Legal Eve: IP, Marketing & Entertainment Law Blog

The Brand is the Message: Speaking at Ryerson

legaleve — Tue, 18 Oct 2011 16:57:30 +0000

I am looking forward to teaching tonight at the Ted Rogers School of Management at Ryerson University. I enjoy teaching, and the mission for tonight’s seminar course is to explore the basics of trade-mark law and, hopefully, make it come to life. What is it, why is it there, and since we have it, what can we do with it?

Apple. Google. Nike. Hermes. It isn’t easy being a brand.

As a lawyer and trade-mark agent, it is one thing to be inside the machinery of the process and to help clients navigate the legalese, technicalities and risks associated with using and enforcing trade-marks. However, it is also exciting to be part of the process of helping a brand come to life and keep its legs in the marketplace. Teaching, and sharing perspectives with business law students on how trade-marks support their business strategies should be a great discussion. Trade-marks and brands: you can’t have one without the other? If you build the brand, will they come? We’ll find out tonight.

The (R)evolution Continues: Interactive & Digital Media

legaleve — Tue, 28 Sep 2010 22:13:10 +0000

I am looking forward to speaking tomorrow at the Ontario Bar Association conference “Interactive and Digital Media: The (R)evolution Continues.” On the panel “Branded Content and Video and Online Games,” I will discuss advertising and privacy risks, as well as challenges advertisers and content producers face when negotiating agreements to create branded content. We will also look at intellectual property and personality rights issues, and the role of social media, user generated content and virtual worlds. Other panels will examine the first six months of the Canada Media Fund, the guidelines of the Documentary Organization of Canada’s Fair Dealing and Copyright Guidelines, and there will be a discussion and Q&A on new distribution platforms for content in the world of digital media.

Click here for OBA website conference registration page and brochure.

Kids & Privacy: INplay 2010

legaleve — Wed, 19 May 2010 14:37:14 +0000

I am looking forward to speaking today at Interactive Ontario’s INplay 2010 conference. My panel will be this afternoon: “Kids & Privacy: What Are You Doing With My Stuff?“

* Jennifer Lord, Producer of Online Communities, Corus Entertainment – Moderator
* Arni Stinnissen, Toddington International
* Jeanette Lee, Lawyer, Stohn Hay Cafazzo Dembroski Richmond LLP
* Marie Morency-Lee, Manager, TVO

“How have recent developments in technology changed how we deal with privacy? What are the new considerations? What about mobile? How do kids engage in social networks? How do we make them safe? What constitutes safety (and risk)? Who is doing it right and who is doing it wrong?”

INplay 2010

This should be a great discussion. Arni Stinnissen will start the session with a brief talk about kids online, privacy and security issues. He is a former Detective Staff Sergeant the Ontario Provincial Police, and Manager of the OPP’s Electronic Crime Section, now an educator, speaker and trainer with Toddington International. There will be much to discuss, in terms of how adults and kids use current technology, technology here and yet to come, law, self-regulation and policy, and the risks and competing interests of those who share information in the interactive media space, and others that wish to use that information for other purposes, commercial or otherwise. It will be interesting to see where the discussion leads, looking at multiple perspectives: security, media, interactive, marketing, legal – and users. I anticipate discussion around the benefits and failures of self-regulation versus legislation, to address privacy concerns.

Kids & privacy is a timely subject, since in the last few months online privacy has been front and centre in news and policy, in Canada and the U.S. To name a few examples: new proposed U.S. bills, COPPA review, privacy roundtables, white papers, Google (pick your service), and – Facebook. Of course, the power of Facebook to reach many has already been in discussion at INplay. Facebook and privacy will continue to be a hot topic, particularly given the most recent reports of alleged internal debates about (more) proposed changes to Facebook privacy settings. Some reports say the changes to further “simplfy” the settings may be implemented within weeks.

Hope to see some of you at INplay today!

Marketing Law 101 to 3.0: Content-er, The Consumer-is King

legaleve — Thu, 06 May 2010 03:04:56 +0000

I’m looking forward to speaking tomorrow morning (May 6) at the Ontario Bar Association program for the Entertainment, Media & Communications Section. The topic: “Marketing Law: From Advertising 101 to 3.0: Content-er, The Consumer-is King.” If so-called Web 2.0 boasted interactivity, a few things seem clear about Web 3.0. First, there doesn’t seem to be consensus about how to define it. Second, it points to, among other things, personalization and a focus geared towards user behaviour and preferences.

Much has been written about how viewership habits are changing. Viewers are watching more content online, and technology is providing ways to avoid watching ads, including the ubiquitous “spot,” at least on television. How to make advertising content that people want to watch, that engages the consumer, especially if consumers dictate the choice? What do people want? They like to be entertained. They want what they want.

What among other things helps convince advertisers to pay for this kind of marketing? Metrics. Tracking. Audience reach. Consumer data. Results.

We are seeing the spheres of entertainment, marketing and technology colliding. At our session tomorrow I’ll survey some of the legal issues arising from, among other things, user generated content, social media, viral marketing, product placement, targeting and tracking, and of course, the hot-button issue of privacy.

My co-speaker, Carol Anne O’Brien, Barrister & Solicitor, will also address recent regulatory developments including the FTC endorsement guidelines and recent CRTC developments regarding advertising in VOD, “local avails” in U.S. satellite services, and the New Media hearings.

OBA EMC program description is here. It should be an interesting discussion.

Of TV, Titles, Trade-marks & Thighs

legaleve — Fri, 26 Mar 2010 16:35:15 +0000

“Expect the best. Prepare for the worst.” This ominous advice came from a fortune cookie, recently cracked open by a friend at a restaurant. Having mocked it then, I’m reminded of it following recent reports that a lawyer/former lawmaker/filmmaker is suing HBO and Showtime, for broadcasting a soft porn film instead of his comedy feature film. Both films shared the same title: “The Hills Have Thighs.”

According to the reports, filmmaker James “Bubba” Cromer, recently filed a lawsuit in Los Angeles. The complaint claims the channels promoted his low-budget film about Appalachia, The Hills Have Thighs. TV listings described his film. Having seen the TV listings, and having been excited about the dream of seeing his self-financed film broadcast, he promoted the broadcast to friends, family, co-workers and crew, including over 4,000 friends on Facebook. He claimed to have heard a voiceover before the film was broadcast: ”Bubba Cromer later tonight does it again with his second feature film ‘The Hills Have Thighs.’ Deliverance in reverse.” However, instead of broadcasting his comedy feature about the mysterious disappearance of a local hillbilly, the channels allegedly broadcast the soft-core porn film of the same title. Mr. Cromer’s reaction, according to the New York Times/Associated Press: ”I saw a set of thighs and realized instantly that wasn’t my movie.” The complaint reportedly claims defamation, violation of the Lanham Act, violation of rights of publicity, intentional infliction of emotional distress and negligence.

When clearing titles and/or trade-marks for television and film properties, certain legal questions are often asked: for example, whether a particular entertainment title should receive trade-mark or copyright protection, and whether a prior identical or simlar title should pose a bar to using the same title for a new film. Some recent Canadian cases have revisited the issue of the limitations of intellectual property rights in protecting entertainment titles. Practically, the solution for what is appropriate in each case can vary depending upon the title, how it will be used, and a mix of legal issues and business objectives. Put simply: it depends. At the end of the day,whether a title can or should be protected as a trade-mark is one issue. Whether one is permitted to use the same title as prior film or program is another issue. However the mixup over The Hills Have Thighs came to pass, it calls to mind competing legal, business and practical issues that can arise when deciding on a title for an entertainment property, and the potential perils of using a title that has been used before.

Legal Eve Archives: First Amendment, Totally Nude

legaleve — Wed, 24 Mar 2010 02:11:17 +0000

These days there is a lot of buzz about the benefits and perils of the digital footprint one leaves behind on the Internet: professional profiles, random musings and Facebook photos that neither an employer nor mother would love. Meanwhile, aggregators have proved adept at collecting information from across the Internet, and bringing their form of order to the chaos of available content. It brings joy to some, and resignation or dismay to others. While preparing my next post for this blog, I thought about past articles I have published in different sources, some of which are not publicly accessible. This presents an opportunity to be my own aggregator. Something old, something new? From time to time, I’ll post older pieces that I think may be of interest under the heading “Legal Eve Archives.” Here is the first in the series, written exactly one year ago. It is a case comment, looking at video games, trade-marks and freedom of expression.

* * *

First Amendment, Totally Nude: Where Hot Dog Stands and Virtual Strip Clubs Meet

(E.S.S. Entertainment 2000 v. Rock Star Videos (9^th Cir. 2008, California))

[I first published this article in the Ontario Bar Association, Entertainment, Media & Communications Section Newsletter, Volume 18, No. 2, March 2009]

For video game, new media and fantasy entertainment developers, this U.S. case has it all: fast cars, virtual strippers, and a trademark lawsuit morphed into a freedom of expression battle. When a real-life strip club inspires a virtual parody, has there been a non-consensual violation of intellectual property rights? The U.S. Ninth Circuit appeal court says: no.

Rockstar Games, Inc. (“Rockstar”) produces the Grand Theft Auto series of video games. The games take place in virtual cities that are modeled after actual American urban areas, which are disclaimed as “fictional.” Grand Theft Auto: San Andreas (the “Game”) features the virtual city of “Los Santos” as one of its backdrop locales. Los Santos mimics the look and feel of various Los Angeles neighbourhoods. The Ninth Circuit court acknowledged that the Grand Theft Auto games are “known for an irreverent and sometimes crass brand of humour, gratuitous violence and sex, and overall seediness.” It found that Los Santos is “not especially saintly” and “complete with gangs who roam streets inhabited by prostitutes and drug pushers, while random gunfire punctuates the soundtrack.”

Welcome to Los Santos

ESS Entertainment 2000 (“ESS”) operates a real-life strip club in East Los Angeles, under the name “Play Pen Gentlemen’s Club” (the “Play Pen”). The virtual East Los Santos neighbourhood includes the “Pig Pen” strip club. Both clubs (real and virtual) have an awning at their entrances, bearing the respective logos “The Play Pen” and “Pig Pen” (words in a fanciful, publicly available font of upper and lower-case letters). The Play Pen awning displays the tagline “Totally Nude” below the words “The Play Pen.” The Pig Pen awning also displays the tagline “Totally Nude” below the words “Pig Pen.” However, there are differences in the colour of the awnings and logos, in the façades and architecture of the Play Pen and Pig Pen buildings, and in their exterior décor. (The court was silent about the interior elements of either club.)

Game developers acknowledged that in designing Los Santos, they intended to lampoon the seedy underbelly of Los Angeles and the people, businesses and places that comprise it. They had not set out to re-create a realistic depiction of the city. They admitted to drawing inspiration from photos of the Play Pen, but also from other photos of East Los Angeles locations.

Welcome to the Lawsuit

ESS filed a lawsuit against Rockstar in district court, claiming trademark infringement, trade dress infringement and unfair competition under the applicable sections of the Lanham Act, California codes and common law. Rock Star denied infringement and argued that it was protected from liability under the defenses of nominative fair use, and freedom of expression under First Amendment. The district court rejected Rockstar’s fair use defense, but granted summary judgment based on the First Amendment defense. The district court did not address the trademark claim because its acceptance of the First Amendment defense made the trademark analysis unnecessary.

Video games and strip clubs do not go together … like love and marriage

In upholding the lower court’s ruling, the Ninth Circuit court explored the intersection of trademark law and the First Amendment. It adopted a two-prong test. An artistic work’s use of a trademark that would otherwise violate the Lanham Act is not actionable unless:

i) the use of the mark has no artistic relevance to the underlying work whatsoever; or

ii) if it has some artistic relevance, it explicitly misleads as to the source or content of the work.

The court found that:

Test applies to use of a mark in the body of a work: The test of determining whether the trademark or trade dress rights are trumped by the First Amendment traditionally applies to the use of a trademark in the title of a work. The appeal court found that there was no reason it could not also apply to the use of a trademark in the body of a work.
Artistic relevance: The use of the modified trademark has artistic relevance in portraying the fictional venue. The test requires that the level of relevance must merely be above zero. The look and feel of the East Los Angeles neighbourhood, with all that characterizes it, is relevant to Rockstar’s artistic goal of developing a cartoon-style parody of it.
Use of “Pig Pen” was not misleading: The second prong of the test points to the purpose of trademark law: to avoid confusion in the marketplace. Mere use of a trademark alone cannot suffice to make such use explicitly misleading. The Game does not confuse its players into thinking that the Play Pen is associated with the Pig Pen or that it sponsors Rockstar’s product.

The court also highlighted in colourful fashion that the Pig Pen is not a significant part of the Game, and ESS presented no evidence that the Pig Pen setting was anything but generic:

“Both San Andreas and Play Pen offer low-brow entertainment; besides this general similarity they have nothing in common. The San Andreas Game is not complementary to the Play Pen; video games and strip clubs do not go together like horse and carriage or, perish the thought, love and marriage. Nothing indicates that the buying public would reasonably have believed that ESS produced the video game or, for that matter, that Rockstar operated a strip club.”

ESS also argued that because Game players could ignore the storyline and spend as much time as they wanted at the virtual Pig Pen, it could be considered a significant part of the Game, thereby leading to confusion. The court disagreed:

“[F]ans can spend all nine innings of a baseball game at the hot dog stand; that hardly makes Dodger Stadium a butcher’s shop. In other words, the chance to attend a virtual strip club is unambiguously not the main selling point of the Game.”

The Ninth Circuit court therefore held that Rockstar’s modification of ESS’ trademark was not explicitly misleading, and was thus protected by the First Amendment.

Welcome to Canada

Canadian case law on intellectual property and freedom of expression has tended to be less salacious, and less permissive – so far. Prior U.S. cases on trademarks, nominative fair use and freedom of expression canvassed the use of marks including Playboy’s Playmate® and Mattel’s Barbie®. In Canada, the leading case on the intersection of trademarks and freedom of expression is the 1996 Federal Court decision concerning the use of the Michelin Bibendum Figurine® logo, a stylized marshmallow-like being, stomping on the head of a worker.

Until recently, Canadian cases on IP and freedom of expression have focused on use in a non-commercial setting: in particular, the display of trademarks in union members’ materials in the course of labour disputes. These cases place high importance on the non-commercial aspect of activity, such that trademarks were not “used” as a mark in association with wares or services, and therefore trademark infringement did not occur. For example, in the Michelin case, the Federal Court held that the use of the Bibendum Figurine did not infringe the owner’s trademark rights. However, it rejected the defense of freedom of expression, stating: “freedom of expression is not a defence to copyright or trademark infringement.”

More recently, a November 2008 decision in Canwest Mediaworks Publications Inc. v. Horizon Publications Ltd. (B.C.S.C.) demonstrated that Canadian courts may still be inclined to follow the approach of the Michelin case in IP infringement actions, and to reject freedom of expression defenses based on the Canadian Charter of Rights and Freedoms. This case involved the creation of a “fake edition” or satirical “parody” of Canwest’s Vancouver Sun newspaper by the defendant. The “parody” paper mimicked the logo and layout of the Canwest newspaper. The defendant argued that its publication was intended to raise awareness about Canwest bias, and to foster debate about the Middle East. It claimed parody as a defense to a copyright infringement claim, lack of confusion as a defense to trademark infringement and passing off claims, and freedom of expression and truth of the content as a defense to all of the claims. At this stage of the proceeding, the B.C. court ruled to strike portions of the Statement of Defence, regarding the size of Canwest’s newspaper chain, alleging that Canwest had a “pro-Israel” bias, and alleging that Canwest has a centralized editorial policy restricting the freedom of its reporters and editors. The court cited the Michelin case position that parody is not a defense to a copyright infringement claim. The court held that since parody is not a defence to a copyright claim, the struck allegations were not necessary to prove such a defense.

Contrast the Canadian focus on whether commercial “use” of a trademark has occurred, and rejection of freedom of expression defenses, with the U.S. approach to allowing First Amendment defenses. As the Ninth Circuit stated in the Pig Pen case: “a trademark infringement claim presupposes a use of the mark. If that necessary element in every trademark case vitiated a First Amendment defense, the First Amendment would provide no defense at all.”

There, between despotic figurines and parody newspapers lies the Canadian twist: would a virtual lampoon strip club, in a fictional city, incidental to a larger video game environment, find freedom of expression in Canada? The verdict is still out at the hot dog stand.

And The Oscar Goes To: Logorama

legaleve — Tue, 09 Mar 2010 23:00:12 +0000

Some have hailed it as “the movie no lawyer should see.” The Pringles man mascot propositions an Esso girl. Ronald McDonald takes a hostage and sparks a gunfight with Michelin Bibendum cops. With almost 3000 coporate logos, spectacular car chases, and wild animals (including Lacoste crocodiles and the MGM lion) rampaging through a city, what more could an audience ask of a film? Perhaps 3D. What more could a production lawyer ask? You can imagine. Insert the raising and furrowing of legal eyebrows.

After winning awards in Europe and making a splash at Sundance 2010, the movie Logorama garnered the support to win this year’s Oscar for Best Animated Short Film. The film was produced at Autour de Minuit Productions by French collective H5. The movie website and trailer are here. This author has not seen confirmed reports of whether permission was obtained from the owners of any the trade-marks shown in the film. However, a quotation from Logorama producer Nicolas Schmerkin in Première, March 2010 suggests it was not:

“Depuis le début, on marche sur des oeufs avec la pointe des pieds, poursuit Schmerkin. Chaque étape, de la sélection du film à Cannes, pour la Semaine de la critique, jusqu’à sa diffusion sur Canal+, a été décisive. Nous n’avons reçu aucune plainte. Aujourd’hui, les Oscars constituent un peu la dernière ligne droite: il serait idiot pour une marque de s’attaquer à un film sélectionné.”

In theory: trade-mark, copyright and production clearance issues raised could keep many an IP, production and E&O insurance lawyer up at night, given among other things the number of marks included, and the varying laws in different jurisdictions (some of which allow for satire and parody exceptions, and others – not). In Canada, so far the Michelin Bibendum and BCAA cases have shown that even if trade-mark related claims encounter problems when “use” of a mark cannot be shown, courts may not see “parody” as a form of criticism that is permitted as fair dealing under the Canadian Copyright Act. In practice: it will be interesting to see if any of the trade-mark owners attempt to enforce trade-mark and/or copyright rights.

The film has an extra, real world coda. Logorama is available for purchase on iTunes. It appears from a number of internet blogs and sites with links to full video of the Logorama film, that the video postings were required to be deactivated or taken down. For example, at pages on YouTube purporting to post the film in two parts, one is greeted by a large red exclamation mark, and the warning: “This video is no longer available due to a copyright claim by Autour de Minuit Productions.”

Jeanette Lee Joins Stohn Hay Cafazzo Dembroski Richmond LLP

legaleve — Tue, 09 Mar 2010 21:32:40 +0000

Jeanette Lee is pleased to announce that she has joined the firm of Stohn Hay Cafazzo Dembroski Richmond LLP in Toronto, Canada. Jeanette will continue her practice in intellectual property, marketing and entertainment law.

Stohn Hay Cafazzo Dembroski Richmond LLP is a boutique law firm practising entertainment, marketing, technology, copyright and trade-mark law. The firm has been recognized by Lexpert as one of the leading entertainment law firms in Canada. Jeanette will continue to advise clients in the areas of marketing and advertising law, trade-marks, copyright, film and television licensing and production, branded entertainment and licensing, publishing, video game, new media and e-commerce, privacy, consumer protection, IP enforcement and related issues. Jeanette has advised clients from a wide range of industries, including entertainment and sports, interactive, electronics, toy and merchandise, technology, financial, hospitality, education, government, food, retail and energy sectors. Jeanette joined the firm in October 2009. Her full bio is here.

Welcome to the Legal Eve law blog

legaleve — Tue, 09 Mar 2010 17:29:30 +0000

Welcome to the Legal Eve law blog - where news and commentary about IP, marketing and entertainment law meet. This blog is by Jeanette Lee, a Canadian lawyer and registered trade-mark agent at the law firm of Stohn Hay Cafazzo Dembroski Richmond LLP, in Toronto, Ontario.

To receive updates on this blog, follow @legaleve on Twitter, or sign up for an e-mail subscription below. Jeanette is also a contributor on the excellent law blog site, Slaw.ca, here.

Please note that this blog is by Jeanette Lee personally. It is not affiliated with Stohn Hay Cafazzo Dembroski Richmond LLP or any of its clients. It is for informational purposes only. It does not constitute legal advice, and is not a substitute for proper legal advice from a competent professional in your jursidiction.