The Team Who Will Not Be Named: The Redskins and Slate

This week, Slate announced that it would stop referring to the NFL team from Washington, DC, as the Redskins.  With this decision, Slate joins Washington’s City Paper, as well as the Buffalo News and the Philadelphia Daily News, in their refusal to use the Redskins moniker.

Litigation over the Redskins trademark has been protracted and convoluted.  Substantively speaking, the litigation has focused on disparagement, which allows a trademark registration to be cancelled if it is disparaging to a substantial composite of a referenced group.  Pro Football, Inc. v. Harjo was, however, decided on laches, which is a particular vulnerability for plaintiffs claiming disparagement.  (In this particular case, it  has also resulted in an odd situation whereby a new case has been filed in the TTAB over the same issue but with younger plaintiffs.)

The standard for disparagement is less than clear.  Many TTAB decisions and court opinions have found that a mark just is disparaging with little supporting analysis.  What is enough to be “substantial”, and what the parameters of a “referenced group” are, are often problematic (and have both been particularly problematic in the context of the Redskins litigation).  Another problem with the standard is that it requires a mark to be disparaging at the time of registration.  Thus, if a trademark was registered at a time when racism was socially acceptable, it might be more difficult for plaintiffs to petition for cancellation either because members of the group internalize that racism, or because the groups are not empowered enough to bring an action for disparagement in a timely fashion.

Extra-legal solutions, such as the decision by Slate and other media outlets, can be more effective than courts at addressing these issues.  It’s not because of litigation, but because of market forces (including an evolving social and cultural climate), that a trend has developed toward elimination of American Indian school mascots at both collegiate and high school levels. The NCAA has banned conference play for teams with American Indian mascots, resulting in changes to more than a dozen teams.  Other Universities, such as the University of Wisconsin-Madison and Iowa, have refused to schedule non-conference games against teams with American Indian mascots.  Outside the courtroom setting, increased pressure has resulted in a steady decline of use of American Indian references in sports teams across the US.  Whether or not these pressures reach the NFL team from Washington DC, however, remains to be seen.

Bye, Bye Big Brands, Twinkie, Ding Dong: Hostess Brands, Inc. Liquidating

Ghostbusters, Die Hard, my lunch in grade school all had Twinkies (OK my lunch also alternated with Ding Dongs). In Ghostbusters the Twinkie symbolized psychokinetic energy, in Die Hard it substituted for a cop’s doughnuts, in my lunch it was I guess dessert but substituted for real food. The Wall Street Journal reports, however, that the era is over. Hostess Brands, Inc. is seeking permission to liquidate the company. It’s attempt at reorganization has failed. According to WSJ, “A victim of changing consumer tastes, high commodity costs and, most importantly, strained labor relations, Hostess ultimately was brought to its knees by a national strike orchestrated by its second-largest union.”

There are real people, places, and assets behind these brands. 18,000 workers will lose their jobs. 36 plants will close. The facilities and land will be sold. There is product inventory too. “Loaves of bread and plastic packages of icing-filled desserts” need to go. WSJ suggested that big box stores will be where the food stuff ends up. I remember when Coke changed its formula and folks hoarded the original Real Thing. I wonder whether that will happen with Twinkies. (Given the supposed shelf-life of a Twinkie, a strange pastry cellar built for and owned by some fanatic seems plausible to me).

And, Hostess Brands will sell…its brands. That is where the most money may be made. As I point out in From Trademarks to Brands, brands are not the same thing as trademarks. In the early days of trademarks, one could not sell a brand without the facilities. Today the brand as assest is a given. Selling it as thing is sanctioned by the law even though such practices do not do well within the law economics explanations for trademarks. I argue that a way to understand the move from direct competition to anonymous source, the growth of goodwill, and the expansive view of merchandising and licensing can be explained by brand practices much more than Landes and Posner’s law and economics view. (64 Florida L. Rev. 981, 1009-1019).

I wonder how folks will perceive the sale. If a company buys the name Twinkie or Ding Dong and then makes the cakes with different ingredients or sources for the ingredients, will that matter? What if the taste varies? What if in a year people think Hostess still makes Twinkies and buys the brand based on that error? Is that confusion we care about? Maybe we should not care about any of these. Then again if someone buys Twinkie and uses a new recipe, and then someone makes Twinkies with the original recipe, should that be allowed? Probably not but why is unclear. A healthy market that assumes rational consumers should be able to let information about such variances drive the market, right? Of course we don’t do that in trademark law.

Hmm, perhaps some sugar will help fuel thinking through these points. Better get Twinkies and Ding Dongs before this incarnation is gone.

My Brand Journey, Part I

Right out of law school, brands were on my mind. I began at Quinn, Emanuel and learned trademark law practice there. I picked up on the way companies such as Mattel, the Academy of Motion Picture Arts and Sciences (think Oscar Awards), Lockheed Martin, and others thought about trademarks. They called them brands. My paper with Sandy Rierson, Confronting the Genericism Conundrum started my work on the topic. We looked at the core value of a brand and started to poke at the blended functions of a brand with which trademark law struggled. We argued that information costs have dropped and that courts looked to uses that did not matter as they determined the status of a mark (at 1834). We also showed in relying on dubious evidence and not paying attention to the broader linguistic aspects of trademarks, courts set up incentives for policing that not only made little sense but are wasteful, not to mention fostering unnecessary clashes between expression and trademark interests (1835-1842). At that point we argued that looking at how consumers encounter the mark in a market setting may help parse the issue. As we put it,

Consider that a person with a cold can walk into a colleague’s office, ask for a “kleenex” and be handed a tissue but not a Kleenex®-brand tissue. At that moment the person with the runny nose is likely to accept the tissue offered without complaining or caring about the brand. When that same person is in a supermarket, however, he may certainly care whether he buys Kleenex® versus Puffs® brand facial tissue, due to his experience with the brands’ relative softness or thickness.

After that piece, I read more and thought about whether trademark law and the search costs approach mapped to branding practices. They don’t. More on that in the next part.

The image is of a coaster available here.

Brief Initial Thoughts on Apple v. Samsung

Mike sent out the call for some commentary on this case, and I thought I would oblige. I don’t have time for a detailed post; I’m too busy getting ready for the first day of school on Monday. Of course, I seem to have enough time to do interviews, so might as well post some thoughts here.

So, here are my top 6 takeaways:
1. The jury hated Samsung. Perhaps this is in line with Mike’s argument about the magic. Mark Lemley said on NPR earlier that the jury was careful. I think he is right — to a point. Yes, the jury did not find liability on absolutely everything. But I am certain that if it was a close call, Samsung lost.

2. This leads to my second point. How did the Galaxy Tab escape design patent infringement? This was the only device to be preliminarily enjoined (on appeal no less), and yet it was the one of the few devices to be spared the sledgehammer. And, by the way, it looks an awful lot like an iPad. (Edit: Be sure to see this Guest Post, which provides a decent explanation for why, though I’m not fully convinced) Yet the Epic 4G, a phone I own (uh oh, Apple’s coming after me) — which has a slide out keyboard, a curved top and bottom, 4 buttons on the bottom, the word Samsung printed across the top, buttons in different places (and I know this because I look in all the wrong places on my wife’s iTouch), a differently shaped speaker, a differently placed camera, etc. — that device infringes the iPhone design patents. (Turns out I was wrong on this, and that is a good thing. The Epic 4G didn’t even make the jury form. The 4G Touch did, and that is a lot closer to the iPhone Face design patent. I still think it is too broad, but it’s not as bad as I thought).

3. More generally, then, this case is going to require courts to rethink (which assumes they ever thought about it in the first place) what it means to have equivalents in design patents. Apple’s argument was this: “sure, there are lots of little differences between the iPhone design and the Epic 4G Touch, but if you get the general impression that they are similar, that’s good enough to infringe.” And the jury agreed (and I presume the jury instructions allowed it). At a time when most view the doctrine of equivalents as dead with respect to utility patents, this expansion of equivalents in design patents to allow a very specific design to cover essentially all phones with a rectangle shape and full screen face is problematic.

4. Relatedly, the ability to get a design patent on a user interface implies that design patent law is broken. This, to me, is the Supreme Court issue in this case. We can dicker about the “facts” of point 2, but whether you can stop all people from having square icons in rows of 4 with a dock is something that I thought we settled in Lotus v. Borland 15 years ago. I commend Apple for finding a way around basic UI law, but this type of ruling cannot stand.

5. The ability to find a product design (as opposed to packaging) dilutive shows that dilution law is messed up. I’ll leave it to my trademark colleagues to explain why. That said, the jury did get it right as to confusion and secondary meaning on the iPad.

6.  Most accounts I’ve read have said that this is a very, very bad ruling for Google (and the stock market seemed to buy it). Call me contrarian, but I’m going long on GOOG. This ruling has very little effect on Android. The interface design depends on 4 icons, and that can be designed around. Other manufacturers put three icons in the dock already, for example. Pinch and zoom is nice, but I would hardly call it core technology. I also think that is one of the more vulnerable claims on appeal, having seen the prior art. Rubber band to update is mostly unnecessary on devices that use more than one button (umm difference in design, anyone?) and tap to zoom is nice but I would guess most could live without it, especially if pinch to zoom is invalidated.

On the other hand, there aren’t that many ways to make a screen fronted device. Maybe they can do a “Flying-V” like the electric guitar or an hourglass shape. OR – and here I’m being the optimist – maybe they’ll come up with a better design that everyone wants. The Galaxy S III is pretty thin with a ridiculously large screen, for example. Ironically, to keep its lame trade dress argument alive, Apple has to stick with a thickness and screen size that customers may not want anymore. It’s possible that in the long run, Apple is going to take a beating for refusing to give the customers what they actually want. Magic only takes you so far.

Finally, unless Samsung goes after Google (unlikely?), Samsung is the one writing the check here. Maybe there is an indemnification deal we don’t know about. In any event, this ruling hurts Samsung a lot more than it hurts Google in my book.

I’ll end by giving another shout out to the fine folks at Groklaw, who must never sleep, and have not only really detailed information, but really accurate information, and actual source documents. That combination is hard to find.

Understanding the Apple v. Samsung trial

If you want to learn more about the details of the important trial going on between these two titans, be sure to check out coverage at Groklaw. Their coverage of trials like this is second to none – discussion of testimony, exhibits, dockets, etc.

I’ve tried to add to the discussion a bit with a basic, generalized discussion of design patent and trade dress issues presented in the trial. That post is here.