Legal Update: Intellectual Property Law

Keyword Advertising Update

by Alicia Brown Oliver

A federal appeals court in New York ruled last spring that a trademark infringement suit arising out of Google’s controversial Adwords program could proceed.  The Plaintiff alleged that Google infringed its mark by suggesting and selling it to competitors in its Adwords program.  The trial court initially dismissed the case ruling that Google’s actions were not “use in commerce” of the marks, a threshold component of a Lanham Act claim.  However, on appeal the court ruled that Google’s suggestion and sale of trademarks as keywords is “use in commerce” under the Lanham Act.  The case has been remanded to the trial court, so we will keep you posted on further developments.

Don't Accidentally Abandon Your Trademark

by Alicia Brown Oliver

Trademark rights are acquired and maintained by continuous usage of the mark in commerce.  Dairy Queen is currently featuring cups in some of its restaurants which claim the famous Blizzard treat was “trademarked” in the 1960s but not used until years later.  This might be a catchy advertising slogan, but unfortunately it leaves Dairy Queen open to a claim that it abandoned its mark.  Abandonment is a serious issue for trademark owners that can result in cancellation of a U.S. Trademark Registration and/or a priority of use claim by a competitor that uses the same or a similar mark.  To avoid the risk of abandonment, use your mark in commerce several times each year and maintain records showing your use.  For more information, please contact us.

Social Networking: Useful Marketing Tool can be Full of Legal Minefields

by Alicia Brown Oliver

Social networking sites have exploded over the past few years, and while sites like Facebook and Twitter can be highly useful marketing tools, they can also be full of legal minefields.  For example, earlier this year, a competitor with a vendetta against public relations firm Tanner Friedman created a false Twitter account using the name tannerfriedman and began tweeting defamatory thoughts.  Tanner Friedman learned of the tweets after three months, sued and was eventually able to regain control of its name on Twitter. If you are using or plan to use social networking sites as a business development tool and need help navigating the social networking world, please do not hesitate to contact us.

Interesting Inventions: The Game of American Football

by David J. Hill

As they say in Knoxville: “It’s football time in Tennessee!”¹  Because one of our goals (no pun intended!) is to provide you information about interesting inventions, we turn our attention to the game of football, or rather, the game of “American” football.²

Early History
Football, as well as soccer and rugby, may have been derived from the ancient Greek game of harpaston, which is mentioned in ancient literature and was played by teams that scored points by advancing a ball across a goal line.  Points were scored when a player ran with the ball across the line, kicked the ball across the line, or passed it to a player on the other side of the line.  The opposing team would try to stop the offensive team from scoring, generally by any means possible.  There was no standard size or shape for the field of play, no limit on the number of players on a team, and not many rules.  Versions of a harpaston-like game were played in England, beginning around the 12th century, and in the 19th century, the seven major public schools of England adopted formal rules for the game.  Six of these schools adopted common rules for a game that soon came to be known as association football, or soccer.  The seventh school, the Rugby School, adopted rules for a different game, which, in honor of the school, came to be known as rugby.  At each end of the rugby field was placed a pair of 18-foot goal posts with a cross-bar ten feet above the ground.  Scoring was accomplished by a place-kick or drop-kick which resulted in the ball passing over the cross-bar.  If a player “touched” the ball “down” on the ground behind the opponent’s goal line, he was rewarded with a “try-at-goal” (i.e., a place-kick or drop-kick) from a specified point on the field.  An “off-your-side” rule was used to keep teams apart before the start of play, and the forward pass was not allowed.

Football Comes To America
The game of rugby was transplanted to the U.S. in the mid-1800s, and on November 6, 1869, the first intercollegiate game was held, pitting teams from Rutgers and Princeton.  In this game, which was played under an American version of the rugby rules, there were twenty players on each side, and goals were scored by kicking or batting the ball under the goal post, not over it.  There was no time limit, and the game ended when the first team scored six goals.  Rutgers won this initial game 6-4.

In 1873, representatives from Columbia, Rutgers, Princeton and Yale formed the Intercollegiate Football Association (“IFA”) to establish a formal set of rules for these games.  A Rules Committee was established, which set the length of a football field at 140 yards and specified that each team could have fifteen players on the field.  Subsequently, under the leadership of Walter Camp, the Yale coach, the Rules Committee reduced the length of the football field to 110 yards and reduced the size of each team to eleven players.  By 1882, the Rules Committee had also created the “downs” system, by which each team was allowed three attempts to advance the ball five yards, and thereby earn a “first down”.  In 1883, the rules were changed to award five points for a field goal, two points for a touchdown and one point for a safety.  In 1897, the value of a touchdown was increased to five points and a single “point after touchdown” or PAT was added.  In 1905, the IFA was succeeded by the Intercollegiate Athletic Association of the United States,³ which approved the forward pass as a way to cut down on injuries.  In 1906, the distance necessary to obtain a first down was increased to ten yards, and in 1909, the value of a field goal was decreased to three points.  In 1912, the value of a touchdown was increased to six points, and a fourth down was added.

The Forward Pass
After the forward pass was legalized, Eddie Cochems⁴ of St. Louis University recognized its potential.  He began creating a game-plan based on the forward pass, and on September 5, 1906, in a game against Carroll College, Brad Robinson of the St. Louis team threw the first forward pass in a college game.  The intended receiver was Jack Schneider, and the pass was off the mark.  Under the rules in effect at that time, an incomplete pass was considered to be a turnover, and the Carroll College team took possession.  In a subsequent possession, however, Robinson threw a 20-yard touchdown pass to Schneider, and St. Louis went on to win the game 20-0.  In no small measure due to its mastery of the forward pass, the St. Louis team was undefeated in 1906, outscoring its 11 opponents by a combined score of 407-11.

The Football Helmet
Navy cadet Joseph Mason “Bull” Reeves was a formidable blocker who almost always led with his head, consequently suffering frequent headaches. Near the end of the 1893 season, he consulted a Navy doctor, who advised Cadet Reeves that his life would be endangered by continuing to participate in football and furthermore, a direct blow to his skull might cause death or “instant insanity”.  Determined to take the field against Army in the annual Army-Navy game, Reeves commissioned an Annapolis shoemaker to construct a sturdy leather cap to protect his head during the game.  He wore the helmet during the Army-Navy game,⁵ which was won by Navy.  In 1896, George Barclay of Lafayette College had a harness maker construct a helmet with three heavy leather chin straps to hold the helmet in place and to protect his ears.⁶  Later, in the 1920s, sporting goods suppliers Spalding and Rawlings began making helmets with interior suspension systems to more evenly distribute the force of an impact and to make the helmet more comfortable.  In 1939, John T. Riddell developed and patented the plastic football helmet, comprised of a molded plastic shell.  A year later, Riddell developed and patented the first plastic face mask,⁷ and the football helmet took on a “modern” look.

The Sports Drink
In 1965, Coach Ray Graves of the University of Florida contacted the team’s doctor, Dana Shires, about helping his team avoid dehydration.  Dr. Shires and his colleague, Dr. Robert Cade, soon realized that fluid replacement was not enough, and that a means of rebalancing a player’s blood electrolytes and adding energy was required.  They came up with a drink that included sodium and potassium salts, as well as glucose, and named it Gatorade⁸ in honor of the school’s team.  The team was energized by this new invention, and won nine games in 1966, including the Orange Bowl.⁹  In short order, most colleges were using the Gatorade® drink, and the practice of dumping a cooler of Gatorade® brand drink on the winning coach in important games soon became a football tradition.

An Invention That Did Not Catch On
In 1974, Charles Carlock of San Antonio, Texas filed a patent application¹⁰ on a device for locating and positioning a football on a playing field.  The device included a carriage which was adapted to ride along a sideline of the field and project a “measuring beam”, such as a laser beam, across the field to a moveable beam receptor which was intended to be placed at the “spot” of a football by a referee.  The receptor would then be moved off the field, so that play could resume.  The measuring beam could then be used to properly locate the ball after an incomplete pass, or it could provide an accurate measuring line for penalties and first down yardage.

The Future
There is no doubt that further innovations will be made in the game of football, and that Americans will continue to enjoy the drama and the spectacle of fall Saturdays when toe meets leather.

_________________________
¹  This phrase was the subject of a federal service mark application filed by The Porter Duval Group, LLC of Brentwood, Tennessee in 2006 for use in connection with the service of “providing a website featuring sporting information.”  The application was allowed, but no statement of use was ever filed; consequently, no registration of this mark issued.
²  In keeping with Southern tradition, “American” football will be referred to hereinafter as “football”.
³  Which changed its name to the National Collegiate Athletic Association (“the NCAA”) in 1910.
 ⁴ Who could certainly coach ‘em.
 ⁵ Reeves avoided insanity and later went on to command the USS Langley, the Navy’s first aircraft carrier.  In 1933, Reeves was promoted to Admiral.
 ⁶ Barclay was reportedly afraid of developing “cauliflower ear” as a result of unprotected collisions.
 ⁷ The USPTO acted much more quickly on patent applications in years gone by than it does today.
 ⁸ Gatorade is a registered trademark of Stokely-Van Camp, Inc.
 ⁹ The play of Heisman Trophy quarterback Steve Spurrier might have had something to do with the team’s success.
 ¹⁰ Mr. Carlock received U.S. Patent No. 3,985,356 for his invention on October 12, 1976.

Online Customer Product Reviews

by Paul S. Weidlich

Customer product reviews posted online are becoming a popular marketing tool for many companies; however, not all “customer” reviews are what they appear to be.  In fact, federal regulators, state law enforcement officials, and industry competitors are now taking a closer look at these reviews to determine if they are actually being posted by an independent customer or by someone connected to the company that actually makes or sells the product being reviewed.  Recently, Lifestyle Lift agreed to pay $300,000 in penalties and costs for allegedly posting anonymous customer reviews on third-party websites that promoted the company’s products, a practice known as “astroturfing.”  The company also agreed to refrain from promoting its products and services online without fully disclosing the true source of the information.  In another recent dispute, Urban Nutrition agreed to disclose its connection to product reviewers, reviewed products and product review websites, after it allegedly posted customer reviews that were written by reviewers it paid for favorable comments on websites it owned.  Urban Nutrition allegedly promoted the websites and reviewers as independent.  If you have any questions about posting online product reviews, please contact us. 

Save The Date: Patents Breakfast Briefing - November 4th

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