A question of character – best practice in managing mascots
Transcription
A question of character – best practice in managing mascots
WTR_37 PAGINATED_WTR 17/04/2012 14:30 Page 80 Feature By Purvi J Patel A question of character – best practice in managing mascots Mascots offer a unique opportunity to create a brand personality. They also require a close relationship with the marketing department, as well as a careful approach to trademark law Brand mascots, brand ambassadors, brand icons, brand characters – whatever your preferred moniker, these special types of mark imbue brands with personality and enable companies to generate traction with consumers. Mr Clean, Ronald McDonald, the Pillsbury Dough Boy, Travelocity’s Roaming Gnome, the Energizer Bunny, Aunt Jemima, Geico’s Gecko, the Maytag Repairman and Dos Equis’ Most Interesting Man in the World are all well-known brand mascots. These types of fictional human or anthropomorphic character, generally costumed or animated in nature, enable companies to humanise and promote their brands, and are most commonly used in connection with household or commoditised products and services. For a time, with the upsurge of celebrity endorsements, it seemed as if mascots were falling out of vogue – but with the advent of social media and viral marketing, brand icons – both nostalgic in nature (eg, Betty Crocker or the Jolly Green Giant) and new (eg, Allstate Insurance’s Mr Mayhem) – seem to be more popular than ever. Their growing prevalence, particularly in this new online world, underscores the need for a holistic approach when it comes to clearing, protecting, enforcing and defending this unique type of intangible asset. Trademark considerations Distinctiveness and source identification It goes without saying that distinctive mascots used to promote goods or services are eligible for trademark protection. But from a trademark perspective, what are the special considerations to bear in mind when developing and seeking to protect a brand mascot concept? Distinctiveness is obviously a critical component – and the more distinctive the mascot as it applies to particular goods and services, the wider the scope of protection. Brand mascots should be subject to the same spectrum of distinctiveness analysis as any mark. For instance, characters such as Geico’s Cavemen are quite arbitrary as applied to insurance services, and thus are entitled to a wide scope of protection. The Snuggle Bear is also arbitrary and thus strong as applied to Snuggle fabric softener – while the nature of 80 World Trademark Review June/July 2012 this particular cub and its personality evoke the snuggly, soft nature of the products, one would not ordinarily connect a bear with laundry products. On the other hand, the idea of a farmer is highly suggestive and somewhat common when it comes to the food industry; and as a result, such marks will be seen as relatively weak, meaning that minor differences between existing marks may be sufficient to squeeze into the field. For instance, in a relatively recent case (Odom’s Tennessee Pride Sausage Inc v FF Acquisition LLC, 93 USPQ2d 2030 (Fed Cir 2010)) the Federal Circuit upheld the Trademark Trial and Appeal Board’s finding that the applicant’s ‘farm boy’ design for grocery store services was not confusingly similar to the opposer’s ‘farm boy’ for breakfast items, on the basis that features such as the size and shape of the boys’ hands, feet and hats, as well as the differences in footwear choices (one wearing shoes and the other barefoot), were sufficient to differentiate the two marks. And what about Apple’s Siri – do her voice, persona and cadence constitute a distinctive brand character used to promote iPhone’s information services, or is she (or has she become) the product itself? The answer to that question is still to be determined. On the topic of distinctiveness, Owens Corning took the innovative approach of using a distinctive and well-known brand character to develop goodwill and secondary meaning in another mark in its portfolio. Specifically, in the early 1980s Owens Corning licensed the rights to the Pink Panther cartoon character from Metro-Goldwyn-Mayer Studios, and has since used it, with great success, as the brand ambassador for its pink-coloured trade dress for building materials and services. This was a clever branding idea, as it circumvented the need for Owens Corning to develop goodwill in a mascot first, and its own underlying product second. In addition, while brand mascots are by their very nature fun and generally aesthetically appealing, it is also important to keep in mind that their ultimate function is to identify the source of the product or service that they are being used to promote. Although it (thankfully) withdrew its aesthetic functionality ruling, in 2011, the Ninth Circuit of Appeals originally issued a troubling decision in Fleischer Studios, Inc v AVELA, Inc (636 F 3d 1115 (9th Cir 2011)) on this issue. In Fleischer the court held that the defendant’s use of the Betty Boop character was not “use” or source identifying, but rather aesthetically functional, because customers bought the products featuring Betty Boop merely because they liked how they looked, and thus decided against trademark infringement. The temptation for this type of review may be great when presented with a mark www.WorldTrademarkReview.com WTR_37 PAGINATED_WTR 17/04/2012 14:30 Page 81 used on merchandising-type products, particularly when an overlap of trademark and copyright protection is involved. In order to avoid this type of faulty application of the law, companies should remember that the brand character is inextricably tied to the goods and services it promotes. If a brand mascot’s purpose is to serve as the identifier of a single source, the next question is whether multiple mascots could splinter a company’s brand and confound customers. The answer depends on your point of view. Trademark practitioners chuckled during a 30 Rock episode in which Liz Lemon made a romantic connection with her boyfriend over their shared agitation at Geico’s use of four brand mascots – the Cavemen, the Gecko, Kash (the stack of money with googly eyes) and the “fake Rod Serling guy”. While some consumers may have been frustrated or confused by the numerous angles, the company offers something for everybody with each mascot – and the fact that a top-rated primetime show known for product placement mentioned Geico would appear to be a coup. Moreover, the success of these campaigns prompted other insurance companies to devise competitively engaging mascots. For instance, Progressive Insurance has been heavily promoting its Flo mascot and AllState Insurance has had great success with Mr Mayhem. In fact, Mr Mayhem has over 1.2 million ‘likes’ on Facebook – a number that appears to trump not only other brand mascots, but even other public figures. IP clearance Once the distinctiveness hurdle has been overcome, the next question to consider is whether a character is available for use and, potentially, registration. The challenges of clearing a new brand mascot are akin to those associated with any design or product configuration. Clearance is costly, whether it be exclusively domestic or international in nature – and budgetary and time constraints can wreak havoc on the best-laid plans. Moreover, there will be information gaps regarding availability. These not only stem from the inherent nature of clearance, but also arise because: • many of these types of mascot are not registered at state or federal level, but are simply used as common law marks; and • design codes and descriptions of such marks are based on the subjective discretion of applicants, examiners and the practitioner conducting clearance. To the extent that copyright protection could also be at play, searching copyright records, locating copyright deposit materials and determining the scope of protection for works is a difficult and time-consuming task. So how do you develop a search strategy for a brand icon? It goes without saying that the mascot’s proposed name should be cleared at the federal, state and common law level; given the importance of social media, trademark availability in various social media disciplines (eg, blogging, community and business) and registrations of trademarks as social media user names should also be searched. On this front, the website KnowEm.com can be an indispensable and centralised tool. To the extent that a mark will be promoted and used outside the United States, additional international clearance in key countries should also be done. International clearance assists with determining not only availability, but also whether there may be connotation issues. Moreover, to the extent that foreign language versions of the name will be utilised, these should also be searched. For instance, the Mr Clean name is translated into several local languages, including Maestro Limpio in Mexico, Don Limpio in Spain, Mastro Lindo in Italy, Meister Proper in Germany, Meneer www.WorldTrademarkReview.com Brand mascots are unique IP assets with the potential for great longevity Proper in Belgium and Mister Proper in Russia and many Eastern European countries. Turning to clearing the mascot itself, there is no ‘one size fits all’ option. First, the nature of the mark must be defined – simple in the case of a drawn cartoon figure with obvious parameters, such as the Geico Gecko, but more difficult when dealing with a concept involving a live individual, such as the Verizon “Can you hear me now?” guy. In the case of a cartoon drawing, a more traditional clearance strategy can be adopted: • Have a clearance search conducted by a third-party searching company (discussing descriptions of marks and design codes in advance); • Review images at Google Images and like.com; and • Rely heavily on the marketing department to provide insight into the competitive landscape as well as the inspiration and design process for the actual character. An understanding of the character’s personality and mannerisms is also helpful during this process, because these mascots are rarely still. In the case of a live person mascot, an outside search report might uncover key issues (eg, Verizon Wireless obtained US Registration 3,425,278 for a static drawing of the “Do June/July 2012 World Trademark Review 81 WTR_37 PAGINATED_WTR 17/04/2012 14:30 Page 82 Feature: Managing mascots You Hear Me Now” mascot holding a phone to his ear, with the specimen being a true-to-life picture of the same mascot), but reliance on marketing departments and common law clearance of images, as well as ‘trending’ viral videos and social media in the industry, becomes even more critical. The latter are important from both a trademark clearance perspective and a possible copyright protection point of view. In addition, to the extent possible and to ensure that clearance is as comprehensive as possible, companies should also think long term regarding the possible evolution of the brand character (whether it be minor, such as clothing, or major, such as an ageing process) and its potential expansion of use beyond the immediately anticipated goods and services and channels of trade. With respect to the expansion of goods and services, at a minimum this should include possible merchandising for t-shirts, hats and similar. The aim is to avoid a progressive encroachment allegation such as that made in Kellogg Co v Exxon Mobil Corp (209 F 3d 562 (6th Cir 2000)). In this case Kellogg, the owner of the TONY THE TIGER mark, sued Exxon Mobil for infringement and dilution for using a cartoon tiger that it had previously used for motor fuels for convenience store services. The court ruled in Kellogg’s favour and the parties ultimately settled (and Exxon Mobil Tiger Markets are ubiquitous), but this serves as a cautionary tale when it comes to refreshing clearance when moving out of your original space. Clearance not only gives a brand mascot owner a sense of security when it comes to availability, but also provides insight into 82 World Trademark Review June/July 2012 the strength of its selected character and the ability to make representations and warranties regarding availability in the licensing, franchising and merchandising contexts. Moreover, it provides additional insight into how to mitigate any public relations (PR) snafus at the onset. Registration is recommended To the extent that a mascot will have a lifespan extending beyond one year and can be concretely defined, seeking registration for its name and design is generally recommended. Even though the United States is a common law country where rights can accrue by virtue of use in commerce, federal registration offers several benefits, including a presumption of validity, the ability to use the ® symbol and the ability to record the trademark with Customs to prevent the import of infringing or counterfeit products. Global expansion considerations should also be taken into account, and with them an international filing strategy. At a minimum, a brand owner should file for its brand mascot in all jurisdictions where it plans to use or manufacture products featuring the mascot – and particularly first-to-file countries where it anticipates needing rights in the future. A global brand such as Michelin, for instance, has filings for its Michelin Man mascot in more than 100 countries. As time passes, brand characters that stand the test of time must update their looks to stay relevant and current; to the extent that these changes alter their look materially, new filings should be www.WorldTrademarkReview.com WTR_37 PAGINATED_WTR 17/04/2012 14:30 Page 83 Do Siri’s voice, persona and cadence constitute a distinctive brand character used to promote iPhone’s information services, or is she the product itself? made, especially if previous registrations cannot be maintained based on the updated mark. The Michelin Man, for instance, has quite obviously undergone a makeover, making him a more svelte and stronger version of his original pudgy self – and Michelin has made updated filings accordingly. The Columbia Pictures Torch Goddess has also gone through multiple updates during her lifetime, as evidenced by a string of registrations through the years. Finally, it is also recommended that brand owners register relevant domain names and social networking handles for brand mascots. This could avoid impersonation and other infringement pitfalls. Copyright considerations Benefits As touched on above, brand mascots may also be eligible for copyright protection – an additional bundle of rights that could prove invaluable to a brand owner. Why? First, a copyright holder has not only the exclusive right to copy a work, but also the exclusive rights to create derivative works based on the original and to distribute or disseminate that work publicly. This is an important feature of protection, especially in this world of moving and agile mascots that change regularly, such as the blue Twitter bird. Other benefits of copyright protection lie on the enforcement front – if a plaintiff successfully proves copyright infringement and if the work has been timely registered, the plaintiff could be entitled to statutory damages (rather than having to prove actual damages) and attorneys’ fees. Moreover, copyright owners can take advantage of the Digital Millennium Copyright Act notice and takedown measures. In a world where social networking and viral marketing dominate, this is a great tool for getting infringing content pulled by an internet service provider instead of having to seek relief from the party which posted the content – a party that might be difficult to locate or cause problems. Finally, to the extent that infringement of the copyrighted design takes place outside the United States, the copyright owner may be able to take action in Berne Convention member countries without having to seek registration in those countries. There is no requirement to use the design in commerce as a source identifier in order to be eligible for or to maintain its copyright. This is critical because the shelf life of a mascot (that is not nostalgic in nature, such as Kraft Foods’ Mr Peanut) can be short – and thus, even if you end up abandoning your trademark, an easy preclusion to third-party use is copyright protection. Also, since the test for copyright infringement focuses on substantial similarity, as opposed to a likelihood of consumer confusion, there is no need to examine commercial factors such as goods, services and trade channel similarities and how they impact on the mindset of the average consumer. Concurrent trademark and copyright ownership can put time on your side. The copyright component might be able to give a company flexibility in that it can take a break from use in commerce and put a mark in semi-retirement until it is ‘cool’ again. The opposite is also true – even if a copyright term expires and puts a character into the public domain, provided that the mascot is still in commercial use, its underlying trademark rights will continue into perpetuity. Originality is a must In order for a brand mascot to be protected by copyright, pursuant to 17 USC § 102, the work must be an original work of authorship fixed in a tangible form of expression. Originality would appear to be the parallel of distinctiveness in the world of brand mascots. So what does it mean for a work to be sufficiently original? In Feist Publications, Inc v Rural Telephone Service Co the Supreme Court noted that “originality requires independent creation plus a modicum of creativity”. Accordingly, provided that the mascot does not consist solely of a familiar symbol or www.WorldTrademarkReview.com design, it should be protectable under copyright law. In fact, even a simple smiley face character could be protectable if additional elements were added to this stock image. Registration is a definite plus Although copyright registration is not required, it is a prerequisite for taking legal action in court and obtaining remedies – and if registration is timely sought before the infringing activity at issue takes place, the copyright owner can recover attorneys’ fees and statutory damages. In short, copyright registration is recommended. From a copyright perspective, you can protect both the graphical design of the mascot and derivative updates thereof, as well as the mascot in a performance context such as an advertisement or online video – so you can obtain layers of protection on the copyright front as well. Authorship and ownership One unique concern in the copyright context is that of authorship and ownership. Unless the author is an employee who created the mascot within the scope of his or her employment, the party that creates the design of the brand mascot is generally the owner of the underlying copyright. This is in contrast to the trademark world, where the party that first uses a mark in commerce is the owner. To ensure ownership June/July 2012 World Trademark Review 83 WTR_37 PAGINATED_WTR 17/04/2012 14:30 Page 84 Feature: Managing mascots With the advent of social media and viral marketing, brand icons – both nostalgic in nature (eg, the Jolly Green Giant) and new – seem to be more popular than ever of the underlying copyright of a brand mascot and to avoid disputes on this issue, it is important to get a written assignment of copyright from the party which developed and created the design itself. You certainly do not want to risk losing the right to use a brand mascot due to a soured relationship with the mascot’s creator – and even if you own a trademark registration, you may be precluded from using the brand character without a licence from the author. In the early part of the 20th century, Kellogg dealt with a similar issue with respect to its Rice Krispies Snap, Crackle and Pop elves (Grant v Kellogg Co 58 F Supp 48 (SDNY 1944)). Pursuant to an oral agreement, Kellogg hired an illustrator to create the elves and stories about related adventures for Rice Krispies cereal. After a few years, the illustrator quit and sought to restrain Kellogg from hiring anyone else to draw further adventures. Luckily for Kellogg, the court determined that since the characters had been created with Kellogg in mind, Kellogg presumptively owned the rights in Snap, Crackle and Pop. Such reasoning is unlikely to prevail in court today without a written agreement. This issue should be borne in mind when hiring an advertising agency which creates a brand mascot: get the assignment in writing; otherwise, the agency could own the underlying copyright in your mascot. 84 World Trademark Review June/July 2012 Policing and PR concerns Preventing unauthorised use of a brand mascot is necessary to maintain its value as an IP asset. There are varying types of policing concern when dealing with brand mascots. Standard trademark infringement, copyright infringement, cybersquatting and counterfeiting scenarios are ever present – especially in the merchandising arena. However, new types of infringement concern continue to arise. The worldwide web has truly become that – from the days when domain names were key virtual real estate, a new world has emerged on the social media front, including Facebook, Twitter, Myspace, LinkedIn, YouTube and various interactive blogs. This has become especially true with respect to brand mascots – characters such as Mr Clean, Smokey Bear and the AFLAC duck now have their own Facebook pages, Twitter feeds and interactive sites. Impersonation A relatively new issue is online and social media brand mascot identity theft and impersonation – particularly on Twitter, where an unauthorised party registers a brand mascot’s username. The Pillsbury Dough Boy, Mr Peanut and Chef Boyardee have all been targeted in this way. To the extent that the Twitter account holder begins using the account to impersonate falsely the brand mascot in www.WorldTrademarkReview.com WTR_37 PAGINATED_WTR 17/04/2012 14:30 Page 85 a non-parody and non-commentary manner, the brand mascot owner may be able to take advantage of Twitter’s Impersonation Policy and Trademark Policy. Even in a straightforward impersonation case, however, there is no guarantee that Twitter will transfer the account. It might instead suspend the account, or even allow the owner to keep using it provided that the owner makes changes to clarify that it is not affiliated with the brand owner. Moreover, as a brand owner, you cannot simply offer to buy the username from the owner – Twitter explicitly prohibits the sale or purchase of usernames. The key is to pre-empt these types of concern by registering usernames during the clearance and adoption process. Infringing fan use Fans, employees and former employees can sometimes love a brand mascot so much that they create their own Facebook pages, fan websites (with corresponding infringing domains) or online merchandising or advertising campaigns that constitute trademark and copyright infringement. Even if well intentioned, such use should not necessarily be tolerated. Enforcement need not always be aggressive to be effective. In fact, polite communications and creative settlements with such individuals can breed results while avoiding unnecessarily alienating supporters. Companies can turn some initially unwanted uses to their own advantage, including by offering a licence to those users to continue using the brand and touting its benefits. Brand owners might also consider other non-legal solutions, such as enlisting fans, customers or www.WorldTrademarkReview.com employees to help with monitoring and reporting, perhaps through a fun and engaging incentive programme. Mitigating PR backlash Companies should evaluate the tone and language, weigh PR against business risks and determine legal needs before taking action to protect their brands. In the past, letters fell on the desks of just the recipients or their lawyers. Today, however, in the freewheeling sphere of social media, one overly aggressive notice could result in a blog post, thousands of re-tweets and negative publicity. In some cases, infringement can be so egregious and damaging that a brand owner has no choice but to send a forceful letter and assume this risk. In others, the PR risk should be more heavily weighed. As a pre-emptive matter, brand owners with unyielding and persistent infringement concerns should consider launching a proactive PR campaign educating the public that they are shutting down infringing uses not because they are bullies, but because they care about protecting their valued customers from marketplace confusion. Brand mascots are unique IP assets with the potential for great longevity. Even more, they are an ideal case study of the benefits of overlapping IP protection and the importance of marketing and legal working closely together throughout their legal lifecycle. WTR Purvi J Patel is a partner at Haynes and Boone LLP purvi.patel@haynesboone.com June/July 2012 World Trademark Review 85