Surnames, Trademarks, and Rock-and-Roll

Using your surname as a trademark may not always be the best strategy. This is especially the case when you are the ex-wife of rock star legend, Alex Van Halen. On October 10, 2013, ELVH, Inc., the intellectual property holding company for the rock band, Van Halen, has sued Kelly Van Halen for trademark infringement because she is using the mark “KellyVanHalen” in connection with items such as chairs, children's blankets, bathing suits as well as building construction and interior design services. The lawsuit alleges that the mark, “KellyVanHalen” is “confusingly similar to Plaintiff's VAN HALEN Marks in sound, appearance and commercial impression”.

The question raised is whether a person has the right to use his or her surname in the conduct of business. The case law is clear that a person cannot use their surname if is likely to cause confusion with a prior used mark. In Miller Brewing Company v. Premier Beverages, Inc. 1981 TTAB LEXIS 51, 10-12 (Trademark Trial & App. Bd. Mar. 3, 1981), the Board provides the following summary regarding this issue:

A person obviously has a right to use one's own name in his or her daily life's experiences and encounters. Nonetheless, this right is not absolute. That is, although one may legally use his own name, the use thereof in connection with a business may be circumscribed if it encroaches upon the good-will acquired by another through prior use of the same or a similar mark and is likely to confuse or mislead the public as to the ownership of the business or of goods emanating therefrom. It has thus been held that:
 
". . . . where a person chooses to use his own name as a trademark, the name immediately becomes a separate and distinct element, devoid of any connection with its owner's personality, and registration thereof is therefore subject to the same rules and principles of law which apply to all nonsurname types of marks". [In re National Cycle Service Inc., 194 USPQ 97 (TTAB, 1976)].

The policy reasons for this position can be found in Ford Motor Company v. Ford, 174 USPQ 456 (CCPA, 1976), wherein the court stated that:

". . . . the interest in allowing an entrepreneur to use his own surname as a trademark on his goods must give way to the more compelling public and private interests involved in avoiding a likelihood of confusion or mistake as to source where use of the surname leads to such confusion or mistake".

Though the lawsuit between Van Halen and Kelly Van Halen may bring forth a lot of media attention, this case is pretty cut-and-dry; in regards to the trademark infringement cause of action, the case will be determined as to whether there it is a likelihood of confusion. In other words, in the mind of a consumer, is it likely that the source of products containing the  “KellyVanHalen” mark would be confused with those originating from the manufacturer of products under the Val Halen mark.

Bullying the Trademark Bully

Engaging in what is perceived as “trademark bullying” has caused nationwide attention. The media has reported countless stories about trademark owners engaging in tactics, such as sending cease-and-desist letters or engaging in litigation, that have been deemed frivolous and beyond the scope of their actual trademark rights. The U.S. Patent & Trademark Office defines trademark bullying as using litigation tactics that involve “an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.” Examples of trademark bullying in recent headlines include New York State’s Department of Economic Development (owner of the “I ♥ NY®” trademark) sending a cease-and-desist letter to a coffee shop for using the “I [coffee cup] N Y” logo and Chick-fil-A going after a Vermont folk artist for selling t-shirts that say “eat more kale”. 

Though these tactics are occurring, consumers are now empowered more than ever before to fight back by utilizing the magic of social media. Aggressive cease-and-desist letters are being met by resistance on blogs, Facebook, and Twitter that can lead to a public shaming. Ferrero, the owner of Nutella, has went after the founder of World Nutella Day, but had to withdraw its complaint after word spread virally that “Nutella Thanks Its Biggest Fan, Founder of World Nutella Day, by Sending Her a Cease and Desist That’s nuts!” Magic Hat has met resistance on Facebook and received negative publicity for going after West Sixth Brewing Co. because they were using an alleged confusingly similar an orange label that includes the numeral 6 and a "dingbat" star. This phenomenon of social media resistance has caught the eye of intellectual property experts who at the Corporate Counsel’s 25th Annual General Counsel Conference, advised corporations to be cautious when enforcing their marks by implementing a case-by-case basis approach rather than a one-size-fits all approach to trademark enforcement.

Trademark enforcement is a very important part of protecting ones trademark portfolio. However, in the age of social media where any story can go viral, trademark owners must be aware and consider the consequences of being labeled a trademark bully in the court of public opinion.

Campaigns and their Involuntary Endorsers?: When Acquiring a Public Performance License isn’t Enough

The campaign season is in high gear and the candidates are organizing campaign rallies in towns all across America in an attempt to convince their constituents that they should be elected for political office.  To effectively do so, candidates have always used music as a medium to capture the essence and theme of their campaign.

Though music at campaign rallies is as American as apple pie, many campaigns are learning the hard way that in order to play a song, they may need to do more than just acquire a public performance license from ASCAP, BMI or SESAC.  The blanket licenses offered by these performing rights organizations (“PRO”) do shield campaigns from copyright claims, but musicians are now exercising their rights beyond those given to them under the U.S. Copyright Act.  Recently, campaigns are receiving cease and desist letters from musicians alleging a right of publicity claim under state law, a trademark infringement claim, or a false endorsement claim under the Lanham Act solely because the campaign played the song at an event.

Larry Iser, a lawyer who represented Jackson Browne against John McCain and David Byrne against Charlie Crist, argues that “[b]y using someone’s famous song, you are turning that artist into an involuntary endorser of that campaign and message.”  This false endorsement claim, in the context of background music performed at political rallies, has not been decided upon by a court of law as of yet—however, it certainly is a winning argument in the court of public opinion.  In most situations, after receiving a cease-and-desist letter, a campaign will simply stop playing the song.  But do they have to?  Under similar, but not identical facts, the Second Circuit ruled in Oliveira v. Frito-Lay, Inc., 251 F.3d 56 (2d Cir. 2001) that a musician cannot assert a false endorsement claim because a company used the musician’s performance of a song in their television commercial.  It stated that such a right is unprecedented and would be “profoundly disruptive to commerce.” Adopting its reasoning, the court in Henley v. DeVore, 733 F. Supp. 2d 1144 (C.D. Cal. 2010) agreed that a false endorsement claim under the Lanham Act cannot be maintained “based purely on the use of [a musician’s] songs” by a campaign in a campaign video.

Though these cases involved audiovisual works, which require a synchronization license, it is reasonable to assume that the courts’ reasoning would also apply to the public performance of music at a campaign rally.  Ben Sheffner, former Special Counsel on John McCain's presidential campaign, argues that recognition of a false endorsement claim for the public performance of music would “in fact harm copyright owners' ability to license their works.”  He claims that if a licensee, such as a bar, music venue or even campaign, secures a bona fide blanket license from a PRO, thus paying all known right holders a fee to publically perform the song, it would be illogical to allow musicians to go back and demand additional compensation under a claim of false endorsement.

Though a false endorsement claim for publicly performing a song does not have much legal support today, this may not be the case in the future.  Cycle after cycle, cease-and-desist letters have been effective in preventing political campaigns from publicly performing a musician’s song.  Even though this may be due to a campaign’s unwillingness to engage in a legal battle over these types of matters, campaigns may be doing themselves more harm than good.  By constantly submitting to the demands of musicians, they are effectively admitting that a false endorsement claim may be valid.  In fact, presidential candidate Mitt Romney has implicitly acknowledged this claim when he asked for Kid Rock’s permission to use his song “Born Free” even though he already secured a BMI license to publicly perform it.  The more frequently this acknowledgement occurs, listeners may actually begin to believe that songs publicly performed at campaign events are a form of endorsement by the musician of the campaign and its message; therefore, giving credence to a false endorsement claim under the Lanham Act.