In December 2009, the North Face filed a lawsuit claiming trademark infringement and to have the company prevented from producing the line of clothing.  Jimmy and his attorney, Al Watkins, filed a response January 4, 2010 stating, “But for the actions of North Face, the South Butt saga might have been relegated to local Friday fish-fry banter. Unfortunately, and regrettably, South Butt’s youthful exuberant and obvious parody has not been embraced by North Face … Jimmy and The South Butt have no choice but to defend the present action to protect the integrity of the marketplace, freedom of choice for the consumer, freedom of speech for all, and the fundamental tenets of capitalism, competition and the American Way.”

Jimmy’s intention behind creating the South Butt line was not to steal the North Face thunder but to poke fun at the norm. He said he wanted to spoof a status symbol — The North Face logo, which he frequently saw his fellow classmates of Chaminade College Preparatory wear regardless of whether they related to it.  He said that he wanted to create a brand that was bought because it was an affordable and a quality product, not something that was bought because everyone else was doing it.

The symbol used on the North Face is two arches that follow the words ‘North Face.’  The South Butt places these arches first, turned them upside down, and then uses the words ‘South Butt.’  The trademark is similar and does seem like a fair suit for trademark infringement.  However, there is a lot of support for the South Butt.  A trademark attorney for Town and County, Annette Heller, reported that if the North Face can make a good case for parody, they have a good shot at winning the case.  Winkelmann’s attorney, Watkins, has stated publicly that there is no consumer who confuses the South Butt logo with the North Face logo; in the era of free market capitalism, the consumer should be given the power to decide whichever they prefer.

While this case is just in the early stages, marketing techniques frequently employ the use of a similar design, catch phrase, or symbol to get people to buy their product, usually a cheaper version of the original product.  Enter any shoe store and you will find 30 types of boots that look like the infamous UGG boots however they are slightly modified and cost around $100 less than UGGs.  Is this really wrong to do?

According to the fair use doctrine, parodies, while similar to the original work, are protected from copyright claims, codified in 17 USC § 107. The Supreme Court of the United States stated that a parody “is the use of some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s works.”¹ That commentary function provides some justification for use of the older work.²

According to the Supreme Court decision and the fair use doctrine it seems that Winkelmann’s South Butt clothing line is fair game.  North Face attorneys state that the success of North Face attracts opportunists seeking to pirate its famous trademarks for their inferior knockoffs.  However, Winkelmann’s stands by his clothing line design putting a disclaimer on his website that South Butt is in no way to be confused with the North Face.  He also added to his site, and his popular Facebook fan page, “If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products.”  The North Face does not appreciate his sense of humor, it seems as they are still proceeding with the suit.  However, for the South Butt, this case has brought them some well-deserved publicity and hopefully will help boost sales.

For now it seems that it will be up to the consumer to decide if they prefer the expensive status symbol of the North Face, or they want to partake in the parody, the cheaper version that pokes fun at it, the South Butt.  And for now, if you can’t tell the difference between the two, namely a face and a butt, then there are bigger issues for you!
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¹ Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 569-70 (1994).
² See id.

Digitization of books poses a general problem for the publishing industry.  Traditional books have production costs and therefore, higher prices; the lower priced e-book with little to no production cost could eventually overhaul the entire business.² But as industry players work to solve that problem, there are ways to slow or prevent the immediate issue of e-book piracy: delaying the release of an e-book;³ refusing to create an e-book at all;⁴ protecting files with digital rights management (DRM);⁵ and making more e-books available.⁶ What’s clear is that the publishing industry cannot go the same route as the music industry, which alienated its customers.⁷ The publishing industry should employ the short-term measures of diligently requesting that file-hosting sites remove illegally posted material, promoting the e-books that are available, and permitting consumers to load e-books onto multiple devices; thus allowing the industry to focus on effectively strategizing and transitioning to a world where e-books are more ubiquitous.

While some argue that e-book piracy is nothing for the industry to worry about,⁸ it is becoming more widespread.⁹ For example, immediately after the release of Dan Brown’s The Lost Symbol, “pirated digital copies of the novel were found on file-sharing sites . . . .  Within days, it had been downloaded for free more than 100,000 times.”¹⁰

Many file-sharing websites post a list of information required in order to remove unauthorized uses of copyrighted material.¹¹ However, requesting the removal of individual posts can be a time-consuming task.  One publisher, John Wiley & Sons, employs three full-time staff members to trawl for unauthorized copies.¹²

Authors are not always so invested in removing illegally posted material and their views vary on the subject of e-book piracy.  Stephen King, for example, posited to Rich that it seems useless to pursue e-book pirates: “My sense is that most of them live in basements floored with carpeting remnants, living on Funions and discount beer.”¹³ However, other authors threaten, or follow through with, suits and legal action against such posters.¹⁴ Still other authors view e-books as a way to find new readers, as does novelist Cory Doctorow, who believes his “problem isn’t piracy”¹⁵ but “obscurity.”¹⁶

By policing and alerting the host sites to copyright infringement as John Wiley & Sons does, publishers and authors make it clear to e-book pirates that they are committed to protecting their rights.  Unlike the music industry, the publishing industry is not garnering bad publicity by pursuing its customers, but rather enlisting only a third party’s assistance.  By making e-books available as Doctorow does, authors and publishers can make their customers feel included in the process of book digitization and so lessen the effects of piracy.  As one consumer technology analyst noted, “If electronic books can’t be had legitimately, others will step in and fill the need; and once a pirate industry is established, it probably won’t go away easily.”¹⁷

In making e-books more widely available, the publishing industry needs to be aware of their customers’ needs.  Many households have several computers, cell phones, and may someday have multiple e-readers.  Of course, digital rights protection systems (DRM) prevent the piracy that inspired this post in the first place, but it can also limit readers’ ability to access their legitimately acquired e-books on multiple devices.¹⁸

Simple solutions include limiting the number of devices that can be used or prohibiting proprietary DRM.  Amazon, for example, has a system that “could become a problem if the Kindle goes bust—then all those people who bought Kindle eBooks with DRM will have no way to read them because no other device can open the files.”¹⁹ This will become an issue of greater importance as e-book technology develops and expands.  In the meantime, publishers and authors should push e-book sellers to allow customers to read their e-books on several devices owned by the same household.

The publishing industry has much to learn from the music and film industries’ recent past.  By addressing e-book piracy in a way that includes their customers in the process, the publishing industry will have more ready and willing buyers of books of all kinds even though piracy will likely never be completely eliminated.   And by managing the current piracy problems in this way, the industry frees itself to prepare for the digitization of books, a luxury that the music and film industries did not have.
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¹ Motoko Rich, Print Books are Targets of Pirates on the Web, N.Y. TIMES, May 11, 2009, at B1.
² See Jeff Rivera, Richard Curtis: Book Publishing 10 Years in the Future, MEDIABISTRO, Dec. 31, 2009 (listing the ways a literary agent believes the publishing industry will change).
³ Matt Frisch, Digital Piracy Hits the E-Book Industry, CNN, Jan. 1, 2010.
⁴ Id.
⁵ See Tom Spring, E-Book Piracy: The Publishing Industry’s Next Epic Saga?, PCWORLD, Dec. 23, 2009 (explaining that while DRM may be a definite way to prevent piracy, publishers and consumers can be frustrated by its use).
⁶ Id. (providing examples of pirated e-books created when authors and/or publishers do not publish an e-book version).
⁷ See Rich, supra note 1 (quoting the chairman of Bertelsmann on the effects of iTunes and Napster).
⁸ See Frisch, supra note 3 (citing statistics that e-reader owners purchase more books).
⁹ See Jim Milliot, Attributor Study Finds Pervasive Online Book Piracy, PUBLISHERS WEEKLY, Jan. 14, 2010 (highlighting the findings of a report released by a company that tracks illegally posted books).
¹⁰ See Frisch, supra note 3; see also Spring, supra note 5 (showing that many best-sellers are available on unauthorized sites).
¹¹ See, e.g, File Rack, Terms of Service, http://www.file-rack.com/page/tos (last visited Jan. 19, 2010); Google, Digital Millennium Copyright Act (last visited Jan. 19, 2010); RapidShare, Support (last visited Jan. 19, 2010).
¹² Rich, supra note 1. “Gary M. Rinck, general counsel [of John Wiley & Sons), said that in the last month, the company had sent notices on more than 5,000 titles—five times more than a year ago—asking various sites to take down digital versions of Wiley’s books.” Id.
¹³ Id.
¹⁴ Id. (noting that one author “pursued more than 240 people who have posted his work to the Internet without permission”).
¹⁵ Id.
¹⁶ Id. (“Cory Doctorow . . . offers free electronic versions of his books on the same day they are published in hardcover.”).
¹⁷ Spring, supra note 5.
¹⁸ Laura Sydall, Will E-Book Anti-Piracy Technology Hurt Readers?, NPR, Mar. 25, 2009.
¹⁹ Id.

Unfortunately, Coldplay is weathering yet another legal dispute. It seems that “either Coldplay is a magnet for litigious songwriters, or [has] a real plagiarism problem.^“2 This lawsuit comes from an unfamiliar singer-songwriter: Sammie Lee Smith. Smith recently filed against Coldplay in the Los Angeles Superior Court, alleging that the band stole his material to create hits such as “Yellow,” Clocks,” and “Trouble.”³

But why a lawsuit now, when songs such as ‘Yellow’ and ‘Trouble’ were released as early as the year 2000? According to DigitalMusicNews.com, the fact that Sammie Lee Smith is such an obscure name in the music business and that Smith is suing well after the named songs were released definitely works to Coldplay’s advantage.⁴ A critical component of Coldplay’s defense is the relative obscurity of the songwriter. The songs are similar, but did Coldplay even know the song or that the songwriter existed?”⁵

According to the U.S. copyright law, “in the absence of a confession, musicians who accuse others of stealing their work must prove ‘access’ – the alleged plagiarizer must have heard the song – a ‘similarity’ – the songs must share unique musical components.⁶

Sammie Lee Smith has recorded around 4,000 songs on some 100 tapes since 1976. At this point, it is unknown how Coldplay came into contact with Smith, but the lawsuit demands that the band cease playing “Yellow,” “Clocks,” and “Trouble,” and that Smith receives an “undisclosed but undoubtedly exuberant amount of money.”⁷

History has shown with artists such as Vanilla Ice that plagiarism can ruin reputations and end careers. Coldplay knows the potential damages of such charges better than most – having been sued by Joe Satriani, Cat Stevens, and an unknown singer-songwriter, all accusing Coldplay of ripping them off in one way or another.

At this point, there are no further details regarding the lawsuit. While the Satriani versus Coldplay allegations were quite obvious, Sammie Lee Smith will have a much harder time braving the cold.
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¹ David J. Prince, Coldplay, Satriani Copyright Lawsuit Dismissed, BILLBOARD, Sept. 15, 2009.
² Paul Resnikoff, Coldplay Weathers Another Copyright Lawsuit…, DIGITAL MUSIC NEWS, Jan. 18, 2010.
³ Id.
⁴ Id.
⁵ Id.
⁶ Adam Conner-Simons, Picking Up What They’re Laying Down. GELF MAGAZINE, July 24 2007.
⁷ http://www.tmz.com/2010/01/13 (follow “music” hyperlink; then follow “exclusives” hyperlink).

From the New York Times:

“At issue is a TiVo patent on technology for storing and retrieving video on DVRs, which lets viewers pause, rewind and replay live TV. TiVo sued Dish in 2004 for patent infringement for using a similar technology on its DVRs, a case Dish lost on appeal. Dish paid TiVo $104.6 million in damages and interest and was barred from using the technology.

While the case was going on, Dish crafted a redesigned technology that it said did not infringe on TiVo’s patent. But the U.S. District Court in Marshall, Texas, disagreed and ordered Dish to pay TiVo additional damages — this time at $103 million plus interest, along with about $200 million in contempt sanctions.”

In this appeal, two of the appellate judges found that the lower court “applied the right standard in analyzing whether Dish’s redesigned technology still infringed on TiVo’s patent.”  Judge Randall Rader, the lone dissenter, said the court is “punishing a company that has made a good faith effort at a redesign.”

This is the latest of several similar lawsuits; last year, TiVo sued AT&T and Verizon “over the same patent and two others that allow multiroom viewing and correct overshooting when viewers fast-forward TV.” Turning the tables, Microsoft sued TiVo in January, alleging that TiVo has violated Microsoft patents related to such things as an on-screen TV guide.

Stay tuned for further updates.

However, the first billion-dollar athlete saw his endorsement empire crash and burn in December, the aftermath of a scandalous car crash coupled with exposure of his (many) extramarital affairs. Accenture, the global consulting giant, and AT&T have already dropped Woods. Although not officially parting ways with Woods, Gilette has said it will start phasing out Woods from promotions for its Gillette razors and shaving foams.⁶ The reason? Following the flood of information regarding Wood’s infidelities,⁷ Woods no longer represents the athletic, clean-cut family-man such brands wish to be associated with.⁸ Or as in Accenture’s case, Woods “just wasn’t a metaphor for high performance anymore.”⁹

The relationship between Woods and his sponsors seems to have turned on his “immoral” or “bad behavior” and follows a whole string of celebrity deals gone bad in the recent years. Although the details of Woods’ contracts with the likes of Accenture are not known, it is presumed that the contracts were severed based up on a “morals clause” or “bad boy clause” given the size of Woods’ contracts and the prevalence of these clauses in celebrity endorsements.¹⁰ While a 1997 survey showed that less than half of the endorsement contracts had morals clauses in them, by 2003, seventy-five percent of the endorsement deals included these clauses.¹¹

Morals clauses “enable one party to unilaterally terminate the agreement if the individual engages in conduct that could have some sort of negative impact upon the particular company or organization.”¹² Thus, these clauses are used to “terminate a talent agreement when an actor’s conduct is detrimental to the buyer’s interests or otherwise devalues the performance due.”¹³ These clauses are especially frequent in sports and entertainment contracts because advertisers, endorsees, television networks and motion picture studios wish to “quickly eliminate the celebrity/product association in the mind of the consumer where the celebrity’s image has come into disrepute in the public’s view.”¹⁴ However, it is not always clear what constitutes an “immoral behavior” as envisioned by these clauses. Morals are usually defined by the society and the concepts that are prevailing in a particular period of time.¹⁵ Therefore, courts are usually required to interpret what parties intended to encompass within the concept of an “immoral behavior”.¹⁶

The history behind the morals clauses reveal their vagueness and how their meaning has become dependent on the society and the time period. The clauses were first used by Hollywood studios in early 1920s to protect themselves against erratic behavior of their contracted actors.¹⁷ The clauses became notorious during the McCarthyist era when they were used to terminate contracts of many writers, directors and producers who were accused of being having communist leanings by the House Committee on Un-American Activities.¹⁸ Thus, during this era morality clauses were used to attack political ideologies rather than actual immoral behavior.¹⁹

More recently, morals clauses have been used against likes of Michael Vick, Kobe Bryant and Kate Moss.²⁰ These celebrities’ “immoral conduct” differed across the board. While Vick was indicted on federal charges relating to a series of alleged dog-fighting incidents,²¹ Bryant was charged with sexually assaulting a 19-year old²² and Moss was photographed using cocaine.²³

What makes Woods’ situation unquestionably different than the aforementioned stars is that his extramarital affairs, however detestable or condemnable they may be, did not lead up to a criminal charge, or even a criminal investigation. He has issued a statement saying that he will take an “indefinite break” from golf, in order to focus on his personal life and to spend time with his family.²⁴ Athletically, he is still on top of his game. Despite the breakout of the scandal, he was voted as the PGA player of the year, as well as the Athlete of the Decade by the Associated Press.²⁵

So the question remains as to whether Woods will make a come-back to golf and his millions worth endorsement deals. History shows that it is possible. For example, in 2009, 5 years after charges against him were dropped, Bryant ranked as the 10th most powerful celebrity by Forbes magazine—having earned $45 million, $24 million of it from endorsement deals.²⁶ Woods’ biggest endorser, Nike, has publicly backed Woods—saying that “Tiger just had a blip.”²⁷ Therefore, it is not too far-fetched to assume that the world’s first billion-dollar athlete will be back and make a couple billion more—with morals clauses in tow.
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¹ Kurt Badenhausen. Forbes.com, The First Billion Dollar Athlete. September 28, 2009, available at: http://www.msnbc.msn.com/id/25691350/
² Id.
³ See Andrew Farrell and Tom Van Riper. Billionaire Status is Tiger Woods’ Next Trophy. MSNBC. July 15 2009. Available at: http://www.msnbc.msn.com/id/25691350/.
⁴ Id. It is reported that he has made $750 million from his endorsement deals alone. See also Erin Geiger Smith Will “Morals” Clauses Impact Tiger’s Endorsements? December 8 2009, The Business Insider available at: http://www.businessinsider.com/will-morals-clauses-impact-tigers-endorsements-2009-12
⁵ Badenhausen.
⁶ Matthew Lynn, Jan 4 1010, BusinessWeek, Tiger Woods’ Sponsors Should Forgive and Forget. Available at: http://www.businessweek.com/news/2010-01-04/tiger-woods-s-sponsors-should-forgive-and-forget-matthew-lynn.html
⁷ Larry Dorman, Woods Says He’ll Take ‘Indefinite Break’ from Golf, N.Y. Times, Dec. 11, 2009, available at: http://www.nytimes.com/2009/12/12/sports/golf/12woods.html
⁸ Lynn, supra n. 6.
⁹ Brian Stelter, Accenture, as if Tiger Woods Were Never There, N.Y. Times, Dec. 16, 2009 (quoting Accenture spokesperson Fred Hawrysh), available at: http://www.nytimes.com/2009/12/17/business/media/17accenture.html.
¹⁰ See Dave Carpenter and Emily Fredrix, ‘Bad Boy’ Clauses Can Sink Woods, Other Endorsers, MSN MONEY, Dec. 17, 2009, http://news.moneycentral.msn.com/ticker/article.aspx?Feed=AP&Date=20091217&ID=10899054&Symbol=US:NKE
¹¹ Fernando Pinguelo. 2008 SETON HALL UNIVERSITY SCHOOL OF LAW SPORTS & ENTERTAINMENT LAW SYMPOSIUM: FROM THE ARENA TO THE STREETS — THE PRESSURES PLACED ON ATHLETES, ENTERTAINERS, AND MANAGEMENT. 19 Seton Hall J. of Ent. And Sports Law 381, 485 (speech)
¹² Id. at 482.
¹³ Noah B. Kressler, Using The Moral Clauses in Talent Agreements: A Historical, Legal and Practical Guide, 29 Columbia J. L. & Arts 235,
¹⁴ Fernando Pinguelo and Timothy D. Cedrone. Morals? Who Cares About Morals? An Examination of Morals Clauses in Talent Contracts and What Talent Needs to Know, 19 SETON HALL J. SPORTS & ENT. L. 347, 363 (2009).
¹⁵ Id. at 352.
¹⁶ Id.
¹⁷ Id. See also Pinguelo, supra n. 9, at 483.
¹⁸ Pinguelo and Cedrone, supra n. 12, at 355.
¹⁹ Id. at 356.
²⁰ Id. at 357 (internal citations omitted).
²¹ Mark Maske, Falcons’ Vick Indicted in Dog Fighting Case, WASH. POST, Jul. 18, 2007, available at: http://www.washingtonpost.com/wp-dyn/content/article/2007/07/17/AR2007071701393.html.
²² Alex Markels, Decision to Charge Bryant Due Today, N.Y. TIMES, Jul. 18, 2003, available at: http://www.nytimes.com/2003/07/18/sports/basketball-decision-to-charge-bryant-due-today.html?scp=264&sq=&st=nyt.
²³ Guy Trebay and Eric Wilson. Kate Moss is Dismissed by H&M after Furor over Cocaine, N.Y. TIMES, Sept. 21, 2005, available at: http://www.nytimes.com/2005/09/21/business/media/21moss.html.
²⁴ Dorman, supra n. 7.
²⁵ CNN.com, Tiger Woods Wins PGA Despite Personal Woes, Dec. 19, 2009, http://www.cnn.com/2009/US/12/19/tiger.woods.award/index.html.
²⁶ Forbes.com, The Celebrity 100. June 3, 2009, http://www.forbes.com/lists/2009/53/celebrity-09_Kobe-Bryant_OKPF.html
²⁷ Lewis Dean, Nike Boss: ‘Tiger Just Had a Blip,’ SkyNews Online, Dec. 15, 2009, http://news.sky.com/skynews/Home/World-News/Tiger-Woods-Affairs-Nike-Boss-Phil-Knight-Says-Golfers-Revelations-Are-Just-A-Minor-Blip/Article/200912215500097?f=rss.

The Foodie Culture conversation ranges from poetic musings regarding the roots (no pun intended) of a particular ingredient, perhaps its region or even farm of origin, to discussions of exciting new chefs, restaurants, and cooking methods, from greedily viewed “food porn” found at foodgawkerⁱ or Tastespottingⁱⁱ to a deep-rooted affinity for  the Shake Shack Shack Stack.  Most importantly, anyone can be a foodie, regardless of personal resources;ⁱⁱⁱ an interest in boiled cabbage or tuna casserole is as sufficient of a ticket as a penchant for white truffles and grape-specific wine glasses.  For the law student, an interest in food can in turn satisfy his interests in, amongst other things, aesthetics (e.g. foodporn), trends (e.g. molecular gastronomy, haute greenmarket cuisine), creativity, and even exclusivity (like the impossible reservation at Mario Batali’s Babbo).

While its ranks have been fattened, Foodie Culture was dealt a major blow this past October with the demise of Gourmetmagazine, considered by some to be the “grande dame of food periodicals,”^iv published by Condé Nast, “the high church of glossy magazine publishers,”^v and renowned for its “gorgeous editorial products”^vi and “panoramic view of epicurean sensibility.”^vii Despite a subscription base of 900,000,^viii Gourmet couldn’t survive the recession-spurred precipitous decline in advertisement revenue.

Many claim that while the current economic malaise may have been Gourmet’s final artery-clogging spoonful, its demise is really the result of myriad competition from the internet, the thief of the print audience.^ix Food bloggers have been especially blamed because they’re viewed as more accessible than grandiose publications like Gourmet; they can cater to any taste, dietary requirements, or locality^x without the traditional limits of print content, such as advertisement concerns or recipe modifications and substitutions.^xi Bloggers, for the most part, have done nothing illegal and, importantly, they’re statutorily authorized to lift Gourmet’s recipes directly from its pages without any legal consequence;^xii the 1976 Copyright Act explicitly states that recipes are not copyrightable.^xiii This copyright aberration begs the question of why do other original works of authorship receive protection,^xiv but not recipes?  Can food publications survive without creating and protecting an ownership interest in the recipes they create?

The general doctrine of copyright law is to deny copyright protection to items of practical utility, such as apparel and furniture,^xv because while originality may exist, functional considerations ultimately dictate their form.^xvi Except in a very limited sense,^xvii recipes also fall into this category, described as intellectual property’s “Negative Space,”^xviii a large area of creativity where copyright and patent protection don’t penetrate.”^xix

Despite banishment to this vulnerable space, food, like fashion and furniture design, has a history of innovation, some of which can be attributed to Gourmet magazine.  In fact, it is this lack of intellectual property protection that is the driving force behind innovation in these industries.  As a derivative work,^xx where each innovation is built from the innovation of a previous chef, this lack of an enforceable property interest enables both chefs — and food publications — to improve and interpret recipes without fear of copyright infringement.  Ground beef becomes stew, which becomes shepherd’s pie, which then becomes sheperd’s pie deconstructed.  Perhaps the food bloggers’ cavalier appropriation of Gourmet’s work product gave the former an impossible advantage, but if you traced Gourmet’s recipes far enough back (and likely not very far), one would likely find that this grande dame is guilty of the same acts.  While no one, especially foodies, likes to see beautiful food publications fold, the digitization of recipes, which enables us to browse a world of recipes and food photos, which are often more accessible then perfect print productions, is an impossible foe for traditional print.
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ⁱ http://www.foodgawker.com
ⁱⁱ http://www.tastespotting.com
ⁱⁱⁱ Nicole Weston, What is a Foodie, Anyway?, http://www.slashfood.com/2006/02/10/what-is-a-foodie-anyway.
^iv Belinda Luscombe, Gourmet Magazine Heads to the Meat Grinder, Oct. 6, 2009, http://www.time.com/time/business/article/0,8599,1928274,00.html.
^v Nat Ives, Chairman’s focus on glossies cost Gourmet dearly, Oct. 12, 2009, http://www.crainsnewyork.com/article/20091012/free/910129997.
^vi Id.
^vii Luscombe, supra note 4.
^viii Id.
^ix Susan Currie Sivek, Did the Web Kill Gourmet Magazien?, Oct. 26, 2009, http://www.pbs.org/mediashift/2009/10/did-the-web-kill-gourmet-magazine299.html.
^x Id.
^xi Id.
^xii Christopher J. Buccafusco, On the Legal Consequences of Sauces: Should Thomas Keller’s Recipes be Per Se Copyrightable?, 24 Cardozo Arts & Ent. L.J. 1121, 1124-25 (2007). See 1976 Copyright Act, 17 U.S.C. § 102(b).
^xiii Id. “Facts of ingredients and their combination in cooking recipes are underlying ideas and are not subject matter of copyright apart from compilation in which they appear.”
^xiv 17 U.S.C. § 102(a).
^xv Kal Raustiala & Christopher Sprigman, The Piracy Paradox: Innovation & Intellectual Property in Fashion Design, 92 Va. L. Rev. 1688, 1699 (2006).
^xvi Buccafusco supra note 12, at 1130.
^xvii Raustiala, supra note 15, at 1769.
^xviii Id. at 1764.
^xix Id.
^xx Id. 1767.

American Needle subsequently filed an antitrust action in the Northern District of Illinois against the NFL, NFL Properties, the individual teams, and Reebok for the loss of its headwear license, claiming that the agreement between Reebok and NFL Properties violated § 1 of the Sherman Antitrust Act^vii because it illegally restricted market trade for purchasing rights to NFL logos.^viii The NFL responded with the “single-entity argument” that renders it incapable of violating § 1: it was immune from liability because the individual teams constituted a single entity under antitrust law. This assertion was based on the Supreme Court’s 1984 decision in Copperweld Corp. v. Independence Tube Corp.,^ix which held that for antitrust purposes, a parent corporation and its wholly owned subsidiary are a single unit, because “the parent-subsidiary relationship did not yield the anti-competitive risks that the Sherman Antitrust Act was enacted to combat.”^x

The district court held, and the Seventh Circuit affirmed, “that the NFL acts as a single entity when collectively licensing its intellectual property”^xi, as the NFL teams have functioned as a “single source of economic power”^xii since 1963 and antitrust law generally encourages competition inside a business organization.^xiii American Needle seeks to overturn the ruling and reverse the Seventh Circuit.

Marc Edelman, a professor at the Dwayne O. Andreas School of Law at Barry University and Of Counsel at Ebanks & Sattler, was cited in a brief to the Supreme Court^xiv where he opines that “clubs in the four premier American sports leagues lack sufficient unity of interest for any court to classify them as ‘single entities.’”^xv In a recent post on the popular legal blog Above the Law, Edelman writes: “while there may be strong reasons why a court would uphold the NFL joint licensing program . . . it makes little sense from a law-and-economics perspective for the Court to broaden antitrust law’s single-entity defense at the expense of allowing for full discovery and economic analysis.”^xvi

The Washington Post published an Associated Press article voicing some of the most pertinent concerns that would result from a decision granting the NFL a blanket antitrust exemption.^xvii Player advocates say that football and other professional sports leagues, like basketball and hockey, could suffer player strikes.^xviii Leagues could also have latitude to raise ticket prices, reshape non-sport business practices, and reduce player salaries by ending free agency.^xix As such, the NBA, NHL, NCAA, NASCAR, MLS, and professional tennis are all supporting the NFL with the hope that the Court will extend the exemption to other sports beyond Major League Baseball, especially because other circuits have ruled differently.^xx The article also explains that lawsuits against pro sports leagues, multinational businesses, and credit card companies could result from a decision rendering the league’s teams separate entities, and a victory by the plaintiff American Needle, according to the NFL’s court briefs, “would convert every league of separately owned clubs into a walking antitrust conspiracy.”^xxi

The NFL players’ union and other professional athletic organizations oppose the antitrust protection, observing that labor agreements in multiple sports leagues expire in or around 2011.^xxii Drew Brees, the starting quarterback for the New Orleans Saints, wrote an editorial published in the Washington Post on January 10, 2010, where he articulates that the NFL’s appeal for the Supreme Court to dramatically expand its “single-entity” ruling is “an odd request – as if I asked an official to review an 80-yard pass of mine that had already been ruled a touchdown.”^xxiii Brees opines that the idea that the teams function as a single entity is “absurd” because the 32 organizations comprising the NFL and their staff are in stiff competition for coaches, players, and especially the fans’ loyalty.^xxiv He also expresses the concern that players could lose their free agency leverage if the Court rules that the NFL is a single entity exempt from antitrust laws. ^xxv

Gabriel A. Friedman, a law professor and the director of the Tulane Sports Law Program, addresses three points that he believes have been misunderstood or overlooked by the press.^xxvi He stresses that if the NFL loses this case, it does not mean that their exclusive licensing agreements are illegal; rather, the current arrangement “will then be analyzed under the rule of reason, where a court will weigh the pro-competitive benefits of the agreement versus its anticompetitive effects.^xxvii Friedman also mentions the many comparisons that have been made to the Major League Baseball exemption from competition law, and emphasizes that Curt Flood, the leader of the fight for baseball free agency, lost his case before the Supreme Court when baseball’s exemption from competition law was reaffirmed.^xxviii Finally, Feldman explains that the NFL already has an antitrust exemption for its television deals with Fox, NBC, and CBS, so regardless of the outcome, these agreements cannot be challenged; however, the decision could affect the NFL’s arrangements with the NFL Network and DirecTV.^xxix

From a legal perspective, we’ve been overloaded by the press coverage of this case. Upon review of the transcript of the oral arguments, it appears that the justices have doubts about the NFL’s position. I specifically note Justice Sotomayor’s statement to counsel for the NFL: “you are seeking through this ruling what you haven’t gotten from Congress: an absolute bar to antitrust claims” and Justice Breyer’s analogy to baseball to demonstrate that competition between NFL teams in selling apparel is unlikely. ^xxx

Interestingly enough, one sports league hasn’t been mentioned in the articles discussing the ramifications of an extension of the single-entity rule: the new United States Football League. The original United States Football League played during the spring and summer months from 1983-85, and filed an antitrust action against the NFL after announcing its intention to switch to a fall schedule beginning in 1986.^xxxi Though the USFL won the lawsuit, it received such minimal damages that the league collapsed under its debt before embarking on its first fall season.^xxxii

According to an August 2008 press release, the new USFL’s inaugural season was slated to begin in February 2010,^xxxiii but a November 2009 announcement modified the plan for the league to begin in Spring 2011.^xxxiv Citing both history and a desire for a spring football season, the teams will play “traditional stadium-played football with most of the rules being based from the original USFL concepts.”^xxxv Whether the Supreme Court affirms the Seventh Circuit’s single-entity antitrust protection for the NFL or reverses, important questions remain within the realm of professional football. Will the new USFL be subjected to the same rules as the NFL with regard to antitrust protection? If the NFL is successful, will the USFL seek its own exemption, or could it automatically be included if the single-entity defense is expanded to encompass other professional sports leagues?

Only this much is certain: regardless of the legal consequences of the Court’s ruling, there will be football, and hats will cost more money.

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ⁱ American Needle v. National Football League, et al., 538 F.3d 736, 737 (7th Cir. 2008), cert. granted, 129 S. Ct. 2859 (Dec. 14, 2009).
ⁱⁱ Transcript of Oral Argument, American Needle v. National Football League, et al., No. 08-661, available at http://www.supremecourtus.gov/oral_arguments/argument_transcripts/08-661.pdf
ⁱⁱⁱ American Needle, 538 F.3d at 737.
^iv Id. at 737–38.
^v Id. at 738.
^vi Id.
^vii 15 U.S.C. § 1.
^viii American Needle, 538 F.3d at 738.
^ix 467 U.S. 752 (1984)
^x American Needle, 538 F.3d at 738.
^xi Gabriel A. Feldman, American Needle and the NFL’s Single Entity Argument, HUFFINGTON POST, Jan. 2, 2010, http://www.huffingtonpost.com/gabriel-a-feldman/american-needle-and-the-n_b_409532.html.
^xii American Needle, 538 F.3d at 744.
^xiii Id.
^xiv Marc Edelman Biography, http:// www.marcedelman.com/marcedelmanbio.html (last visited Jan. 12, 2010).
^xv Marc Edelman, Why the “Single Entity” Defense Can Never Apply to NFL Clubs: A Primer on Property-Rights Theory in Professional Sports. 18 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 891 (2008).
^xvi Marc Edelman, Sports and the Law: Oral Arguments Begin Tomorrow in American Needle v. NFL, ABOVE THE LAW, Jan. 12, 2009 http://abovethelaw.com/2010/01/sports_and_the_law_oral_argume.php#more.
^xvii Jesse J. Holland, Hats off: NFL apparel fight could have big impact, WASH. POST, Jan. 11, 2010, available at http://www.washingtonpost.com/wp-dyn/content/article/2010/01/11/AR2010011100249.html?sub=AR.
^xviii Id.
^xix Id.
^xx Id.
^xxi Id. (quoting Brief of Respondent at 21, American Needle v. National Football League, et al., No. 08-661, available at http://www.abanet.org/publiced/preview/briefs/pdfs/09-10/08-661_RespondentNFL.pdf)
^xxii Id.
^xxiii Drew Brees, Saints’ quarterback Drew Brees weighs in on NFL’s Supreme Court case, WASH. POST, Jan. 11, 2010, available at http://www.washingtonpost.com/wp-dyn/content/article/2010/01/07/AR2010010702947.html?hpid=opinionsbox1.
^xxiv Id.
^xxv Id.
^xxvi Friedman, supra note 10.
^xxvii Id.
^xxviii Id.; see also Flood v. Kuhn et al., 407 U.S. 258 (1972).
^xxix Id.
^xxx Supreme Court seems skeptical of NFL antitrust protection, ESPN.com, Jan. 13, 2010, http://sports.espn.go.com/nfl/news/story?id=4822872 (last visited Jan. 13, 2010); see also Transcript of Oral Argument, supra note 2, at 16, 47.
^xxxi USFL – United States Football League, http://www.oursportscentral.com/usfl/history.php (last visited Jan. 12, 2010).
^xxxii Id.
^xxxiii The New United States Football League to Kick Off in February 2010, http://www.mediasyndicate.com/index.php?name=News&file=article&sid=10118 (last visited Jan. 11, 2010).
^xxxiv NewUSFL, http://www.newusfl.com/ (last visited Jan. 12, 2010).
^xxxv Id.

In February 2009, the Associated Press claimed that Fairey had unlawfully used one of their images as the basis for his work.  The alleged photograph was taken for the A.P. by freelance photographer Mannie Garcia at the National Press Club in April 2006.  Fairey initially denied the allegations, claiming instead that his work was based on a picture of Barack Obama and George Clooney which was taken during the same event.  As a preemptive measure, Fairey filed a lawsuit against the A.P. asking the judge to find that his work is protected under the fair use exceptions to copyright law, which allows limited use of copyrighted material for criticism or comment.

The question of which photograph was the underlying work has implications in determining whether the poster was legally a fair use.  Factors that determine whether a derivative work is protected under the fair use exception include how much of the original work was taken and how substantially the original work was altered.  The image that the A.P. alleged was the underlying work is extremely similar to the poster, and was likely too similar to fall under the fair use exception.  Fairey’s chances of winning a fair use argument would be much greater if he used an image that required more significant alteration on his part.

In October 2009, Fairey admitted that the basis for his work was in fact the photograph that the A.P. had identified.  He said:

“While I initially believed that the photo I referenced as a different one, I discovered early on in the case that I was wrong.  In an attempt to conceal my mistake I submitted false images and deleted other things.”

At present time, the case is still pending in New York.  According to Fairey, sales of the “Hope” poster have earned approximately $800,000, all of which was donated back into the Obama campaign and various other charities.  Laurence Pulgram, an IP lawyer who formerly represented Napster in its copyright lawsuit with Metallica, said that Fairey’s lying and subsequent cover-up will make him very unsympathetic:

“This was a brain-dead move by Mr. Fairey, and it could be the turning point. His lawyers will still be able to argue that he made a ‘fair use’ under copyright law, but it’s a whole lot less likely that the court or jury will think that what he did was actually ‘fair’ if he has lied and tried to mislead the entire world about what use he made.”

The A.P. has said that it plans to donate any proceeds it obtains for past use of the photograph to charity.

The Fairey – A.P. situation has reignited the long standing debate about the fine line between an artist using influences in his or her work and blatant theft.  Henry Jenkins, a professor at the University of Southern California, called the battle between AP and Fairey “an epic struggle between the old media and new-media paradigms, a dramatization of one of the core issues of our times.”  Fairey, who has produced many controversial pieces over the years, has been accused by critics of “expropriating and recontextualizing artworks of others”.  In fact, the Obama campaign welcomed the image but never officially adopted it because of the potential copyright problems. In a recent interview Fairey showed remorse for lying, saying:

“When you’re bending the rules you need to be completely accountable and on the level and able to justify your actions.  That’s how I’ve tried to operate most of the time.  I had a recent slip up you probably know about.  That’s why I’m so mad at myself.  It undermines all the rule-breaking with integrity.”

Mannie Garcia, who took the original photograph, had an interesting take on the matter:

“I don’t condone people taking things, just because they can, off the internet.  But in this case I think it’s a very unique situation.  If you put all the legal stuff away, I’m so proud of the photograph and that Fairey did what he did artistically with it, and the effect it’s had.”

Fairey, who believes that artists should be able to create freely, says that he regrets that his actions distracted from the issue of fair use for artists: “Regardless of which of the two images was used, the fair use issue should be the same.”

As a result of the city’s granting of the new operating license to Dean J. Poll, operator of the equally famous Central Park Boathouse, the Leroy family filed for bankruptcy on September 9, 2009, with 452 listed creditors looking to reclaim $8 million. The bankruptcy action has sparked media attention, as the assets of Tavern on the Green are auctioned off, with items generally ranging from $100 to $1 million.

The most valuable asset for Tavern on the Green, and the most controversial, is its name, which has been appraised at a value of $19 million. Initially, the city took the position that it did not own the name Tavern on the Green, and would leave it to the Leroy family to control. The city subsequently changed its stance, and the ownership of the Tavern on the Green trademark is now being hotly contested in federal court.

Judge Cedarbaum of the Southern District, whose decision on the trademark ownership is expected shortly, recognizes that the ownership of the name is not a clear-cut issue. Warner Leroy, who took control of Tavern on the Green in 1976, was granted a trademark for the restaurant name in 1981, and has expended legal fees throughout the years defending the legality of the trademark against other restaurants attempting to use the restaurant’s name. The burden for the city will be overcoming that incontestable trademark. The city’s arguments lie primarily in the failure by Mr. Leroy to disclose in his trademark application that the city has owned a building in Central Park known as Tavern on the Green since 1934, more than 40 years before the name and operating license were granted to Mr. Leroy. Moreover, the idea to turn the former sheep pasture into a restaurant was incontestably that of the city, and not of Warner Leroy.

Meanwhile, the restaurant’s doors remain closed for the first time in more than 30 years, and its more than 400 staff members remain unemployed. In an effort to avoid further delays in the reopening of the restaurant under the operation of Dean J. Poll, and because the city refuses to partake in a bid war on a name it believes it owns, the city chose a backup name for the restaurant: Tavern in the Park.

In December 2009, however, the United States Patent and Trademark Office (the “Trademark Office”) denied the city’s application for a trademark on Tavern in the Park because the new name “merely describes a feature or characteristic of the applicant’s services, in that they take place in a tavern-style restaurant in a park.” The decision of the Trademark Office accords with trademark law generally, in that a name that merely describes a thing is not worthy of a trademark, since the function of a trademark is to identify and distinguish the goods and services of one seller from those sold by all others.

Some see the Trademark Office’s decision as a setback for the city, but Gerald E. Singleton, senior intellectual property lawyer for the New York City Law Department, told the New York Times that the finding “was not a blow to the city at all,” since the Trademark Office “didn’t say that the city can’t use the Tavern in the Park name.” The New York Times further noted that the Trademark Office might have been attempting to “avoid conflict with other restaurants called Tavern in the Park, most notably the Tavern in the Park in Chicago.”

If the name Tavern in the Park is not sufficiently distinct to qualify for a trademark, however, does that decision strengthen the Leroy family’s argument in bringing an unfair competition claim against the city if Judge Cedarbaum decides that the Leroys own the trademark?

Unfair competition applies where a product name is confusingly similar to the name of a trademarked product. As the Eleventh Circuit noted in John H. Harland Co. v Clarke Checks, Inc., 711 F.2d 966 (11th Cir. 1983), where a defendant adopts a product name with the intent of deriving benefit from the reputation of the plaintiff, the court should infer confusing similarity in violation of unfair competition regulations.

That seems to be exactly what the city is trying to do. The city “intentionally chose a name that was as close to the actual name as possible” to evoke in potential consumers the reputation of the former Tavern on the Green. Since new restaurants require an enormous amount of advertising and difficulties in building brand awareness, using a name reminiscent of Tavern on the Green essentially provides the city with a shortcut to the “expensive and time-consuming process that is necessary to build the kind of awareness that Tavern on the Green would immediately bring to mind.”

If the federal court decides that the Leroy family owns the trademark, the Leroys plan to use the international reputation of Tavern on the Green to sell restaurant memorabilia, gift items, salad dressings, and cooking oils. The city’s similar use of that reputation could provide unfair competition to the Leroys as trademark owners.

The Trademark Office’s denial of the city’s application for an independent trademark on Tavern in the Park could strengthen that claim because it recognizes that “the LeRoys’ operations at Tavern on the Green provided specific goods and services that were unique and important — that went beyond the description in the name.” Either way, it seems that “What’s in a name?” is really a large sum of money, and a constant stream of litigation.

The FCC had laid out the doctrine in 1949 in its “Report on Editorializing by Broadcasting Licensees” to clarify confusion that existed in the broadcasting world about how far stations could go in expressing their own views. Broadcasters had an affirmative duty to air controversial issues so long as they made available opportunities to express opposing views, the FCC said, adding that no one had the right to distort the news.¹

Speaking for the court, Justice White stated in Red Lion, 395 U.S. 367, 369 (1969) that:

The Federal Communications Commission has for many years imposed on radio and television broadcasters the requirement that discussion of public issues be presented on broadcast stations, and that each side of those issues must be given fair coverage. This is known as the fairness doctrine, which originated very early in the history of broadcasting and has maintained its present outlines for some time.

Since its repeal, there have been rumblings as to whether or not the doctrine should be formally re-implemented. However, some believe the current media coverage is overblown. “The conservative buzz on this issue derives from no more than a few isolated quotes over the past several months by 5 of the 284 Democrats in Congress.”² This is grounded in the belief that the current broadcast news landscape is partisan and stratified. Advocates on both sides of the debate believe that either the Doctrine should be reinstated in order to ensure broadcasting fairness, or that by reinstating it the government would be curtailing the First Amendment rights of broadcasters.

Proponents of bringing back the Fairness Doctrine suggest a number of reasons as to why it was effective, or how it could be effective if re-implemented. First, defenders of the doctrine suggest it is necessary to maintain an open deregulated media accessible to the public.³ By eliminating the requirement for opposing viewpoints, as well as the necessity to allow individual citizens the opportunity to voice their opinions, the F.C.C. ensured that the marketplace of ideas could not come to fruition. Since the media is owned by the wealthy, some suggest they will not air fringe views and stifle expression.

However, this is a misguided proposition. First, statistics show that when it was enforced, the Fairness Doctrine barely granted access to citizens who made complaints. The Supreme Court has cited statistics that show it may have not been nearly as effective as proponents of it believe. “Of every 1,000 complaints received between FY 1973 and FY 1976, approximately 4 resulted in station inquiries, 1 in an adverse ruling, and “1/3 of 1” in a general fairness adverse ruling. The average complainant truly had only about a one in a thousand chance.”⁴

Second, the Fairness Doctrine, when enforced, was not successful in granting media access to the individual anyways. The above statistics show that “…because there is little practical difference between a seldom-enforced regulation and no regulation at all, the practical effect of deregulation is not great.”⁵

Today’s highly polarized cable news landscape is extremely polarized. On one end of the spectrum one finds highly conservative news outlets such as FOX News, and on the other end, liberal channels such as MSNBC. A paramount reason as to why the Fairness Doctrine should not, and realistically could not, be re-implemented is a matter of plausibility. Individuals who tune into a conservative, more right-wing news channel such as FOX News are doing so because they enjoy the biased views of the station. The same applies for MSNBC. Forcing a channel such as FOX News to discuss the merits of the pro-choice ideology completely undermines what such a station is attempting to do in the first place, spread its own ideology, without apologies. The problem does not lie with the individual television stations, but rather, with the viewers themselves.
________________________________________________________________________________________

¹ Kay Mills, Changing Channels: The Civil Rights Case That Transformed Television 27 (University Press of Mississippi, 2004) (2004).
² Administrative Law Review 2008, The Fairness Doctrine: A FLAWED MEANS TO ATTAIN A NOBLE GOAL.
³ The Impact of Deregulation of the Fairness Doctrine on the Broadcast Industry and on the Public. 47 Admin. L. Rev. 625 (citing The Demise of the Fairness Doctrine, 31 Fed. Comm. L.J. 161, 163 (1989)).
⁴ 47 Admin. L. Rev. 625 citing STEVEN J. SIMMONS, THE FAIRNESS DOCTRINE AND THE MEDIA 31, 210-211 (1978).
⁵ Id. at 633.