Trademark Law Memo Assignments – Fall 2010

Each memo assignment for Trademark Law – Fall 2010 will be posted here approximately two weeks before the memo is due. Time in class will be set aside to discuss questions relating to each assignment.

For students who want to know more about the writing assignments for this course, this is a link to the memo assignments from the Fall 2009 version of the course. This is a link to the best memos written in response to the first assignment from the Fall 2008 version of the course.

Assignment Three

To: Junior Lawyer
From: Senior Lawyer
Date: November 22, 2010
Re: Rocket Science Games II

We have a new client, called Rocket Science Games (RSG), which is in the video game business. (Technically, if you know video games, you know that there was an earlier Rocket Science Games, which went out of business more than a decade ago. Their motto was “Yes, in fact we are rocket scientists.” Because of the history, I refer to the client as RSG II.)

The two principals of the company have already raised $5 million from investors, which is an incredible amount of money in this economy. It’s easy to see why investors would be excited: the proposed product is a videogame (or series of games) that would combine the capture-the-flag format of the massively popular videogame Halo with major rivalries of professional and college sports.

If you aren’t a videogame fan, then here’s a brief summary of a Halo-style capture-the-flag game: two teams of players (these can be computer-generated and controlled players, or live players logged in to an internet version of the game) slug it out with an assortment of armor and weapons to capture each other’s flag. Unlike your childhood games of capture-the-flag, these games are violent and bloody. In Halo itself, these teams are “Red” and “Blue.”

RSG II would give each team the ability to choose a color scheme associated with a major professional or college sports team, so that a maroon-and-silver team (Ohio State) could face off against a blue-and-maize team (Michigan). USC (cardinal and gold) could face off against UCLA (sky blue and gold). The Yankees (blue pinstripes against a white background) could play the Red Sox (red and white). Famous teams in other countries could be represented, like Real Madrid (white) and Barcelona (blue and red) in soccer. Players could choose preselected color schemes, or could use a color palette to design their own. None of the names of the colleges or professional teams would be displayed in the game in any way, however.

In addition to allowing players to choose their own colors, RSG II wants to allow players to choose their avatars. “Avatars” are animated characters that represent players in an online environment. In Halo, players have ordinary human avatars who wear armor. RSG II wants to give players the ability to select things like medieval knights, orcs, dwarves, trolls, and monsters, all of whom would wear the chosen color schemes. (You are free to imagine that this would create a cross between Halo and World of Warcraft!)

Surprisingly to me, the principals managed to raise all of their money without getting detailed IP advice about their game plan. (Apparently, these are computer science grad students who are the children of some famous venture capitalists.) At the insistence of the investors, who have been told by RSG II that producing and playing the game does not require clearing any IP rights, they’ve now retained our firm to provide a more sophisticated analysis. Unfortunately, I’m not absolutely confident that RSG II is completely on the right side of the IP line. I don’t worry about copyright problems. The new games feel like Halo and a little bit like World of Warcraft (WoW), but they don’t copy either one – except for the capture-the-flag aspect, which no one owns, and the avatars, which don’t look like the WoW avatars. I worry about the colleges and professional sports teams raising a fuss about game players using their colors without permission or payment, especially since this is an obviously commercial product.  Off the top of my head, I can think of some relevant cases – Smack Apparel, ESS Entertainment v. Rock Star, and Alabama v. New Life (which is on appeal, I believe).

Can you please put together a brief memo that makes the best case for why neither RSG II nor the people who play its game owe royalties to the schools and teams, and also makes the best case for the schools and the teams? If you believe that the current plan creates unreasonable risks for RSG II, then identify how the game should be changed to limit those risks – without changing the basic template that the investors have signed up for, of course.

In total, your memo should be not more than 4 pages. Please deliver it to me not later than 12 noon on Friday, December 17, 2010.

Rules and Guidelines for Assignment Three

The Rules and Guidelines for Assignment Three are the same as the Rules and Guidelines for Assignments One and Two, which appear below, with the exception of the due date and time.

Assignment Two

[This assignment is based very loosely on a real and contemporary situation. “The Original Brooklyn Water Bagel” company is a real company, and it is now in the process of suing a rival for trademark infringement, appropriation of trade secrets, and unfair competition. It is also in the very early stages of attempting to register a mark in the company’s name. For purposes of this assignment, you may assume that the company in question is the real Original Brooklyn Water Bagels, but you should disregard the circumstances of that lawsuit and of the application.]

To: Junior Associate, Dewey, Cheatem & Howe
From: Senior Associate, Dewey, Cheatem & Howe
Date: October 29, 2010
Re: The Original Brooklyn Water Bagels

I need your help with a licensing deal that has suddenly gotten more complicated than I expected.

Our client is “The Original Brooklyn Water Bagels Co.” The company has developed a technology that filters and treats water (local tap water) so that it tastes and feels like the soft water that is characteristic of the greater New York area. (Brooklyn, as I assume you know, is a large borough that is part of the city of New York.) The soft New York water is legendary for giving a distinctive taste and texture to that area’s water bagels and pizza dough. Our client’s technology can be sold in water filtration systems that can be installed anywhere – and most parts of the US offer relatively “hard” water – so that the purchasers of these systems can produce water bagels and pizza dough that could otherwise be produced only in the New York area.

So far, the client hasn’t sold any of these systems to others, but it has installed and used a system at a store in Delray Beach, Florida, where the company is based. (Delray Beach is near West Palm Beach and just north of Ft. Lauderdale and Miami.) The name of the store is “The Original Brooklyn Water Bagels Co.” The store sells bagels and sandwiches, and it sells bottled water, all produced via its filtration system. Since the store opened in June 2009, it has been the subject of a lot of press coverage in South Florida. The snowbird community (New Yorkers who winter in South Florida) and retirees from the New York area are eating it up, so to speak. The store is doing extremely well.

The licensing deal arose out of a recent problem. A restaurant in Boca Raton, near Delray Beach, opened about three months ago under the name “Only in Brooklyn Bagels.” At the client’s request, we sent them a cease and desist letter and an offer to sell them one of our client’s filtration systems and become an authorized licensee of the “Original Brooklyn Water Bagels” mark.  They are willing to buy the filtration system.  But they are not willing to license the mark and change the name of their store. 

Practically speaking, I suspect that they simply don’t want to share their profits with us, so they may just be taking a negotiating position for leverage.  Legally speaking, however, they have raised a troubling point. They claim that the “Original Brooklyn Water Bagels Co.” mark is invalid, because it is deceptive. If they’re right, then our client has a real problem, and not only because the client has a weak negotiating position against Only in Brooklyn Bagels.  Our client has big plans to sell franchises around the US under that name, rolling out the filtration technology in soft water-based restaurants (bakeries, bagel shops, pizzerias, full-service restaurants) everywhere.

Here is what I need you to answer: Is Only in Brooklyn Bagels right about the deceptiveness of the mark? Are there any other problems with the mark that we should know about now? If there are problems with the mark, the client is going to want to know what it should do about them. What do you recommend?

Please confine your memo to four pages, and return that memo to me not later than Friday, November 12, 2010 at 12 noon.

Rules and Guidelines for Assignment Two

The Rules and Guidelines for Assignment Two are the same as the Rules and Guidelines for Assignment One, which appear below, with the exception of the due date and time.

Assignment One

To: Allen & Allen, Outside Counsel, Boise State University
From: General Counsel, Boise State University
Re: Protecting The Blue
Date: September 27, 2010

As we are certain you know, in advance of last weekend’s football game between Boise State and Oregon State, the football coaching staff at Oregon State painted one of their practice fields blue in order to imitate the blue turf field at Boise State’s famous stadium, widely known as “The Blue.” According to the Sporting News, the staff at OSU took this unusual step because a scheduling conflict prevented OSU from having an opportunity to conduct a pre-game “walkthrough” practice at The Blue.

The Athletic Director at BSU called this department after hearing about the OSU incident, very unhappy that OSU would be permitted to do such a thing. His view, with which we tend to agree, is that the federal trademark that Boise State obtained recently for its blue field is designed expressly to keep other college football teams from using blue fields. (In the federal trademark office, the mark is protected by Registration No. 3707623.) We want to head off the possibility that other colleges or universities could use the color blue for their practice or playing surfaces in the future. Unfortunately, in the OSU situation, the whole thing came and went too quickly for our office to take effective action. That situation also suggests, however, that other colleges and universities do not regard BSU’s trademark as affecting their activities. I am concerned, in other words, that BSU has what appears to be a weak mark.

I would like your firm to conduct a review of the strength of the mark. Please pay particular attention to possible weaknesses in BSU’s position, and give us solutions to those weaknesses that could be used in an aggressive strategy going forward. In the interests of cost-effectiveness and efficiency, please confine your work to four pages, and return your work to me not later than Friday, October 8, at 4:30 pm.

Rules and Guidelines for Assignment One

To the extent that these rules may appear to conflict with general advice regarding memos that appears in course-related webpages, these rules take precedence.

This is an “open” problem, meaning that there are no limits on the resources that you may bring to bear on your work. Among other things, you may consult with your classmates and other human beings. If you discuss the merits of the assignment with anyone, however, you must disclose that person’s identity on or in your memo. Write the names of any student “consultants” at the top of the first page of the memo.

Use your own name in the “From” field. The memos are not anonymous.

Format

Memos must be typed or printed using a computer. Each memo, including any attachments, must be not longer than four [4] typewritten or printed pages, double-spaced, with 1″ minimum margins on all sides. (“To,” “From,” “Re,” and “Date” headings may be single spaced.) You do not need to include a comprehensive statement of the facts; instead, you may refer to the factual background in my memo to you. A factual summary may be helpful, however, in framing and presenting the analysis of the memo. No footnotes are permitted. The following font must be used: Twelve [12] point Times New Roman.

Grading

Memoranda will be graded based on form, format, and writing quality as well as on content. The assignments are designed so as not to have any single correct or even best solution. Each problem may present a range of issues that the memorandum should identify, analyze, and solve in a creative way.

Due date

One hard copy of the work product prepared for this assignment must be turned in not later than Friday, October 8, 2010, at 4:30 pm. Memos may be turned in either to the Registrar’s Window or to Ms. Melissa Shimko, in Room 314, or handed personally to Professor Madison. Electronic (e-mailed) copies are not acceptable. Memos slipped under anyone’s door are not acceptable. There were be no extensions or exceptions to this deadline. Memoranda that do not conform to the format instructions above, or that are turned in late, are subject to grade reductions.