Media Archives - Page 15 of 16 - The National Law Forum

When Can You Claim A Color As Your Trademark?

Susan Neuberger Weller of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. recently had an article regarding Color Trademarks published in The National Law Review:

In its recent decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., the Second Circuit held there was no “per se rule that would deny protection for use of a single color as a trademark in a particular industrial context.” The Court found that the single color red on the sole of a women’s shoe that contrasted with the color on the upper portion of the shoe could be protected as a trademark in the fashion industry. A Federal District Court in California ruled recently, that a company’s use of the color orange for markings and text on its medical syringe could not be protected as a trademark since the color was “functional” when applied to that product. It determined that the color orange was functional in the medical industry because it signifies that a device is for oral use. So, how does this color-as-a-trademark work?

Many companies have successfully obtained trademark protection for a single color, for example, United Parcel Service’s registration for the color brown for transportation and delivery services, Reg. 2901090; Tiffany’s multiple registrations for a particular color of blue used on bags, boxes and various other products and services, Reg. Nos. 4177892, 2359351, 2416795, 2416794, 2184128; 3M’s registrations for yellow as a trademark for telephone maintenance instruments and POST-IT® notes, Reg. Nos. 2619345, 2390667; and Owens Corning’s registrations for the color pink for masking tape, insulation, and other products used in the building and construction industry, Reg. Nos. 3165001, 2380742, 2380445, 2090588, 1439132.

In Qualitex Co. v. Jacobson Prods. Co., the U.S. Supreme Court held that color alone may be protected as a trademark, “when that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).” The Court held color may not be protected as atrademark when it is “functional”. There are two types of functionality: “utilitarian” and “aesthetic.” A color is functional under the utilitarian test if it is essential to the use or purpose of the product, or affects the cost or quality of the product. A color is aethestically functional if its exclusive use “would put a competitor at a significant non-reputation-related disadvantage”. If color “act(s) as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function,” it can be protected as a trademark. So, how do you know if a color you are using or plan to use in your business can be protected as a trademark to the exclusion of your competitors?

Protecting color as a trademark can be a very powerful advantage if the color has no particular function or meaning in the industry in which it is used. However, in order to claim color as a trademark, the color must be showcased as a source indicator for products or services in its marketing campaigns and advertising materials. Good examples of this are UPS’s reference to itself as “brown” in its advertising and Owen Corning’s blatant use of the color pink in its advertising. Both companies very clearly highlight a color in their ads and identify it strongly with their respective products and services. This type of careful and clever planning, implementation, and marketing strategy is critical to developing a strong, unique and highly recognized color trademark.

Whatever color is used, it must not be “functional” in any respect in the industry in which it is used. Various “functionality” tests have been developed by the courtsover time, and some include:

whether the design (or color) yields utilitarian advantage
whether alternative designs (or colors) are available
whether advertising touts utilitarian advantages of the design (or color), and
whether the particular design (or color) results from a comparatively simple or inexpensive method of manufacture.

Functionality is evaluated within the context of the specific industry in which the goods or services for which color is claimed as a trademark will be offered. Had the markings on the medical devices been red instead of orange in the case before the Federal District Court in California mentioned above, it is possible that there would not have been a finding of functionality. Thus, know your industry before selecting a color on which to focus your marketing and advertising efforts.

Thinking outside the box when selecting trademarks and planning marketing strategy is critical in any industry. The explosion of social media and changes in traditional advertising and marketing methods have changed the way products and services are recognized. Companies need more unique and nontraditional approaches for a competitive edge. Promoting non-traditional trademarks such as a color, or other unique source indicators such as sounds, scents, flavor, and product shapes, may provide a fresh method to attract and entice a wider audience.

So, get out those color wheels and start plotting a new course.

Smartphones – 24/7 Access: When are employees off the clock?

The National Law Review recently published an article by Cynthia L. Effinger of McBrayer, McGinnis, Leslie and Kirkland, PLLC regarding Smartphones and Employees:

With instant access to all things via smartphones and the internet, it has become increasingly easy for employees and employers to stay connected to work all the time. Smartphone access and being constantly connected is part of our professional make-up, and necessary to keep pace with the speed of the information highway. Right? Connectivity is firmly woven into everyday business practices but at what price?

If your company issues smartphones or similar devices to all or some of its employees so they can stay in touch, checking emails or responding to phone calls after-hours or on the weekends; your company could be at risk for ‘off-the-clock’ lawsuits. The Fair Labor Standards Act (“FLSA”) requires employers to compensate non-exempt employees overtime pay for any time worked beyond a 40-hour workweek. Exempt employees (so long as they are classified correctly), are the exception. Under FLSA failure to pay an employee wages and overtime due will result in serious fines, and is a growing area of class action law suits.

Being smart about smartphones usage by employees is crucial. It is essential to have a clear electronic-use policy that outlines specific guidelines explaining work hours and use of any such device (laptops, tablets and phones). As an employer you are financially responsible for work hours that are requested and voluntary. Which means if a non-exempt employee is using a smartphone (company issued or personal) outside of work hours, for work purposes – even when not required or requested – the company is responsible for overtime pay to that employee for the hours worked. So, an electronic use policy needs to be very specific about what is permitted and what is prohibited.

Of course it is not enough to have a policy in place, it must be enforced. To enforce such a policy that applies to work performed after-hours and off-premises, the employer must institute a strong system of reporting and monitoring the activity. This could include a specific time-recording tool, as well as an essential versus non-essential activity list, which could temper an employee’s overtime.

There is a “de minimus” rule, which has been adopted in several federal court proceedings that classifies minimal time spent checking or replying to emails or texts as not compensable. However, if the employee tracks and presents the aggregate of these de minimus actions, the time often becomes comprehensive enough for an overtime claim.

Having the correct system and policy in place to control smartphone usage is no longer an afterthought; it is an essential element of employment and a critical policy. Smartphones have changed the way we work, and as in many areas of business, technology surpasses our ability to keep up with the changes it creates. If you don’t have an electronic-use policy in place, we recommend you make it priority number one for the HR Department. Have it reviewed by an attorney, educate your staff and enforce its rights and restrictions.

Federal Trade Commission Sends Strong Message with $22.5 Million Google Settlement

An article by Amy Malone of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. regarding FTC’s Google Settlement was published recently in The National Law Review:

The FTC has finally released details of their settlement with Google, including the hefty price tag of $22.5 million, the highest fine ever slapped on a violator of an FTC consent order. The Internet giant was charged with breaking the terms of the consent order they entered into last year by misrepresenting how users could opt out of having certain cookies dropped on their browser.

A majority of Google’s earnings is generated through online advertising, some of which is targeted at online users through the use of third party cookies. Those third party cookies are “dropped” from an advertising network on a user’s Internet browser (e.g., Internet Explorer, Firefox, Safari) which then allows that network to track information such as what sites the user visits and this allows targeted ads to be sent to the user. Some users prefer not to receive targeted advertisements, and there are ways for them to opt out of having these types of cookies dropped on their Internet browsers.

The Safari Problem. According to the FTC complaint, when Safari (a browser provided by Apple) users visited the Google “Advertising Cookie Opt-out Plugin” page they were told that if they left the Safari default settings on they didn’t have to do anything else because those settings prevent third party cookies from being dropped. Safari’s default settings prevent third party cookies from being dropped except in limited circumstances such as when a site uses a “form submission,” used in situations such as online purchases when a user enters information like an email address. It’s important to note that once Safari accepts a third party cookie from a site it accepts all cookies from that site. In this case Google communicated with the Safari browser saying it was generating a form submission, but in reality Google was dropping a cookie from DoubleClick, their advertising network. Once the cookie was set, Safari then accepted all cookies from DoubleClick and DoubleClick sent targeted advertisements to those users. Google managed to circumvent the Safari settings and do exactly what they said they were not doing.

Google denies the allegations in the FTC complaint, but has agreed to pay the fine. According to the FTC’s statement they have enough reason to believe Google violated the order and assessing the fine is in the public interest. The FTC asserts that this penalty helps ensure that Google will abide by the consent order and provides a “strong message” that the FTC is paying attention to consent orders and those that misstep will be brought to task “quickly and vigorously”.

Illinois Employers Beware: New Law Prohibits Employers from Seeking Social Media Password Information

The National Law Review recently published an article regarding Social Media Passwords and Illinois Employers written by Norma W. Zeitler of Barnes & Thornburg LLP:

Employers in Illinois will be prohibited from seeking social networking password information from employees and applicants starting Jan. 1, 2013, now that Illinois Governor Pat Quinn has signed into law Public Act 097-0875, which is an amendment to the Right to Privacy in the Workplace Act, 820 ILCS 55/10.

As we previously reported , the legislation makes it unlawful for an employer to require an employee or applicant to disclose passwords or other related social networking account information in order for the employer to access information that might otherwise be considered private by the employee or applicant. However, employers are not barred from accessing information that is in the public domain

Illinois becomes the second state, after Maryland, to enact such a law, according to a press release from Governor Quinn’s office announcing that he signed the legislation into law on August 1. The new law does not limit an employer’s right to promulgate and maintain otherwise lawful workplace policies regarding the use of the employer’s computer equipment, Internet use, social networking site use, and electronic mail use.

Illinois employers should consider reviewing existing policies and practices with an eye toward ensuring compliance with this new law.

‘Your Baby Can Read,’ Targeted for Dubious Ads, Closes Its Doors

An article by Rachel Hirsch of Ifrah Law, ‘Your Baby Can Read,’ Targeted for Dubious Ads, Closes Its Doors, was recently featured in The National Law Review:

After nearly a decade of persuading hundreds of thousands of parents that their babies were geniuses, the popular company, Your Baby Can Read, is shutting its doors. Its demise is the result of an FTC investigation prompted by the Campaign for a Commercial-Free Childhood advocacy group, which challenged claims by the company that newborns have the ability to absorb reading and spelling skills when they are as young as three months old. According to the company’s website, the cost of fighting these legal battles has left the company with no option but to close.

Your Baby Can Read consists of interrelated videos, flash cards and books designed to teach infants as young as three months old to read. Developed in the late 1990s by Robert Titzer, an educator with a Ph.D. in human performance from Indiana University, the product claims that babies have a small window in which they absorb spelling at an extraordinary pace. Although these claims have never been substantiated through any kind of credible research, fans of the products, which are priced at $200, have given them glowing reviews. More than a million families have used the products, which the company extensively advertised on TV, at exhibitions, and on its own website, Facebook page and YouTube channel.

In April 2011, a class of consumers who purchased the educational programs filed a class action complaint against the company in California challenging the effectiveness of the product. Additionally, the Boston-based Campaign for a Commercial-Free Childhood (CCFC) filed a complaint against the company with the FTC, leading the way for a series of campaigns against what critics call the “genius baby” industry. The national watchdog group previously successfully campaigned against the way that the “Baby Einstein” program marketed its products. In its complaint with the FTC, CCFC argued that Your Baby Can Read’s claims of teaching infants to read lacked scientific support. The group requested that the FTC stop the company from continuing its allegedly deceptive marketing practices and that the company offer full refunds to “all parents who have been duped.” According to CCFC director Dr. Susan Linn, the company “exploited parents’ natural tendency to want what’s best for their children” by making grandiose promises that find no support in science.

The problem with these types of educational products appears to be twofold. First, doctors and scientists who have tested the products have reportedly found that infants using the products are not reading, but rather are memorizing the shapes of the letters presented. Second, as the CCFC points out, the program can actually be harmful to children, as it encourages them to sit in front of television screens and computer monitors, getting them “hooked on screens” too early in life. In fact, the group notes that if parents follow the “Your Baby Can Read” instructions, by nine months, babies would have spent more than a full week of 24-hour days in front of a screen.

Although the company is going out of business, the FTC will not automatically cease its investigation. The FTC says it aims to protect the most vulnerable classes in society — and perhaps none are more vulnerable than young children, or, in this case, their overachieving parents who just want their bragging rights. It will be interesting to see which group of consumers will come out on top in the FTC investigation – the thousands of parents who were satisfied with the product or the class-action parents whose children were perhaps not as smart as they believed them to be.

Advertising and Marketing Law Alert – Pinterest Gets Stuck With Disclosure Requirements

Recently The National Law Review published an article by Joan L. Long of Barnes & Thornburg LLP regarding Pinterest:

“Pinning” on the popular website Pinterest may amount to unlawful consumer endorsement or testimonial

Consumer endorsements and testimonials have recently garnered a lot of attention from the National Advertising Division (NAD) and Federal Trade Commission (FTC). There has been a renewed interest in assuring that advertisements containing an endorsement or testimonial are truthful and not misleading, that if an advertiser does not have proof that an endorser’s experience represents what consumers will achieve when using the product the ad must clearly and conspicuously disclose the general 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, that connection should be disclosed.

Social media websites certainly do not receive special treatment from the NAD or FTC when it comes to consumer opinion regarding products and services. This is especially true for advertisers of dietary and nutritional products. Testimonials claiming specific results usually will be interpreted to mean that the endorser’s experience is what others can expect. Statements like “Results not typical” or “Individual results may vary” won’t change that interpretation. If the results are not typical, an advertiser must clearly and conspicuously disclose the generally expected performance in the circumstances shown in the ad.

Recently NAD issued a decision regarding the newly popular website Pinterest. Pinterest is a virtual bulletin board, often described as a social photo-sharing website where users create and manage theme-based image collections by “pinning” digital content they find on the web to their personal boards. NAD began following Nutrisystem, Inc.’s weight-loss success stories pinned to such boards. These stories had express claims regarding consumer’s weight loss success, including the consumer’s name, total weight loss, and a link to the Nutrisystem website.

Testimonials which tout atypical results must be qualified by a clear and conspicuous disclosure noting the results the consumer can generally expect to achieve using the product in the circumstances depicted. Such disclosures should appear close in proximity to the claims they are intended to qualify. NAD found that it was undisputed that these pins represented consumer testimonials, and, as such, these pins should be accompanied by a clear and conspicuous disclosure noting the typical results consumers can expect to achieve using the Nutrisystem weight loss program.

Companies need to be aware that both NAD and the FTC closely scrutinize social media sites, such as Pinterest, Facebook, and Twitter. As social media websites become more sophisticated and allow for consumers to become increasingly intertwined with a company’s advertising message, companies need to have reasonable programs in place to monitor and inform members of their network of what can and cannot be said about products or services.

High Court Tosses Out Indecency Cases, Finds FCC Didn’t Give Proper Notice to Broadcasters

Michelle Cohen of Ifrah Law recently had an article, High Court Tosses Out Indecency Cases, Finds FCC Didn’t Give Proper Notice to Broadcasters, featured in The National Law Review:

On June 21, 2012, in FCC v. Fox Television Stations Inc., the U.S. Supreme Court struck down the Federal Communications Commission’s effort to apply its indecency standard to brief broadcasts of nudity and “fleeting expletives.” But the Court relied not on the First Amendment’s free-speech guarantees but rather on the Fifth Amendment’s due process clause.

The Court held that Fox and ABC were not given fair advance notice that their broadcasts, which occurred prior to the announcement of the new indecency policy, were covered. This retroactive application violated their due process rights.

Broadcasters were hoping for a much broader First Amendment ruling that would have permanently hamstrung efforts by the agency to police indecency on the air. Instead, although a $1.4 million fine against ABC and its affiliates and a declaration by the FCC that Fox could be fined as well were both overturned, the agency remains free to create new indecency policies and case law under 18 USC 1464, which bans the broadcast of any” obscene, indecent, or profane language.”

In ABC’s case, the transgression was showing a seven-second shot of an actress’s buttocks and the side of her breast on NYPD Blue in 2003, and in Fox’s case, it was some isolated indecent words uttered by Cher and Nicole Richie on awards shows.

Prior FCC policy stressed the difference between isolated indecent material (which was not punished) and repeated broadcasts (which resulted in enforcement action). The Court held that Fox and ABC did not have sufficient notice that these brief moments, which occurred before the new policy went into effect, could be targeted.

The U.S. government tried to argue that a 1960 statement by the FCC gave ABC notice that broadcasting a nude body part could be contrary to the prohibition on indecency. The Supreme Court said “no dice,” as FCC had in other, later decisions declined to find brief moments of nudity actionable. If the FCC is going to fine ABC and its affiliates $1.24 million, it had better provide clear, fair notice of its indecency policies.

Since the case doesn’t affect the enforceability of the FCC’s current standard, as applied to current (rather than past) broadcasts, however, broadcasters still live in fear of the possibility of big fines levied against them for a couple of obscenities or a few seconds of nudity.

We agree with longtime public interest advocate Andrew Schwartzman, who said of this ruling, “The decision quite correctly faults the FCC for its failure to give effective guidance to broadcasters. It is, however, unfortunate that the justices ducked the core 1st Amendment issues. The resulting uncertainty will continue to chill artistic expression.”

The courts can certainly review challenges to the FCC’s indecency standards, and related issues will continue to come before the courts, including the issue of whether the current indecency standard violates the First Amendment rights of broadcasters and whether any changes the FCC may make will survive First Amendment scrutiny.

Meanwhile, with this case resolved, the FCC can finally move forward with a backlog of indecency complaints pending before it. FCC Commissioner Robert M. McDowell said in response to the Supreme Court ruling that there are now nearly 1.5 million such complaints, involving 9,700 television broadcasts, and that “as a matter of good governance, it is now time for the FCC to get back to work so that we can process the backlog of pending indecency complaints.”

Reining in Blogging, Tweeting and Internet Surfing by Jurors

The National Law Review recently published an article about Jurors and Social Media, written by Carolyn M. Wendel of Barnes & Thornburg LLP:

It is estimated that in 2011, 64 percent of U.S. Internet users utilize social networks—Facebook, Twitter, MySpace, LinkedIn, and the like—on a regular basis, amounting to nearly 148 million people. In addition, with the expansion of the smartphone market to the general populace from more limited business usage, people can access their social networks virtually anytime and anywhere, including the courtroom. Such access creates a host of problems and recent years have seen a dramatic increase in the number of mistrials and overturned verdicts as a result of jurors’ use of social networking and other Internet sites.

Jurors sharing too much information.

Until recently, what went on behind the closed doors of the jury room remained largely a secret. For better or worse, the ability of jurors to instantly share thoughts and observations via blogs and social networks has offered a glimpse into the decision making process. While these instances are often used as grounds for an appeal, they account for a very small portion of the cases that are actually overturned.

The Illinois Appellate Court recently upheld an award of $4.75 million to the widow of a blind man killed by a Metra commuter train despite the fact that a juror was blogging about the case throughout the trial. Eskew v. Burlington Northern & Santa Fe Ry. Co., 2011 IL App. (1st) 093450. The defense argued the verdict must be overturned because the juror’s blog entries showed she had discussed the case with her husband, the jurors had discussed the case among themselves prior to deliberations, and, before all the evidence was in, one juror had stated, “All that’s left now is deciding how much.” The Court, however, noted that the blog entries showed the other jurors had chastised the juror who made the statement, were generally keeping an open mind, and had been offered no outside information that would influence their decision making process. The Court upheld the verdict, concluding, “The blog entries on which the defendants rely do not indicate that premature deliberations resulted in a jury that was biased when it commenced its deliberations or that the jury’s actual deliberations and verdict were affected by any discussions during trial. In fact, the entries indicate just the opposite.”

Generally, allegations involving jurors’ texts, tweets, or blogs do not necessitate declaring a mistrial or vacating a verdict. In a few extreme cases—such as where jurors posted pictures of a murder weapon, blogged about fellow jurors by name, or hosted a chat room where people could ask questions about the case—the courts have taken action. Overall, however, relatively few cases have been overturned because of jurors sharing general thoughts or experiences via posts and blogs.

Jurors seeking out impermissible input and information.

Seemingly more prevalent, and responsible for the majority of mistrials and overturned verdicts, is the situation where jurors impermissibly access the Internet to bring outside information into the jury room. In 2009 a federal judge in Florida was forced to declare a mistrial eight weeks into a drug trial after learning that jurors were using Internet search engines, Wikipedia, and other Internet sites to research issues associated with the case. Other cases show that jurors have conducted Internet searches of defendants, researched sentencing guidelines, and looked up the social networking profiles of alleged victims. In one extreme case, a juror in England posted key facts from the case and asked her Facebook friends to vote on whether the defendant was guilty or innocent. More often than not, where jurors have conducted their own research or solicited outside opinions, judges have been forced to declare mistrials or overturn verdicts.

How courts are responding.

Courts across the country continue to struggle with how to curtail jurors’ use of the Internet and social networking sites. Some courts have banned jurors from using cell phones or similar electronic devices in the courtroom and jury room. Other courts are warning jurors that violations could lead to jurors being held in contempt. At this point, however, the majority of courts addressing the issue are focusing on updating their jury instructions to emphasize the impermissible uses of the Internet and social networking sites.

In 2010, a committee of the Judicial Conference of the United States endorsed a set of model jury instructions for district judges aimed at deterring jurors from electronically communicating or researching about their case. The committee issued separate instructions to be given before trial and at the close of the case, specifying that during the course of the trial and deliberations, jurors “may not use any electronic device or media, such as a telephone, cell phone, smartphone, iPhone, Blackberry or computer, the Internet, any Internet service, or any text or instant messaging service; or any Internet chat room, blog, or website such as Facebook, My Space, LinkedIn, YouTube or Twitter, to communicate to anyone any information about this case or to conduct any research about this case.”

A 2011 survey of federal and state jury instructions revealed a majority of circuits and states have such “modern” civil jury instructions that address the Internet, social media, or specific social networking sites by name. See Eric P. Robinson, Jury Instructions for the Modern Age: A 50-State Survey of Jury Instructions on Internet and Social Media, 1 Reynolds Courts & Media Law Journal 307 (2011). A minority of the circuits and states retain “archaic” instructions that either have no language addressing jurors’ access to media, or only reference newspapers, radio, and television.Only one circuit and 10 states offer an explanation in their civil instructions as to why jurors should refrain from using the Internet and social networking sites during a trial.

As an example, Indiana’s Model Civil Jury Instructions represent one of the most thorough set of instructions. The instructions start out by informing jurors that their decision must be based only on the evidence presented in the courtroom and the judge’s instructions. After listing general activities that are forbidden, the instructions specifically emphasize electronic communication and research:

[Y]ou must not communicate with anyone or post information about the case, or what you are doing in the case, by any means, including telephone, text messages, email, Internet chat rooms, blogs, or social websites, such as Facebook, MySpace, or Twitter.

You also must not Google or otherwise search for any information about the case, or the law that applies to the case, or the people involved in the case, including the parties, witnesses, lawyers, or Judges.

Finally, the instructions offer an extensive explanation of why it is important that jurors not discuss the case with anyone outside of the jury, visit any place discussed in the testimony, or access any media coverage about the case or conduct their own research. The concept of fairness is repeatedly emphasized. “These rules are designed to guarantee a fair trial” and jurors should not conduct independent research because to do so “would not be fair.” Jurors should not talk with anyone outside the jury because, “Only you have been found to be fair, and only you have promised to be fair – no one else has been so qualified.”

Not many instructions are as thorough in the conduct they prohibit or the rationale behind the rules as the Indiana instructions. However, more and more states will likely move in this direction as there is a growing belief that only if jurors are told specifically what they cannot do and, more importantly, why they cannot do it, will the increasing trend of juror violations be reversed.

Category: Media

When Can You Claim A Color As Your Trademark?

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‘Your Baby Can Read,’ Targeted for Dubious Ads, Closes Its Doors

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High Court Tosses Out Indecency Cases, Finds FCC Didn’t Give Proper Notice to Broadcasters

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“Pinning” on the popular website Pinterest may amount to unlawful consumer endorsement or testimonial

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Jurors sharing too much information.

Jurors seeking out impermissible input and information.

How courts are responding.

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