© 2008 Anthony Vella, Esq.

Rock & Roll, M & Ms®, and . . . . .a Naked Cowboy® ?

A Tale of Intellectual Property Rights

© 2008 Anthony Vella, Esq.

Q: Who am I?

A: Definitely Not the “Naked Cowboy.”• Intellectual Property Attorney 16+ Years

o Trademarks – Prosecution, Litigation, Licensingo Patents – Sameo Copyrights – Sameo Trade Secrets – Sameo Domain Names – ICANN o Related – Trade Libel, Rights of Publicity, etc.

© 2008 Anthony Vella, Esq.

• http://www.cnn.com/2008/CRIME/02/14/naked.cowboy/index.html#cnnSTCVideo

• Naked Cowboy® of Times Square Sues Mars, Inc. Source of M & Ms®

© 2008 Anthony Vella, Esq.

What Did Mars, Inc Do?

© 2008 Anthony Vella, Esq.

Trademarks & Rights of CelebrityAt Issue in Naked Cowboy Case

• Trademark Law

• Trademarks - - Identify the source of goods and services

• Scope of Federal Registration – United States BUT Senior Unregistered Users Have Rights (1st User(s) Who Used Before Registrant’s 1st Use)

• Rights of Celebrity (aka Publicity)

• A Person Cannot Have Their Image Used For Commercial Purposes without “Compensation” and/or “Authorization”

• No Uniform National Law

© 2008 Anthony Vella, Esq.

Is There a Naked Cowboy in Your Future?

• IP Pitfalls in Marketing

• Is there an “Intangible” Right of a person or company involved in an advertisement or product (shape, color, design)?

• Are you associating a product/services with a celebrity or company without paying or obtaining permission or in a permissible manner?

• Are you using a trademark of another? Do you know?

• Did you know? A trademark does not need to be registered to bring a lawsuit and obtain damages

© 2008 Anthony Vella, Esq.

Naked Cowboy® Design Mark

Registered Sep. 2, 2003United States Patent and Trademark Office

Reg. No. 2,760,208Int. Cl.: 25Prior U.S. Cls.: 22 and 39

TRADEMARKPRINCIPAL REGISTER

© 2008 Anthony Vella, Esq.

Naked Cowboy - Goods

• BURCK, ROBERT JOHN (UNITED STATES INDIVIDUAL)• 36 DEWITT STREET• CINCINNATI, OH 452181018

• FOR: CLOTHING, NAMELY AFTER SKI BOOTS, ANKLETS, ANORAKS, APRONS, ATHLETIC FOOTWEAR, ATHLETIC SHOES, ATHLETIC UNIFORMS, SKI BOOT BAGS, BANDANAS, HEAD BANDS, SWEAT BANDS, WRIST BANDS, BASEBALL CAPS, BATHROBES, BEACH COVERUPS, BEACHWEAR, CLOTHING BELTS, BODY SUITS, SKI BOOTS, BOOTS, BOW TIES, BOXER SHORTS, BRIEFS, CAPES, CAPS, CARDIGANS, CHAPS, CLOGS, COATS, HALLOWEEN COSTUMES, MASQUERADE COSTUMES, MASKS SOLD IN CONNECTION WITH MASQUERADE COSTUMES, CRAVATS, GOLF SHIRTS, HATS, HEAD WEAR, JACKETS, JEANS, JERSEYS, JOGGING SUITS, KERCHIEFS, KIMO NOS, KNIT SHIRTS, LOUNGEWEAR, MITTENS, MONEY BELTS, NECK BANDS, NECKERCHIEFS, NECKTIES, PAJAMAS, PANTS, SWEAT PANTS, POLO SHIRTS, PULLOVERS, ROBES, SHIRTS, T-SHIRTS, UNDERWEAR, IN CLASS 25 (U.S. CLS. 22 AND 39).

• FIRST USE 1-1-1998; IN COMMERCE 1-1-1998. SN 78-032,241, FILED 10-25-2000.

© 2008 Anthony Vella, Esq.

Naked Cowboy® Word Mark

Int. CI.: 41Prior U.S. Cis.: 100, 101, and 107 Reg. No. 2,560,456United States Patent and Trademark Office Registered Apr. 9, 2002

SERVICE MARKPRINCIPAL REGISTER

NAKED COWBOY

© 2008 Anthony Vella, Esq.

Naked Cowboy - Services Mark

FOR: ENTERTAINMENT SERVICES, NAMELY PERSONAL APPEARANCE BY A CELEBRITY; ENTERTAINMENT, NAMELY LIVE PERFORMANCES BY A MUSICAL BAND; ENTERTAINMENT IN THE NATURE OF CIRCUSES; ENTERTAINMENT, NAMELY LIVE MUSIC CONCERTS; ENTERTAINMENT IN THE NATURE OF DANCE PERFORMANCES; EDUCATIONAL AND ENTERTAINMENT SERVICES, NAMELY, PROVIDING MOTIVATIONAL AND EDUCATIONAL SPEAKERS; CONDUCTING ENTERTAINMENT EXHIBITIONS IN THE NATURE OF TRADE SHOWS, FESTIVALS AND EXPOSITIONS; ENTERTAINMENT IN THE NATURE OF LIVE MUSICAL GROUP, TELEVISION COMEDY SERIES AND ETHNIC FESTIVALS; ENTERTAINMENT IN THE NATURE OF PRERECORDED SEX-ORIENTED, JOKE-ORIENTED AND INSULT-ORIENTED MESSAGES BY TELEPHONE; ENTERTAINMENT SERVICES, NAMELY, PERSONAL APPEARANCES BY A RADIO-TV PERSONALITY, ACTOR, MOVIE STAR, MODEL, SPORTS CELEBRITY; ENTERTAINMENT SERVICES, NAMELY, PROVIDING AN ON-LINE COMPUTER GAME; ENTERTAINMENT SERVICES, NAMELY, PROVIDING A RADIO PROGRAM IN THE FIELD OF ENTERTAINMENT, COMEDY, MOTIVATION-AL SPEAKING VIA A GLOBAL COMPUTER NETWORK; ENTERTAINMENT SERVICES, NAMELY, PROVIDING A TELEVISION PROGRAM IN THE

• FIRST USE 11-6-1998; IN COMMERCE 11-6-1998.• SN 78-032,177, FILED 10-24-2000.

• FIELD OF ENTERTAINMENT, COMEDY, MOTIVATIONAL SPEAKING VIA A GLOBAL COMPUTER NETWORK; ENTERTAINMENT, NAMELY A CONTINUING COMEDY, VARIETY SHOW DISTRIBUTED OVER TELEVISION, SATELLITE, AUDIO AND VIDEO MEDIA; LIVE PERFORMANCES BY A MUSICAL PERSONALITY/PERFORMER; MULTIMEDIA ENTERTAINMENT SOFTWARE PRODUCTION SERVICES; ENTERTAINMENT, NAMELY, TELEVISION NEWS SHOWS; ENTERTAINMENT IN THE NATURE OF ON-GOING RADIO PROGRAMS IN THE FIELD OF NEWS, COMEDY AND VARIETY; ENTERTAINMENT IN THE NATURE OF ON-GOING TELEVISION PRO-GRAMS IN THE FIELD OF NEWS, COMEDY AND VARIETY; RADIO ENTERTAINMENT PRODUCTION; RADIO ENTERTAINMENT SERVICES, NAMELY RADIO PROGRAMS FEATURING PERFORMANCES BY A PERSON OR INDIVIDUAL, FICTIONAL CHARACTER, RADIO PERSONALITY OR TV PERSONALITY; ENTERTAINMENT, NAMELY, LIVE PERFORMANCES BY ROCK GROUPS; ENTERTAINMENT IN THE NATURE OF LIVE PERFORMANCES BY GROUPS OF SINGERS, IN CLASS 41 (U.S. CLS. 100, 101 AND 107).

© 2008 Anthony Vella, Esq.

What Can Be A Trademark?

• A 3-D design for a container*

• Stripes applied to Athletic Shoes

© 2008 Anthony Vella, Esq.

What Can Be A Trademark?

• Colors • Sound

© 2008 Anthony Vella, Esq.

“Scent” Can Be a Trademark

© 2008 Anthony Vella, Esq.

Trademark – Protection

• Arbitrary/Fanciful – Strong

• “Xerox” for Copiers “Baby Ruth” for Candy Bars• “Apple” for Computer

• Suggestive - Goodo Rent-A-Wreck (triggers a mental pause)o Glass Doctor

© 2008 Anthony Vella, Esq.

Trademark Protection

• Descriptive – Not Very Good o Computerlando Oatnuts

• Generic – No Valueo painto milko Aspirin (once an arbitrary/strong trademark)

© 2008 Anthony Vella, Esq.

“What in the wide, wide world of sports is a-goin' on here?”

Taggart with his six-shooter blasting in Blazing Saddles – Mel Brooks’ Movie

• The answer to Taggart’s question is the Naked Cowboy wants millions!!!!!

© 2008 Anthony Vella, Esq.

Autopsy of a Lawsuit Complaint

• The Facts. • The Law.• Requested Relief . . . $$$$$• Did Mars, Inc. do something

wrong?

© 2008 Anthony Vella, Esq.

Naked Cowboy’s Complaint

© 2008 Anthony Vella, Esq.

The Facts

© 2008 Anthony Vella, Esq.

© 2008 Anthony Vella, Esq.

© 2008 Anthony Vella, Esq.

© 2008 Anthony Vella, Esq.

Acts of Infringement

Did Mars, Inc. Infringe a Valid & Enforceable IP Right?

© 2008 Anthony Vella, Esq.

© 2008 Anthony Vella, Esq.

© 2008 Anthony Vella, Esq.

Cease & Desist Letters

What to Do and What Not to Do. . . . . . . . . . . . . . .

© 2008 Anthony Vella, Esq.

© 2008 Anthony Vella, Esq.

© 2008 Anthony Vella, Esq.

Two IP Legal Theories

© 2008 Anthony Vella, Esq.

© 2008 Anthony Vella, Esq.

© 2008 Anthony Vella, Esq.

Damages

An “opening bid” in a high stakes settlement game . . .

© 2008 Anthony Vella, Esq.

© 2008 Anthony Vella, Esq.

Morale of The Tale . . . .

Call or e-mail – Get advice before a Naked Cowboy ® comes . . .*Knock, Knock, Knocking on Heaven’s Door” [Bob Dylan music excerpt ] *Fair Use

© 2008 Anthony Vella, Esq.

Update – Settlement Reached

• November 8, 2008 (AP) . . . Mr. Burck (the persona known as the Naked Cowboy®) and Mars, Inc reached a settlement (terms undisclosed) of suit filed February 11, 2008

• http://wcbstv.com/local/Naked.Cowboy.M.2.859547.html