intellectual property and its value to riders, owners and

Intellectual Property and its Value to Riders, Owners and Others in the Equestrian Industry

MARCH 15, 2021Tiffany Blofield | [email protected] | 612.259.9721

Steven Katleman | [email protected] | 310.586.7876

© 2021 Greenberg Traurig, LLP

• “Creations of the mind”; a property right that may be protected under the law

• If the IP qualifies as protectable, owner has exclusive ownership and right to monetize, in various ways depending on the type

• Various types to be discussed. In general:• Trademark • Copyright• Right of Publicity• Also, Patent and Trade Secrets, not particularly relevant here

These are PROPERTY RIGHTS that can be bought, sold and licensed (rented) like any other form of property.

WHAT IS INTELLECTUAL PROPERTY?

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WHAT IS A TRADEMARK?• Critical Elements

• Identifies Goods/Products• Distinguishes from Goods/Products of

others• Indicates source of Goods/Products• Must appear on Goods, attached to

Goods, on containers on written materials, and other related materials.

• Name of a person and attributes of a product can also be a Trademark and Service Mark under certain circumstances. Then, notices must appear.

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• Transforming commodity into brand

• Key concept: Establishing “secondary meaning” – the word has taken on a distinct association with the name of the business separate from its plain English meaning.

• A business owner does not want “confusion in the mind of the public”, i.e., their customers and opportunities to be diverted to another entity because the names were confusingly similar

WHAT IS A TRADEMARK?

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• Word Marks and Logo Marks• Effectively a monopoly

• Must be unique and distinctive; not generic or descriptive

• Non-traditional trademarks• Color (e.g., Louboutin red bottoms on shoes)

• Product shape (e.g., James Bond’s gun)

• Product container (e.g., Coca Cola distinctive shape of bottle)

• Sound (e.g., Darth Vader’s breathing, but may be easier to copyright)

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WHAT IS A TRADEMARK?

© 2021 Greenberg Traurig, LLP 6

SPECTRUM OF DISTINCTIVENESS


• Dressage saddle (Generic)

• Bubbly for champagne (Descriptive)

• Equine Technologies for horse hoof pads (Suggestive)

• Apple for computers (Arbitrary)

• Rolex for watches or Xerox for copiers (Fanciful or Coined)

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SPECTRUM OF DISTINCTIVENESS


• BABINGTON MILLS, BEDEDGE and Design mark below for feed and nutritional products, owned by Olympian and Grand Prix rider Kevin Babington

• Equix helps owners buy and breed Thoroughbreds with marks EQUIX® and PROSTRIDE.

• Karina Brez makes equine jewelry under marks: KARINA BREZ®; HORSE LUV®; HUGGABLE HOOVES®;

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EXAMPLES OF MARKS IN EQUINE INDUSTRY


• ARIAT®, for apparel and boots

• STUBBEN®, for bridles and saddles

• CHARLES OWEN®, for helmets

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EXAMPLES OF EQUINE BRANDS


HOW MANY TRADEMARKS IN THIS AD?


• POLO RALPH LAUREN®

• POLO

• RALPH LAUREN®

• POLO BLUE®

® The color(s) blue and silver is/are claimed as a feature of the mark. The mark consists of a three-dimensional configuration of a bottle for the goods with curved shoulders, flat sides, flat bottom, flat front, flat back, and a tapered cap. The bottle appears in the color blue, except for the top portion and sides, which are silver. The bottle cap is also silver. A depiction of a polo player riding a horse appears on the front of the bottle in silver with blue highlights.

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TRADEMARKS IN THE AD


• Classes of use – McDONALDS is protected for food products, characters (Ronald and the Hamburgler) and toys. Not for unrelated classes, such as auto parts.

• So, if you register a trademark for your training facility, you may not have exclusivity for food products – unless you sell branded burgers!

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CLASSES OF USE


• Importance of clearance work• Avoid disputes

• Avoid loss of investment

• Avoid damage award/lost profit aware/attorney’s fees awards

• Pay a little now to avoid paying more later.

PRACTICAL GUIDELINES/ PITFALLS

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• Use based/ Intent-to-use– vs. first-to-file in most of the world outside of the US.

• If international use is contemplated, applicable jurisdictions should be searched and registered.

PRACTICAL GUIDELINES/PITFALLS

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• Common law

• Filing with Secretary of State does not constitute trademark protection

• Crowded space results in lesser trademark rights

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PRACTICAL GUIDELINES/PITFALLS


• Federal Registration provides substantive and procedural rights

• Why register?

• Sword for enforcement

• Shield or insurance policy

• Financial asset (buy, sell, license, security)

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PRACTICAL GUIDELINES/ PITFALLS


• Personal names can be registered only upon proof thorough usage they have acquired distinctiveness and secondary meaning.

• Key is whether the public will likely perceive the term as a personal name, not whether the public knows the identity of the person owning the brand for the product or services.

• Public has come to recognize the personal name as a symbol that identifies and distinguishes the goods or services of only one seller

• Examples: FORD for automobiles and MCDONALD’S for food services have all become strong and acquired secondary meaning

• You can use your name without acquired distinctiveness but not register it.

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CAN YOU TRADEMARK YOUR OWN NAME?


Ralph Lauren• Started by filing: POLO by Ralph Lauren® filed in 1971

• Filed in 1973:

• Filed in 1985: RALPH LAUREN®

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CAN YOU TRADEMARK YOUR OWN NAME?


• Protect against genericide • Do not use brand name as a noun—use it as adjective.

• Create and promote generic name of category too—for Rollerblade need inline skates.

• Kleenex” changed to “Kleenex Tissues” when “Kleenex” became popular and started to be used generically. “Disneyland” is now “Disneyland Park”

GENERICIDE

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• Goals for trademark enforcement (Adds up to how you can add a distinctive name to your business and products, that adds value and monetization)

• Brand Protection strategy• Select strong mark

• Clearance of mark

• Apply to register

• Enforcement – Alerts, demand letters, oppositions/cancellations, Amazon Brand Registry, eBay enforcement (VeRO)

TRADEMARK ENFORCEMENT

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• Equine Techs., Inc. v. Equitechnology, Inc., 68 F.3d 542 (1st Cir. 1995) was a trademark dispute. Plaintiff patented a line of specialized hoof pads for horses that it sold under its registered trademark, “EQUINE TECHNOLOGIES.” Defendant sold hoof care products under the trademark “EQUITECHNOLOGIES.”

RESULT:

Defendant could no longer use “EQUITECHNOLOGIES” as a trademark because the two marks were likely to confuse customers.

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ENFORCEMENT EXAMPLES


• Trademark Bullying (China iPhone)

• Apple lost a trademark fight in China, meaning a firm which sells handbags and other leather goods can continue to use the name “IPHONE”.

• Apple applied for IPHONE for leather products in 2002 (but did not get a registration until 2013).

• Xintong Tiandi Technology obtained a trademark for IPHONE for handbags and leather goods in 2010.

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ENFORCEMENT EXAMPLES


• They are a way to identify yourself and your business from competitors.

• Importance has grown with the internet – links, URLs, hashtags, etc.

HOW CAN TRADEMARKS BE IMPORTANT TO EQUESTRIANS?

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• What is copyrightable? • Original works such as designs, manuals, websites, photos, videos,

musical works, sound recordings, literary work, dramatic works, other creative works

• Also includes distinctive characteristics of logos and characters

COPYRIGHTS

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• Expression of the idea; not the idea itself

• Fixed in any tangible medium or expression from which they can be perceived, reproduced or otherwise communicated

• Paper, film, rock, canvas, digital forms on computer, media content (e.g. tv programs), and advertising

• Must be original

COPYRIGHTS

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• Rights in copyright work: reproduce, prepare derivative works, distribute copies, perform work publicly, display work publicly

• Works for Hire (employees or specially ordered/ commissioned)

COPYRIGHTS

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• Fair Use Defense: criticism, comment, news reporting, teaching, etc.

• Factors: nature of origin of work, nature of infringing work, amount of original work used, effect on the market.

• Caution: “fair use” is determined through a potentially complicated evaluation. Many people thing that “fair use” means that they think it is fair for them to use the material.

COPYRIGHTS

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• Right to control the commercial use and exploitation of identity, for sale of a product.

• Persona elements (statutes vary: generally, personal attributes—name, photo, likeness, voice, gestures, mannerisms, signature, distinctive appearance)

• Famous racecar driver recognized by distinctive car

RIGHT OF PUBLICITY

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• A rider, trainer, barn, etc. can develop their right of publicity to create a brand to identify and promote their own business.

• Once significant public awareness has been built up (“brand equity”), third parties may see value in associating your brand with theirs.

• Personal endorsements• Sponsorships• Advertising

• Full spectrum of potential goods and services, not only equestrian. Identity as an equestrian can signify, for example:

• Tough, competitive

• Grace and beauty through sport

• Bravery

• Luxury

• Down to earth

• Animal lover

HOW TO MONETIZE RIGHT OF PUBLICITY

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• Various ways of creating public awareness:• Digital presence (website, SEO and social media)

• Competitions

• Networking

• Become an influencer

• Become an expert

HOW TO MONETIZE RIGHT OF PUBLICITY

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• What is your own brand?

• Brand can be your own name or a trade name

• Consider what type of advertiser/sponsor would your brand appeal to.

• Does not have to be specifically equestrian. Riding is ASPIRATIONAL.

• Brand has to fit the product

STEP 1: FINDING YOUR BRAND

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• Optimize and organize strategically

• Write an “About Me” section that captures the foundation of your brand.

• Consider and implement SEO

• Critical for a professional look

• If affordable, hire an IT consultant to help with design, maintenance, SEO/analytics, etc.

STEP 2: SET UP WEBSITES AND SOCIAL MEDIA PROFILES

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• Content that your target audience would want to see. For example:

• Simple motivational quotes and artwork can work on IG or FB • Blogs• Clips• Announcements of shows/competitions, awards, etc. Link to

the sites.• Comment on timely stories or issues mentioned in news or

social media, including links to them. • Useful tips about techniques, gear, etc.• Make yourself a go-to expert

STEP 3: CREATE TOP QUALITY CONTENT

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• Follow other quality influencers and brands• Example: International Federation for Equestrian Sports (Federation Equestre

Internationale) International governing body for equestrian sports except for polo and horse racing

• Mission: “To drive and develop equestrian sport globally in a modern, sustainable and structured manner with guaranteed integrity, athlete welfare, equal opportunity and a fair and ethical partnership with the horse.”

• Founded in 1921.

• The FEI was formed in 1921 with the joining of the national organizations of Belgium, Denmark, France, Italy, Japan, Norway, Sweden and the United States of America. Today, there are 136 National Equestrian Federations affiliated with the FEI.

• Internet has turbocharged this network.

• Very robust website with diverse content concerning horses, riders, competitions, expert advice, sports science, and a YouTube channel with premium content (fei.org.)

• A huge marketplace where your brand should stand out.

• Dual purpose: to directly build your own business, and to build your brand to license it or associate it with third parties.

STEP 4: OTHER WAYS TO BOOST TRAFFIC

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Federation Equestre Internationale


• Consider the goods and services that you will be putting your name to:

• Are the of the highest quality, reliability, etc.?

• Do the sponsor and the products reflect your brand and your ethics?

• Do not alienate your audience and potential future sponsors. Your brand and integrity are worth much more than one deal.

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CONSIDER THE SPONSOR’S OR ADVERTISER’S PRODUCTS


• One-off trade of apparel or equipment in exchange for wearing it and limited mentions on social.

• “Brand Ambassador” – longer lasting relationship. May include trade plus fees.

• Professional Sponsorship: Highest level. Includes a fee and all equipment; brand uses your name/likeness, etc.

• Appearances in advertisements may be part of a sponsorship deal, or stand-alone.

TYPES OF SPONSORSHIPS, IN ORDER

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• Services• Amount and scope of items varies with size of deal and factor into

compensation• Link/tag offers, announcements, blog posts, etc.• Wearing branded apparel and using branded products• Write reviews and testimonials• Links between your respective websites• Links on your social profiles• Commercials – television, digital• Photo sessions, plus use of photos in various types of advertising and

promotion• Personal appearances

KEY BUSINESS AND LEGAL ISSUES FOR SPONSORSHIP/ENDORSEMENT DEALS

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• Services • Frequency of posting

• Parameters of type of content to be posted

• E.g., riding, competitions, social activities, fashion tips, etc.? Video or still?

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• Compensation• Flat fee

• Royalties with minimum guarantee

• Exclusivity• Only as to goods and services that would compete with the

sponsor/advertiser

• Term of Contract• Benefits of long vs. short

• Important – Use of the influencer’s name/likeness by sponsor/ advertiser should be limited to the duration of the term of the agreement.


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• If applicable, influencer will want to limit sponsor from posting or advertising with mentions of things that are off-brand or offensive to the influencer and their audience.

• Influencer will want to have right to approve:• Statements attributable to them, particularly as a direct endorsement

• Approvals over likeness and bio

• Sponsor/advertiser to be responsible for compliance with FTC and other laws applicable to endorsements

• Influencer must actually use the product

• Disclosure that endorsement is paid for

• Insurance – media liability, product liability “additional insured”

• Morals clause

KEY BUSINESS AND LEGAL ISSUES FOR ENDORSEMENT/SPONSORSHIP DEALS

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• Equine Law is an industry niche in a multifaceted practice of law that has its own language, customs, and norms. Greenberg Traurig’s attorneys “speak the language” of the equine world and have an in-depth knowledge of the industry. Our attorneys utilize this knowledge, their industry relationships, and understanding of the legal issues facing the equine world to help the firm’s clients thrive in a wide range of equine-related matters.

• Greenberg Traurig's attorneys are experienced working on legal issues related to major geographic equine centers in Kentucky, Florida, Texas, California, New York, New Jersey, the Middle East, and Europe.

• We represent clients including owners, riders, trainers, vendors, and organizations in the polo, show jumping, and Thoroughbred and Standardbred racing and breeding spaces. Through our multifaceted approach and global reach, Greenberg Traurig’s attorneys skillfully handle equine-related litigation and transactional matters that affect the day-to-day operations and livelihoods of entities and individuals in the equine world, such as real estate, labor and employment, general corporate and contractual matters, tax and estate planning, media, intellectual property and branding issues, and government law and policies.

ABOUT GT’S EQUINE INDUSTRY GROUP

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• Email us at [email protected].

• Click here to follow our latest insights.

• Insights and Accolades:

• Race to the Top: Trademark Litigation in the Equine Industry https://www.gtlaw.com/en/insights/2020/8/race-to-the-top-trademark-litigation-in-the-equine-industry

• The Equine Industry Finding a Home in the Sports Law Ranks https://www.gtlaw.com/en/insights/2021/2/the-equine-industry-finding-a-home-in-the-sports-law-ranks

• Greenberg Traurig Once Again Ranks Among Top Trademark Firms in 2021 Edition of WTR 1000 https://www.gtlaw.com/en/news/2021/2/press-releases/greenberg-traurig-once-again-ranks-among-top-trademark-firms-in-2021-edition-of-wtr-1000

LEARN MORE

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mailto:[email protected]

https://www.gtlaw.com/en/capabilities/food-and-beverage/equine-industry-group

https://www.gtlaw.com/en/insights/2020/8/race-to-the-top-trademark-litigation-in-the-equine-industry

https://www.gtlaw.com/en/insights/2021/2/the-equine-industry-finding-a-home-in-the-sports-law-ranks

https://www.gtlaw.com/en/news/2021/2/press-releases/greenberg-traurig-once-again-ranks-among-top-trademark-firms-in-2021-edition-of-wtr-1000

© Greenberg Traurig, LLP 44

THANK YOU

Tiffany [email protected]

Steven KatlemanShareholderLos [email protected]

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