Friday, May 2, 2014

"Jameis Winston crab legs" violates the Heisman Trophy winner's rights of publicity.

In the past few days, the 2013 Heisman Trophy-winning quarterback from Florida State University, Jameis Winston, was charged with the theft of $32 worth of crab legs from a grocery store. In response an Alabama grocery store started selling "Jameis Winston crab legs." Rights of publicity have been previously discussed. An individual has the exclusive right to license his or her likeness as they see fit (unless that person is an NCAA student-athlete). Clearly, Jameis Winston did not license his likeness to be used in connection with the grocery store's crab legs. Even though the grocery store was joking, its conduct does violate Winston's rights of publicity. If sued, the grocery store would be disgorged of all profits generated from said "Jameis Winston crab legs."

Thursday, March 27, 2014

Why was the National Labor Relations Board’s ruling that college athletes can unionize limited to private institutions?


Under the National Labor Relations Act, states are not "employers." Since public schools are part of their state government, public schools are not employers under the NLRA. Since private schools are not part of their state government, they are not employers under the NLRA. The federal regulations of the NLRB explicitly provide that the NLRB will exercise jurisdictions over issues involving private nonprofit colleges and universities that have a gross annual revenue of $1M or more.

This does not mean that college athletes at public schools cannot unionize, it just means they have to do so differently. Those athletes would have to unionize under procedures for public sector employees. Some states are right to work states, which prevents compulsory union participation for public sector employees. Those employees could join the union if they wanted to do so, but they would not have to join or participate in its labor policies or goals.

On the other hand, Northwestern's college athletes will be voting within the month to determine whether they will be represented by the College Athletes Players Association. The CAPA was just recently formed. If a majority of Northwestern's athletes vote for representation, then all Northwestern athletes will be represented by the CAPA.

Wednesday, March 12, 2014

On the negligence lawsuit involving former Iowa football players injured during the rhabdomyolysis exercise scandal in January 2011.

In January 2011, 13 football players for the University of Iowa were hospitalized with rhabdomyolysis, which is the breakdown of muscle tissue leading to the release of muscle fiber contents into the bloodstream. The players suffered this condition as the result of overly strenuous workouts following a disappointing 2010 football season.

On March 10, 2014, one former player injured by "rhabdo" sued the school and State of Iowa for negligence. Unless one or more of the injured former players were in negotiation with the school before January 2013, and unless the parties agreed to waive arguments based on Iowa's statute of limitations, the player or players may lose on a technicality. Iowa Code 614.1(2) provides that personal injury lawsuits must be brought within two years. The former player's claim was initiated more than three years after the injury. Accordingly, even though the school would likely be liable for negligence, it may win because the player waited too long to file the lawsuit. That said, it is more likely that the players were previously in confidential negotiation with the school, and the parties agreed to waive any argument based on the statute of limitations.

Tuesday, March 4, 2014

What is a naked trademark license?

If you have a trademark and enter into licensing agreements where you do not oversee and monitor the manner in which your mark is used by the licensees, you risk a "naked license." Having a naked license means your trademark is no longer valid, because it no longer is source identifying.

If you have a mark and want to license it to others, make sure you enter into licensing agreements negotiated at arms' length. If you let other companies use your mark without conditions, it will result in a naked license.

Wednesday, February 26, 2014

Student-athlete likeness litigation appears headed to trial.


Interestingly, the presiding judge gave a scathing reply to the NCAA's argument that paying players would affect competitive balance: "Maybe you could enforce more competitive balance by having coaches' salaries addressed."

Monday, February 17, 2014

Indemnity clauses are not always for the faint of heart.

In certain circumstances, indemnity clauses can be pretty frightening. An indemnity clause requires one party to bear responsibility for any loss or damage incurred by another party. These provisions are commonly found in contracts dealing with big companies and/or smaller companies with sophisticated legal counsel. You should always be careful when signing a contract requiring indemnification. Activation of an indemnity clause when loss or damage occurs could devastate your personal life and/or bankrupt your business.

With an indemnity clause, not only are you responsible for your own loss or damage in connection with a contract, you are responsible for another party’s loss or damage in connection with the same contract. Sometimes, indemnification makes sense, like when one party has little involvement with a business relationship involving a second or third party, or when a party provides one component in a complex mechanism. If fairness suggests that a party should not be responsible for loss or damage in connection with a contract, an indemnity clause protecting that party is proper. But if fairness suggests a party should be held responsible for loss or damage in connection with a contract, indemnification is improper.

Thursday, February 13, 2014

Wordmark trademarks and design mark trademarks.

Service marks, certification marks and collective marks are regularly called "trademarks." Each of these categories of marks contain wordmarks and design marks. A wordmark does not contain a logo or design. It is simply the word being claimed as a trademark. A design mark contains the logo or design of a mark. For instance, "Nike" is a wordmark. The Nike "swoosh" is a design mark. Both wordmarks and design marks are protectable under trademark law. Getting federal trademark protection on your company's wordmark does not mean your design mark is protected. Getting protection on your design mark does not mean your wordmark is protected. You would need to register both to protect both.

One design mark might be confusingly similar to another design mark but the wordmarks of the two might be dissimilar. Likewise, a wordmark might be confusingly similar to another wordmark but the design marks of the two might be dissimilar.

Thursday, February 6, 2014

Does Fake Bo Pelini violate the real Bo Pelini's rights of publicity?

Rights of publicity protect a person's exclusive right to license their likeness to whom and on what terms they choose. This is at the heart of the NCAA student-athlete likeness antitrust litigation, because intercollegiate athletics may be the only place where this right is irrevocably transferred to the NCAA and its member institutions.

Fake Bo Pelini is a Twitter account designed to poke fun at the real Bo Pelini's sometimes surly and obstreperous nature. If the Fake Bo Pelini generates money from the use of Bo Pelini's likeness, he could be violating Pelini's rights of publicity. This does not appear to be the case.

The "Bo Pelini Foundation" is a registered trademark, but "Bo Pelini" is not. If "Bo Pelini" were a registered trademark or it was used on or in connection with goods or services, Pelini could not sue for trademark dilution, because Fake Bo Pelini is a parody account. If Fake Bo Pelini was not a parody and "Bo Pelini" were a registered trademark or used on or in connection with goods or services, then Pelini could sue for trademark dilution.

Monday, January 27, 2014

On trademark dilution: the Barbie example.

Trademark infringement results when a defendant uses a confusingly similar mark to a plaintiff's mark. Trademark dilution results when a defendant uses a mark in a way that lessens the distinctiveness of a famous trademark, regardless of a likelihood of confusion. This is a clear example of trademark dilution: an iPhone game that allows users to give plastic surgery to an overweight Barbie.

There are two types of trademark dilution: blurring and tarnishment. Dilution by blurring occurs when a defendant unauthorizedly uses a mark on dissimilar products and services than the famous mark, slowly reducing its distinctiveness. A hypothetical example of this would be a company providing mufflers under the brand name of "Nike." Obviously, consumers would not think that Nike mufflers were associated with the athletic shoes and apparel company, but allowing Nike mufflers to operate would lessen the distinctiveness of the Nike mark over time. Dilution by tarnishment occurs when a defendant uses a mark in unsavory contexts, for instance in an iPhone game where users give Barbie plastic surgery.

Thursday, January 23, 2014

Wednesday, January 22, 2014

On generic and arbitrary trademarks: the Candy Crush example.

The developer of the Candy Crush game for mobile devices recently sought a federal trademark registration for "Candy." The article illustrates many common issues when registering a trademark over an existing word that would be generic when used on or in connection with the good or service it literally describes. For instance, "Candy," when used in games for mobile devices, is not unlike "Apple" when used with computers and like technology. If "Candy," were used in connection with candy, it would be generic and incapable of trademark protection. If "Apple," were used in connection with apples, it would also be generic and incapable of trademark protection.

Basically, a generic mark is one you would see in a cartoon or sit-com when a character is using a good. When you see a television character drinking beer, the can often says "Beer." When you see the character drinking cola, the can says "Cola." When you see the character eating chips, the bag says "Chips."

Tuesday, January 21, 2014

The "12th Man" trademark dispute between the Texas Aggies and Seattle Seahawks.

According to Texas A&M University's trademark application with the U.S. Patent and Trademark Office, the school has used the "12th Man" trademark in commerce to refer to its football fans continuously since 1922. The NFL's Seattle Seahawks, who began playing football in 1976, recently began referring to its fans as the "12th Man." As you would expect, this caused a dispute between the two over who owned the "12th Man" mark.

It is simple: Texas A&M owns the mark. The school used the mark in commerce before the Seahawks. The school did not file for the 12th Man mark until the 1990s, but this was still before the Seahawks began using the mark.

Accordingly, the Seahawks license the trademark from Texas A&M. If Texas A&M did not either license the mark to the Seahawks, or did not file an infringement action or seek an injunction to prevent the Seahawks from using the mark, Texas A&M would risk a naked license. This means the school unintentionally abandons the mark and loses its rights in it.

Thursday, January 16, 2014

Can you be an expert witness?

To qualify as an expert witness in a given case, you need knowledge, skill, experience, training or education in a relevant field. An expert is commissioned by a party in a case to render his or her opinion. The opposing party will try to discredit you; your side will bolster your credentials.

The more knowledge, skill, experience, training or education you have in a field, the more likely you will qualify as an expert. If you qualified as an expert in prior cases, that helps you qualify in a later case. Qualifying as an expert in one case does not mean you are automatically an expert in another case.

Once you qualify as an expert, any testimony you provide must be based on sufficient facts or data, it must be the product of reliable principles and methods, and your opinion must result from the application of those principles and methods to the present case.

You should be familiar with the legal process, but there are not many obstacles before you can market yourself as an expert. You need to make a website, register for expert witness directories, and it is always prudent to form a business entity to protect yourself. If you are going to invest capital and/or have employees working for you, you will want to do more. Many experts neither invest much capital nor have employees.

If you have an advanced degree, or years of experience in a given field, you can probably be an expert.

Wednesday, January 15, 2014

What do I need to do to start a business?

To start a compliant business, there are a number of things you must do. You need a company name that does not infringe another person or company's trademark. You need to form a business organization to provide limited liability to your company. You need separate bank accounts for your business affairs to maintain limited liability. You need to create an operating agreement or bylaws to provide the ground-rules for the day-to-day operation of your business.


You need to get a tax identification number from the federal government. You need to get set up with an accountant. You need to get any applicable licenses, depending on the type of business you have. You need to determine whether you will have employees, independent contractors or franchisees. If you have franchisees, you may need to file an irrevocable consent to service of process with the secretary of state, depending on the state in which you are located.


On an ongoing basis, you may need to develop confidentiality or non-disclosure agreements for employees, independent contractors, customers or suppliers. You may need employment contracts governing the creation of intellectual property by company employees. You need licensing agreements for the license or transfer of any intellectual property.


You need to file biennial reports to avoid dissolution of your business. You need to file taxes, sometimes quarterly.


Obviously, it all starts with a good idea for a product or service your company will provide. You need a website, and you need a marketing plan. As far as advertising; just do not lie. If you claim something on your website or in your company brochures or catalogs, be able to prove it. If you cannot prove a claim or assertion, you probably should not be saying it.


Every industry is different. What is required for one company in one industry in one state will be different from what is required of another company in another industry in another state. There are a lot of requirements in getting a business up and running, but it sounds worse than it is.

Friday, January 10, 2014

Navigating the requirements of federal warranty law.


The most important thing is to be truthful in your advertisements. Do not say things you cannot prove, and do not mislead consumers. Most consumer products require you to designate whether you provide a "full" or "limited" warranty, or no warranty at all. In those cases, a full warranty requires: (1) no limitation on the duration of implied warranties; (2) that you provide warranty service to anyone who owns the product during the warranty period; (3) that you provide warranty service free of charge; (4) that you provide either a replacement or full refund if you cannot fix the product, and the consumer gets to pick; and (5) you do not require consumers to do anything as a precondition for receiving service, unless you can prove that any precondition is "reasonable."

If you do not offer all of those things, you have a "limited" warranty (again, in applicable situations involving consumer goods). As with any warranty, your decision to offer a full, limited or no warranty must be conspicuously disclosed.

Thursday, January 9, 2014

"Redskins Hog Rinds" denied trademark registration due to the term's disparaging meaning.

Possibly foreshadowing the inevitable demise of the Washington Redskins' trademark, the patent office denied registration for a trademark on "Redskins Hog Rinds," saying the term is disparaging to Native Americans. This is not the first time the USPTO denied registration to a mark including the name "Redskins." The USPTO's rationale is based on secondary meaning. Consumers associate "Washington Redskins" with the football team, but consumers would associate "Redskins Hog Rinds" with the racist term, not hog rinds.

Monday, January 6, 2014

Copyright infringement of college football helmet designs.

For almost 20 years, the University of Oregon's football team has been known for its unique uniform designs. Nike is the outfitter for Oregon, and Nike's founder, Phil Knight, is an Oregon alum. Knight's beneficence is the reason for the plethora of uniform designs, and he has also donated substantial sums of money to the school and football program.

To design the football helmets for Oregon and other college football teams, Nike uses a company named Hydro Graphics. Hydro Graphics uses water transfer printing to apply the designs to the football helmets. After creating the helmets, it is unclear whether Hydro Graphics retains ownership of the copyright, or assigns the copyright to Nike. In either case, the copyright covers the stylistic design of the helmets, not the functional part of the helmets themselves.

Hydro Graphics developed this series of winged-designs for Oregon, to represent the school's mascot, the Ducks. The Rice University Owls used a substantially similar or identical design on its football helmets for this year's Liberty Bowl. Rice's team outfitter is Adidas, not Nike. Hydro Graphics does not list Rice as one of its customers in its portfolio. So, the helmet designers or the copyright owners of the Oregon helmets (Hydro Graphics or Nike) appear not to be the same people who designed the Rice helmets.

Unless Rice's designer licensed the copyright from Hydro Graphics or Nike, or Hydro Graphics designed the helmet and did not place it on its portfolio, this is an actionable case of copyright infringement.

Thursday, January 2, 2014

On series limited liability companies.

A Series LLC (SLLC) is a little-known type of limited liability company (LLC) providing limited liability to its managers/owners. With a regular LLC, as long as the managers keep their business and personal affairs separate, they are likely to maintain limited liability if involved in a business lawsuit.

SLLCs are allowed in many jurisdictions. They provide limited liability among one or more "series," which are sets of transferable interests, such as tangible or intangible property. The debts and liabilities of one series are not enforceable against the assets of the LLC or any other series. For LLCs with a number of different property interests, SLLCs can provide further protection from liability.

To properly isolate one series from another or the parent LLC, separate bank accounts must be maintained for all series and the LLC. Everything must be adequately capitalized. If the LLC is dissolved, a series may still operate if the operating agreement permits it to do so. Likewise, termination of a series does not dissolve the parent LLC. Accordingly, in situations involving intangible property interests, SLLCs can be beneficial due to the ease of transfer or disposition.