A PROFESSIONAL CORPORATIONATTORNEYS AT LAW

baltimore • chestertown • washington, dc

James B. Astrachan, Esq.410.783.3520

jastrachan@agtlawyers.com

www.agtlawyers.com

presents

Law School in One Law School in One Hour Hour or

Ads That Shouldn’t Ads That Shouldn’t Have RunHave Run

Identity MisappropriationIdentity Misappropriation

A person controls the use of his or her persona for commercial purposes. An unauthorized use infringes.

Names, photos, drawings, nicknames, sound-a-likes, look-a-likes, roles.

Creation of CharacterCreation of Character

Lugosi v. Universal Pictures, 25 Cal. 3d 813 (1979).

McFarland v. Miller, 1992 WL 4967 (D.N.J. 1992).

NO

YES

MAYBEGroucho Marx Productions, Inc. v.

Day & Night Co., Inc., 523 F. Supp. 485 (D.C.N.Y. 1981).

Motschenbacher v. RJ Reynolds Tobacco Co., 498 F. 2d 821 (9th Cir. 1974).

Hirsch v. S.C. Johnson & Sons, 90 Wis. 2d 379 (1979).

Obscure Obscure IdentitiesIdentities

YESYES

Cohen v. Herbal Concepts, Inc., 473 N.Y.S.2d 426 (1984).

How much identification is needed?

White v. Samusung Electronics America, Inc., 971 F.2d 1395 (9th Cir. 1992).

Can a robot violate Vanna’s right of publicity?

Onassis v. Christian Dior - New York, Inc., 472 N.Y.S.2d 254 (1984).

The look-alike.

Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992).

The sound-alike

Copyright TheftCopyright Theft

The owner of the copyright has the exclusive right to:

Reproduce Distribute Prepare derivative works

Anyone else doing so without consent is an infringer.

Most people don’t know that there are angels whose only job is to make sure you don’t get too comfortable and fall asleep and miss your life

Brian Andreas v. Volkeswagen of America, Inc., 336 F 3d 789 (8th Cir. 2003)

Angels of Mercy by Brian Andreas

I think I just had a wake-up call, and it was disguised as a car, and it was screaming at me not to get too comfortable and fall asleep and miss my life.

Audi “Wakeup Call” Commercial

• $965,000 awarded to Brian Andreas– $115,000 against VW and McKinney & Silver,

representing the licensing fee a buyer probably would have paid a willing seller

– $570,000 in “disgorgement damages” against VW

– $280,000 in disgorgement damages against McKinney & Silver

Brian Andreas v. Volkeswagen of America, Inc., 336 F 3d 789 (8th Cir. 2003)

Elsmere Music, Inc. v. National Broadcasting Company, Inc., 482 F.Supp. 741 (S.D.N.Y. 1980).

Trademark InfringementTrademark Infringement

Use of another’s mark in a way likely to cause confusion as to connection, affiliation, association or origin, sponsorship or approval is infringement.

Or, that dilutes by blurring or tarnishment.

Hershey v. Art Van Furniture, Inc., No. 08-14463, 2008 U.S. Dist. LEXIS 87509 (E.D. Mich. Oct. 24, 2008).

Romm Art Creations Ltd. v. Simcha Intern., Inc., 786 F.Supp. 1126(E.D.N.Y. 1992).

Deere & Co. v. MTD Products, Inc., 41 F.3d 39 (2d. Cir. 1994).

Trademark Fair UseTrademark Fair Use

Not all uses of another’s mark infringe.

Looks Like a Pump, Feels

Like a Sneaker®

United States Shoe Corp. v. Brown Group, Inc., 740 F.Supp. 196 (S.D.N.Y. 1990).

“25% Lower in Calories than Werther’s Original Candy”

August Storck K.G. v. Nabisco, Inc., 59 F.3d 616 (7th Cir. 1995), citing 16 C.F.R. § 14.15 (1).

Anheuser-Busch, Inc. v. VIP Prods., LLC, No. 4:08cv0358 TCM, 2008 U.S. Dist. LEXIS 82258 (E.D. Mo. Oct. 16, 2008).

Is it a Parody?Is it a Parody?

Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007).

Jordache Enters. v. Hogg Wyld, Ltd., 625 F. Supp. 48 (D.N.M. 1985)

Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing, Inc., 886 F 2d 490 (2d Cir. 1989).

Bad TasteBad Taste

It may not be actionable, but it can sure hurt.

Obscenity?Obscenity?

Misrepresentation / Misrepresentation / False AdvertisingFalse Advertising

In commercial advertising, misrepresentation of the nature, characteristics, qualities or geographic origin of the advertiser’s or its competitor's product.

Express Implied

IT IS ORDERED that respondent shall not represent, in any manner, expressly or by implication, that:

A. eating a bowl of Kellogg’s® Frosted Mini-Wheats® cereal for breakfast is clinically shown to improve children’s attentiveness by nearly 20%, or by any other specific percentage; or

B. eating a bowl of Kellogg’s® Frosted Mini-Wheats® cereal for breakfast is clinically shown to improve children’s attentiveness by nearly 20%, or by any other specific percentage, compared to children who ate no breakfast, unless, at the time it is made, the representation is true and non-misleading.

• Leading to abandonment, loss of priority use• Not leading to abandonment

Evolution of a Design Evolution of a Design Mark:Mark:

• Tacking on– Claiming priority in a mark based on first-use date of a similar, but technically distinct mark

• Continuing commercial impression

Evolution of a Design Mark:Evolution of a Design Mark:

One Industries v. Jim O’Neal Distributing, Inc. 92 U.S.P.Q.2D (BNA) 1065

O’Neal:

One Industries:

Dreyfus Fund Inc. v. Royal Bank of Canada213 U.S.P.Q. (BNA) 872 (Nov. 6, 1981)

FTC GuidelinesFTC Guidelines

Endorsements must be truthful and not misleading;

If the advertiser doesn’t have proof that the endorser’s experience represents what consumers will achieve by using the product, the ad must clearly and conspicuously disclose the generally expected results in the depicted circumstances; and

If there’s a connection between the endorser and the marketer of the product that would affect how people evaluate the endorsement, it should be disclosed.

The revised Guides – issued after public and consumer research – reflect three basic truth-in-advertising principles:

http://www.proactiv.com/celebrity/julianne-hough.php

http://howigrowtaller.com/?hop=chrischew

http://www.nutrisystem.com/jsps_hmr/success_stories/index.jsp?weightLoss=20

http://springwall.com/Chiropractic.html

http://www.c28.com/streetteam/

Sandra Bullock offers Ellen a gift from “Café Du Monde” on the Ellen Show.

Final ExamFinal Exam

Jim Astrachan is a principal in Baltimore’s Astrachan Gunst Thomas Rubin, P.C., a member of the Maryland, D.C. and Pennsylvania bars, and a national speaker on mass communications and intellectual property topics. Jim and his partner Donna Thomas are the authors of the 6-volume legal treatise The Law of Advertising and Mass Communications, published by LexisNexis Matthew Bender. He is a long time adjunct professor of law at the University of Maryland School of Law (Trademark and Unfair Competition) and the University of Baltimore School of Law (Copyright and, formerly, IP and Mass Communications). Jim is a former legal columnist for ADWEEK Magazine and his IP-related Legal ADvice column is a fixture at The Daily Record and its sister publications, where it has appeared monthly for 14 years. He is a Life Fellow of the American Bar Foundation and the Maryland Bar Foundation, and has a J.D. from the University of Baltimore Law School and an L.L.M. (Taxation) from Georgetown University Law Center.

Jim AstrachanJim Astrachan

baltimore ● chestertown ● washington, d.c.

Jim Astrachan410.783.3520

jastrachan@agtlawyers.com

Authors, The Law of Advertising and Mass Communications Published by

www.agtlawyers.com