April 2010

Assume that you have a mark in a sports’ logo. You hop on line to see what traffic is out there regarding your mark and find that someone 1,000 miles away is using your mark in commerce and making money at it. Trying to be the gentleman (or gentlewoman), you nicely pick up the phone, place a call and try to resolve the matter over the phone. You tell the infringer that you want to resolve the situation, might be amenable to license and hope to keep those pesky lawyers out of the situation. You get a couple of grunts of assent and a promise to call you back. Rather than the callback, you get a summons and complaint in the mail, demanding that you respond in Kansas or Alabama rather than in your home forum. You call your legal beagle who advises that you may very well be stuck there.

That is the opinion of the U.S. Supreme Court in the MedImmune Inc. v. Genentech Inc., 549 U.S. 118 (2007) case and we think it bad law. The other side has filed a declaratory action against you alleging a lively controversy between your two companies. The Supremes ruled that this is likely sufficient to allow the other side to proceed in their forum.


Why is it bad law? It encourages lawsuits (you should have pulled the trigger first) rather than working things out. We are loathe to tell people to write their member of Congress when the country is still recovering from recesses ion, but somewhere down the line, this one needs to be addressed. For the time being, you need to give thought to filing first, calling second. Not the best of public policies.

On ESPN’s "The Herd" on April 21, 2010, the host talked about the NFL doing the hard parenting on Ben R.  One would hope that the NFL would not have to parent adults getting millions, but that is not the world we live in.  A simple suggestion by analogy: California sexual harassment law.

In California, employers who employ a certain number of employees have to give their employees and supervisors training each year in sexual harassment.  The California Fair Employment and Housing Act ("FEHA") requires that employers with 50 or more employees provide all supervisory employees (including executives, managers and lead employees), with sexual harassment training once every two years.  Where the employer fails to provide the training, a plaintiff who sues for sexual harassment can claim that the employer failed to take reasonable steps to prevent and correct sexual harassment in the workplace, which can lend support to a request for a punitive damages award.


Regardless of whether California teams are presently including their players in this exercise, the NFL or the teams should provide their players with similar instructions. This type of training could help avoid improper behavior by players. 

In EXAMINER.COM, we see that rapper Jay-Z has sued baseballer "Big Popi" David Ortiz for trademark infringement over the 40/40 clubs.  Jay-Z got there first.  Forty-forty refers to forty home runs and forty stolen bases, a traditional standard of excellence.  Question for the court will be one of jurisdiction.

Don’t see how he can maintain jurisdiction, unless Ortiz actively marketed his club in the U.S.  Under the WTO membership rules and Berne Convention, trademark rights are still territorial. So even if the fame of JZ’s club does reach the Dominican Republic, the fame by itself cannot qualify as use in commerce, so there is no claim.  Again, the key should be whether Ortiz marketed his club such that it constitutes use in commerce in the US.


On April 7, 2010, the LATIMES.com reported Nike’s new commercial with Tiger Woods featuring the voice of his late father on the eve of the Masters. In this commercial, Tiger is standing silent with a golf course in the background and his father’s voice taking about responsibility and learning from mistakes.


Several people have criticized this commercial as being improper and out-of-line for using his late father for commercial gain. However, the import of this commercial is that Tiger is confronting his past indiscretions head-on. To a certain extent, this ad seems more like an apology than commercial advertising. It also sends a message that his actions were wrong and must not be repeated. What more can we ask from him?


Moreover, in many states, the dead do have the right to advertise and generate income for their estate.  Several states have enacted statutes that protect the right to publicity after death. For instance, California Civil Code section 3344.1 is an example of a statute protecting a dead person’s right to publicity. The estate of Tiger’s father may have received some substantial income for the Nike ad.  


As noted in a previous post, it’s best to deal with problems before they get bigger.