelcome visit from a real life Luca Brasi.  

Thursday, October 25, 2012

Brand of Interest: Presidio Sports

Presidio Sports is an online sports website based in Santa Barbara, California which covers local sports and those athletes or events with some form of connection to the region.  The site has found success in its goal to be one of the first regional sports websites to effectively replace its printed newspaper counterpart, an achievement rooted in its ability to capitalize on the increasing limitations of printed journalism.  Presidio Sports emerged as a viable alternative to other sources of sports news coverage in the Santa Barbara area by offering what both local newspapers and national media outlets could not.

Unlike local newspaper coverage, Presidio Sports had the ability to offer readers the benefits of real time reporting and free news coverage, two significant advantages local newspapers are unable to offer its readers.  Unlike national media outlets, whether online websites such as ESPN or national newspapers such as the L.A. Time, Presidio Sports brand and operations are deeply rooted in the Santa Barbara community and focused solely on local sports stories and local event coverage from the high school to professional level.

In some cases, national sports stories are featured when there is some connection to the Santa Barbara area, for instance, when a professional sports figure gains national attention and grew up in the area of attended UCSB, Presidio Sports will cover such stories without deviating from the brands focus on local sports coverage.

Founder, John Dvorak, came up with the idea for the website while working in the sports section of the Santa Barbara News Press.  Frustrated with the limitations of printed media and the dwindling readership that was increasingly impacting newspapers both locally and nationally, he took his passion for sports reporting and brought it to the Internet, a transition that was ahead of its time when the site launched but is now the trend followed by almost all printed media publications.   Now century old media brands such as Newsweek have only just recently transitioned their publications to an online only format.

Through local strategic partnerships, the integration of audio-visual content, real-time reporting, strong relationships with local sports programs and the schools where they are based, and the hard work of a small but talented group of local journalists, Presidio Sports is not only a case study for the successful transition to online news reporting, but also exemplifies the increasing need for news publications to successfully monetize their websites as advertising revenue is being redistributed from printed newspapers to other advertising platforms.

Presidio Sports has weathered the first few years since its launch and has found success by embracing the online media platform that was the premise behind the brand since its inception.  Given its growing readership and its ability to offer those benefits afforded to the users of online platforms (live streaming of sporting events, lower overhead, and more creative advertising opportunities), Presidio Sports is well situated to become not only a viable alternative to local and national newspapers in the Santa Barbara area, but the leader in local sports coverage in Southern California.  Don't be surprised to see many other publications follow suit, and be ready for Presidio Sports to one day be the trusted source of sports journalism in your area as well. 

Click here to take a look at the Presidio Sports website. 

Wednesday, October 24, 2012

The TEBOWING TM: Press Fumbles With Trademark Law

Intellectual Property Law is a complicated area of law, yet high profile copyright, patent, and trademark cases have caught the public's imagination and intellectual property law is now a niche topic in mainstream news reporting.

The recent Samsung v. Apple patent dispute (one of seemingly hundreds of domestic and international disputes between the two stalwarts of all things tech), for all of the complexities of a mobile phone patent dispute, was widely reported by national newspapers and magazines, less for the implications of the decision on future mobile technology patent disputes, but more likely because the public is fascinated by, and many involved with, the battle for mobile phone and tablet supremacy between the two tech giants.

Trademark law, the benchmark intellectual property right in brand development and protection efforts, has increasingly been the focus of mainstream news reporting.  What these reports have mostly demonstrated to those with a background in intellectual property law is that trademarks have proven as misunderstood as they have proved fascinating to reporters and the public alike.

For each trademark application and dispute that receives the attention of the mainstream media, there are often instances of inaccurate reporting on the implications of and the law behind the story being reported.  This increase in reporting has led many to believe they have an understanding of legal issues that many legal practitioners themselves have trouble sometimes fully comprehending.   

No recent news reporting has more clearly demonstrated this pervasive absence of accurate reporting than the widely covered filing of the TEBOWING trademarks by Tim Tebow.  Through these reports, the public has been led to believe, sometimes through inflammatory claims, that the enigmatic football player owns the right to kneeling into a prayer stance in the manner his fans and foes have labeled TEBOWING.

I knew there was a problem recently when a Twitter search of TEBOWING mostly produced warnings to the public about the possible legal implications for those who continued to do the kneeling prayer stance now that Tim Tebow had secured rights in the TEBOWING trademark.  This public fear was in most cases the byproduct of warnings present on sports news sites, social media platforms, and even in nationally reputable news outlets that because Tebow has secured rights in the TEBOWING trademark, the public need be cautious when mimicking the famous TEBOWING prayer celebration.  Those with even a basic understanding of U.S. trademark law should immediately be wary of these reports, as they plainly overshadow the purpose of trademark law and the limitations on what protection is offered to the owners of United States trademark rights.

First, after a cursory review of the seven TEBOWING trademark applications on the USPTO, it is apparent that Tim Tebow is the owner of the TEBOWING wording as used in connection with the promotion, offering and sale of various goods and services.  These trademark rights do not reference nor ultimately protect Tebow's prayer celebration known as TEBOWING, and it would be counter to trademark law for the United States government to offer protection to such a public act of celebration particularly when not used in connection with any goods or services, but rather in connection with a live celebration within the context of a football game.

Here are several points to take away from the reporting on the TEBOWING trademark applications:
  • If the celebratory prayer were to be offered intellectual property protection, it would most likely be, although probably a stretch still, in the form of pantomime copyright protection, the form of protection offered to detailed choreography dance routines.  
  • Another possibility would be a design logo trademark application that reflected Tim Tebow in his popular kneeling prayer stance, but even then, it would have to be in connection with a specific offering and sale of goods or services, and would not entitle the trademark owner to prevent members of the public from doing an identical or nearly identical celebration in the context of a football game or some other form of public display. 
  • The reporting by numerous news outlets leads to false reporting and thus an inaccurate understanding by the public as to what a trademark is, what it protects, and what it entitles the owner to protection for and what it prevents the public from doing.  This misunderstanding can undermine the very point of the trademark registration system, as reputable news agencies have now themselves led the public to believe, and even fear, they could be liable for copying the popular prayer celebration known as TEBOWING.  
  • Fortunately, as Tebow is relegated to the bench at present, and can't seem to throw a touchdown pass more than 5 yards away, the world of football has been deprived of the TEBOWING celebration for quite some time, something that may be more common on T-shirts than on the football field for the foreseeable future.  
As intellectual property has become more popular in both practice and in the public's discussion of legal issues, it is important that practitioners do their best to offer explanations of these legal topics in ways that sufficiently explain the nuances of the various types of intellectual property rights but also educate the news agencies and members of the public as to the importance of responsible reporting.  Intellectual property rights are only as valuable as the protection they offer and the credibility they have with members of the public, something that can be undermined by such instances of inaccurate reporting. 

Sunday, September 16, 2012


UC Davis Law Review Symposium's BRAND NEW WORLD event is being offered for free to practitioners, is sponsored by Google, and is an event featuring many great minds on both the legal and business side of brand development and protection.  

You can RSVP here.

For those practitioners taking notice, brands are quickly matching if not surpassing patents as a company's most important and valuable intellectual property asset.  When companies such as Google and Apple have trademarks valued in the billions, and when domain names sell for millions, it is quickly becoming apparent intellectual property attorney's roles in the all stages of brand development and protection is based on the changing landscape of both intellectual property law and of business, promotion and commerce itself.  

The UC Davis Law website offers the following information about the much anticipated and increasingly relevant and timely event:

"UC Davis Law Review invites you to attend its 2012-2013 symposium, "Brand New World: Distinguishing Oneself in the Global Flow." The conference, sponsored by Google, will discuss one of the most important issues in society and modern commerce: the role of brands in our lives. 

Two dozen of the world’s top scholars of trademarks and brands, from Cambridge, Oxford, NYU, Stanford, Princeton, Hong Kong, the Max Plancke Institute, and the London School of Economics, will discuss the future of brands and trademark law."

As a firm who has based its own brand on the increasingly important role of IP attorneys in the development and protection of brands, Brand Ventures IP Law will be there to learn, network, and show our support for a subtle yet significant shift in the practice of IP law.  

We hope to see you there, and for those not able to make it, or for those who we presently represent or will in the future, it is the continuing exposure to the ideas being discussed at these events which we believe will help us become better positioned to share and utilize innovative new strategies and to embrace changes in the practice of intellectual property law so that  we will better qualified to protect the brands that we work hard with you to develop.  

Tuesday, July 31, 2012

USPTO Video No. 4: Applicant Information

This part of the Trademark Application process often strikes both 
novice Applicants and seasoned IP attorneys as the most simple part of the 
application; however, it never surprises me how often I hear of refusals resulting 
from the information requested in this section of the application. 

For help with a U.S. Trademark Application or a subsequent Office Action,
feel free to contact Brand Ventures IP for a FREE CONSULTATION.

Sunday, July 29, 2012

USPTO Video Series #3: Trademark Clearance Searches

The information contained in this video is introductory, but nonetheless, important for every practitioner  
or potential trademark filer to know.  If you have remaining questions in regards to trademark searches 
and conflict determinations, this video can be a helpful refresher or educational on a new area of law.  
Enjoy and if you have any additional questions on this area of law, feel free to email Brand Ventures 
IP Law at and we'll try to reply to every inquiry as soon as possible.

Tuesday, July 17, 2012

The Brooklyn Nets and Rebranding A Sports Team: How Players Personal Brands Impact the Rebranding of an Entire Franchise

New City, New Owner, New Arena, New Logo, even "New Jerseys". Over the past year, much has been made over one of the largest public rebranding efforts to impact American sports in decades. Attempting to make the most of a move to a city that is home to its own recent notable rebranding efforts, the New Jersey Nets have done much to capture the publics imagination with its move to Brooklyn and have made it clear that this team will be new in almost every way. 

Starting with the purchase of the team by Russian billionaire Mikhail Prokhorov over two years ago, a brash new style of ownership commenced with selling the message that the move to Brooklyn would not be simply a relocation of the team but a complete rebranding of the Nets as an NBA franchise. The Nets have benefitted from their popular association with minority owner Jay-Z, the generous financing for their Arena by Barclays Bank, and their change to a new team logo which may reflect the only aspect of the move to Brooklyn that could be described as "minimalist". 

While all of these factors bode well for the teams future success in Brooklyn, one important point stands out when it comes to rebranding a sports team, that your team brand is only as strong as the brand of those players on your opening day roster. Cue to Dwightmare (a trademark not liklely sought out by Orlando's Dwight Howard) 2012, and you can see how much star power, particluarly in the NBA, means to the brand of a team. The Nets, realizing that to add a star of D12's stature, they would have to retain a player of Deron William's stature, did what was necessary to bring back the Texas native whose eye had been wandering towards his hometown Dallas Mavericks since the Free Agency period began.  

In order to keep Deron Williams, and thus further their efforts to land Dwight Howard, the Nets knew they had to add an attractive piece to the roster. With most teams holding onto their franchise superstars for dear life, one player was notably very available, Joe Johnson of the Atlanta Hawks. The currrent owner of the most head-scratching contract in the NBA, a contract that exceeds those of Lebron James, Dwayne Wade and Carmelo Anthony, Joe Johnson was widely thought to be significantly overpaid based on his Tier 2 talents, lack of star power, and his lack of connection with Atlanta fans. To Atlanta, he was expendable and his trade necessary in order to start their own rebuilding process, to New Jersey, he was the player who could help keep the player that would land the player the Nets truly wanted on their opening day roster.  

In an era of the "Big Three" in the NBA, where in order to compete or be attractive to available players, a team must have a trio of stars-super stars on their team, the Nets made the trade for Joe Johnson, and although not their preferred player of choice, he was instrumental in working out an extension for Deron Williams. Without Deron Williams, the Nets would have opened their new arena with a roster largely seen as a disappointment. So while the analysts can argue the finer points of the competitiveness of the Nets roster, the teams rebranding efforts should be viewed as a success.  However, without landing those first two star pieces, and keeping hope alive to land D12 sometime over the next year, the new arena and those new uniforms would have, on opening day, felt otherwise quite empty.  For more, a NY Times recent article  and a LA Times article on the Brooklyn Net's rebranding efforts.  

Sunday, July 15, 2012

Sports and Branding: Trademarks Become Part of the Play Book

As recent sports news coverage has demonstrated, most notably an article by ESPN on the subject of athletes and trademarks, athletes have learned the rules of branding and are ready to play the game.

With the speed that Jeremy Lin captured the public's imagination with his uncommon rags to riches story where the subject had to overcome the limitations of being a Harvard graduate, LINSANITY became a national phenomenon almost overnight.

As his popularity skyrocketed and his brand went from non-existent to one of the most viable in the NBA, savvy members of the viewing public began to file applications for the LINSANITY mark in connection with goods and services ranging from apparel to business management.

After threats of legal proceedings caused most third parties to settle and get out of the lane, Jeremy Lin has been recognized in various news reports as the exclusive owner of the LINSAINTY trademark.

Mere months later, Anthony Davis, the No. 1 pick of the 2012 NBA draft and the new face of the New Orleans Hornets, sought to preempt any such cherry picking of his trademark rights by the general public and filed for several brow raising trademarks.  Realizing the potential fodder his unique unibrow look may provide for fans and reporters alike, he filed for the following trademarks:  BROW DOWN, FEAR THE BROW, and RAISE THE BROW.

Now that athletes have realized the value of their personal brands, expect such preemptive filings and agressive legal action to become more commonplace, putting a trademark lawyer right there with a sports agent and personal manager as essential components of an athletes entourage.

Wednesday, July 11, 2012

Brand of Interest: Wes Nyle - "All Bad"

Proud to introduce our Brand of Interest segment to our Blog - An introduction from us to you of a brand affiliated with or watched closely by Brand Ventures IP, be it an artist, a product, a service provider, or even a colorful logo or catchy jingle.  This segment is a lesson in itself of the power, utility and necessity of social media promotion and underscores the changing landscape of self promotion.  Long gone are the days where to establish a recognizable brand such a task required significant financial resources and contributions from outside third parties.

Done strategically and with dedication, with a Facebook page, a Twitter account, some content on YouTube, and most importantly a viable brand, you can create not just the perception of success but you can create success itself.  When buyers, labels, studios, investors in the past had significant leverage in the initial negotiaiton phase based on their need to see proof that a brand could be successful, now you can come to such negotiations with the proof they are looking for.  The potential of a brand to be a successful venture can now be shown, often times for marginal costs, through the demonstration of quantifiable public interest (likes, followers, views, etc.). Some advice for the following Brand of Interest: TURN IT UP!

Monday, July 9, 2012

iPad: Is Apple's Trademark Generic or Just a Valuable Brand?

Apple has always been afforded substantial trademark protection for their various device trademarks that place an "i" in front an otherwise generic word. However, as an attorney who works with the USPTO daily, I have noticed that most other companies are afforded no such protection. On one hand, Apple is extremely capable of proving acquired distinctiveness, which is commonly proven by such factors as marketing budgets and surveys proving consumer awareness and association with a particular company.

Acquired distinctiveness is a status that typically requires a period of five years of sole use that is uninterrupted by third party use of the trademark. As Apple's legal team is surely to use their vast resources to ensure their marks remain solely used by and associated with Apple, it is likely they never have a problem with third party usage. On the other hand, there is a point where you cannot offer such protection to any marks as it becomes so synonymous with a product or service it would be akin to allowing Ford to have exclusive rights to refer to a line of their cars as "stationwagons".

Therein lies the give and take is such determinations, and is the reason that while Apple is likely safe for the time being, there may come a point that putting a mere "i" in front of otherwise generic word will no longer allow Apple to monopolize such wording as PAD, POD, PHONE, etc. It is one of the paradoxes of trademark law and brand protection, that especially those marks that are most recognizable and strong are at the same time the most vulnerable to such challenges based on genericness (see Google and the recent challenge in Federal Court over the genericness of their search engine trademark, and see also TiVo's strict trademark guidelines for an example of intensified policing efforts). These companies use vast resources to ensure they do not suffer the same fate of brands that suffered a complete loss of highly valuable trademarks (see BANDAID and THERMOS for examples).

An article by the LA Times recently published discusses Apple's most recent challenge to one of their most valuable brands, one that is sure to be a highly valuable IP asset for years to come, and even more so as tablets lead the charge as one of the devices looking to replace traditional computers.

Quote of the Day

"The protection of trade-marks is the law's recognition of the psychological function of symbols. If it is true that we live by symbols, it is no less true that we purchase goods by them. A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants, or what he has been led to believe he wants." Justice Felix Frankfurter

QR Codes: Law Firms Join The Party

The days of QR Codes being used solely as coupons and price checks are gone and now even law firms are joining the QR Code party. Law firms, as with other more traditional service providers, are finding innovative ways to integrate QR Codes into their promotional efforts. Here are some of the ways QR Codes are currently being used to promote law firms: 1. On business cards to link to contact information, directions, newsletters, or webpages; 2. On websites for clients to store contact information on their smartphones; 3. On law firm blogs to link to a law firm's main website (scan image to the left); 4. To link to a webpage offering a free consultation, ebook, or free report; 5. To link to an video tutorial on a specific legal issue or area of law.

Is Facebook A Platform Made for Branding or Advertising

An interesting read discussing if Facebook can truly emerge as an alternative to Google as a global advertising platform. The article discusses the difference between achieving viability as a branding medium, something Facebook has already proven it does quite well, and achieving viability as a advertising medium, a crucial component of Facebook's future monetization efforts and an essential step in justifying its arguably unjustifiable corporate valuation numbers. While it seems an afterthought to most established and emerging brands that to have a Facebook page is the first step to joining the social media world, it has yet to be shown whether they will ever be considered on the same level as Google in the online advertising world. Only time and pay-for-clicks will tell.

Monday, June 4, 2012

USPTO: Trademark Rule Change - New Requirements for Specimens and Affidavits for Declarations of Use

I have been of the opinion for quite some time, that specimens should be required for each good and/or service listed in a trademark application so as to leave no doubt as to any elements of fraud, lack of bona fide intent, or for renewals, abandonment. It appears that while the USPTO has not gone so far as to require such proof of use at this time, based on the new rules going into effect on June 22, 2012, they are definitely heading in that direction. NEW USPTO EXAMINATION RULES