Just Another Pretty Face – Pretty Boy Somers Loses His Bid to Keep His Name and Likeness from WWE

Pretty BoyAn interesting decision came down this week upholding the 1st Amendment rights of  World Wrestling Entertainment, Inc. or the WWE. Former wrestler “Pretty Boy” Doug Somers, had sued WWE because he didn’t like the fact that it was using his name and likeness on its website. Finding that it was similar to historical references to famous baseball players, U.S. District Judge Marvin H. Shoob said the WWE had a 1st Amendment Right to include Somers on its website because the public is constitutionally entitled to be informed about the history of events that were widely publicized when they happened:

“Similar to these baseball players, plaintiff placed himself before the public. Plaintiff appeared in wrestling matches before thousands of spectators,” the judge wrote. “Plaintiff must have understood the important role media publicity played in promoting his ‘Pretty Boy’ persona and the public’s interest in professional wrestling in general.”

Judge Shoob went on to hold that the history of the so-called sport is “integral to the full understanding and enjoyment of the current professional wrestling matches and current wrestlers,” and ultimately concluded that “the information on WWE’s websites … is a matter of public interest and protected by the First Amendment.”

While Somers had argued that the WWE’s historical use of Somers’ name and likeness were exempt from free-speech protection because it was commercial in nature, Judge Shoob was not persuaded:

“WWE is not using plaintiff’s identity to advertise WWE’s goods or services or in connection with such goods and services,” the order said. “Plaintiff’s identity is not being used to sell a product in an advertisement, but instead, is referred to as part of the historical events of professional wrestling.”

The ruling dismissed the case with prejudice and even ordered Somers to pay the WWE’s costs. What guidance is provided by this decision? If you need to include the name and likeness of a public figure to be historically accurate about past events, it is probably OK, so long as the purpose is not primarily for commercial use. In this case, the Judge held that historical facts about Pretty Boy’s career on a website to promote the sport of wrestling was not commercial use, even though other products were sold on that website, because the commercial use was “incidental” to the factual use of Pretty Boy’s image and likeness. However, the result might have been different if WWE had used Pretty Boy’s image and likeness in an actual advertisement for goods, rather than in a historical recitation of past events. All in all, it was a bad day for Pretty Boy but a good one for folks interested in wrestling “history.”

The case is Douglas Duane Somerson v. Vincent K. McMahon et al., case number 1:12-cv-00043, in the U.S. District Court for the Northern District of Georgia.

WWJD?- Probably Not Send a Cease and Desist Letter

Jesus Rafael

Saw this interesting article today from the Wall Street Journal. The United States Patent and Trademark Office let an Italian company co-opt the name of Christianity’s central figure for use on clothing. Churches are probably OK making a few t-shirts with Jesus’ name on them but, if you are trying to commercialize the name on clothing, the trademark owner is not very forgiving.

Harlem Shake: The Making and Monetizing of Baauers Viral Hit | Billboard

Harlem Shake: The Making and Monetizing of Baauers Viral Hit | Billboard.

I’m Speaking at an Upcoming Trademark Law Webinar

I will be one of the speakers at a webinar on the Likelihood of Confusion Standard in trademark law on September 27th, 2012. Check out this link for more information if you are interested in attending or if you just need some CLE credit.

Patent Trolls Win Bigger Judgements than Companies that Are Actually Doing Business With Their Patents

The latest PricewaterhouseCoopers‘ Patent Litigation Study found that between 2006 and 2011, the median damages award for nonpracticing entities (the so-called “trolls”) was $6.9 million, compared to $3.7 million for practicing entities. The median damages award for patent cases overall was $4 million and the number of these cases is higher than ever.

While the non-practicing entities don’t win as often as the practicing entity, when they do win, they win big. Although it might seem counter-intuitive that trolls get higher awards, that is probably because they are better positioned to “forum shop” than the company that is developing and operating a business around the patents. The report noted that cases by non-practicing entities are concentrated in a relatively small number of forums, with 10 courts accounting for 56 percent of nonpracticing entity suits.  It looks like most plaintiffs are banking on Texas justice: the Eastern District of Texas alone accounted for 12 percent of decisions involving nonpracticing entities.

For both practicing and nonpracticing entities, the report bears out the common sense belief among lawyers that juries give higher awards than judges. Between 2006 and 2011, patentees prevailed at jury trials 76 percent of the time, compared to 59.3 percent of the time at bench trials.

So, if you are a patent plaintiff, you want a jury trial in Texas if at all possible. The alleged infringer wants to be almost anywhere else, taking his or her chances with a judge.

A NY Federal Judge Dismisses Velvet Underground’s Copyright Claims against the Estate of Andy Warhol

Here’s an update on the Andy Warhol “Peel and See” Banana case, where the trademark rights of one party collide with the copyright rights of another. Very briefly, the Velvet Underground rock group is suing the Estate of Andy Warhol over the Estate’s licensing of the famous banana image. Bottom line: The Velvet Underground is out of luck on their copyright claims because they had signed a release years earlier that promised that they would not sue over the Estate’s use of the iconic image. The Velvet Underground argued that the court still needed to determine whether the Estate had copyright rights in the image but the court was unmoved by their arguments, holding “None of them has merit.” The Velvet Underground’s  trademark claims are still alive so this saga will continue.

Federal Circuit Changes Standard for Proving Inducement of Patent Infringement


The Federal Circuit caused quite a stir in the patent world last week when it drastically changed the rules for asserting and proving inducement of patent infringement claims. My partner, Terry Clark, our resident patent guru, wrote the following article to alert our clients to these changes with the able assistance of Brian Iverson. I thought it would make a great blog post as well. Both Terry and Brian are key players in Bass’ intellectual property group and I’m honored to have them as guest stars on the blog. Without further ado, here’s Terry and Brian’s post: Continue reading

Using Crowdsourcing to Create New Trademark Might Be Bad Idea

The Dub the Dew campaign must have seemed like such a good idea at the time. After all, letting the Internet choose the name for a green-apple infused soft drink is great marketing and helps build brand loyalty, right? What could possibly go wrong?

Google Announces That Copyright Infringement Lowers Search Results

Google announced today that they’re updating their search algorithms to account for sites that get a lot of copyright removal notices, moving them further down the list of results.

In an effort to move users toward more legitimate content—like Hulu, Spotify, and others—Google is now joining the anti-piracy brigade with a new algorithm. Starting next week, Google will count the number of valid copyright removal notices they receive for a site, and move that site down in the rankings if it receives a high count.

Jack Daniels Doesn’t Want to Stop You But It Sort Of Has To….

I enjoyed this extremely polite cease and desist letter that Jack Daniels sent out recently to an author who “paid homage” to the iconic brand on the cover art for his book. Despite the fact that Jack Daniel’s in-house attorney is based in California, even my refined southern mother would have approved of the gentle and cordial tone of this cease and desist letter. Jack Daniels is doing a fine job of not being a trademark bully. I have great sympathy for the brand owner who has to protect its brand or lose its rights. To the general public, policing brands against something that doesn’t seem like that big of a deal makes the brand owner look like a real jerk who is using lawyers to coerce and intimidate. However,  doing nothing can drain all of the value out of the trademark owner’s most important asset–its brand.  There has got to be a happy medium and maybe Jack Daniels has struck the right note here.

Using the same form cease and desist letter for every situation, from the blatant infringer to the little league team who thought it would make a great nick name, is not a good idea. Sometimes, killing them with kindness is the right way to go.  At any rate, no matter how big of a hammer you have, you will always catch more flies with honey–or maybe a Jack and Coke. But  for goodness sake, put it in a real crystal glass, not a red Solo cup. Manners still matter.