After more than three years of mediation, the parties reached a Endorsements must reflect the endorser’s “honest opinions, findings,
reported $18 million settlement covering around 20,000 authors, beliefs, or experience.” However, they cannot convey any represen-
publishers and databases. However, ten freelance authors objected tation, express or implied, that would be deceptive if the advertiser
to the settlement terms and asked the District Court not to certify the made it. § 255.1 (a), (b). An advertiser can only use an expert or
class or approve the settlement. The court approved the settlement celebrity endorsement for so long as the advertiser has good reason
and entered a final judgment based on the settlement terms. None of to believe that the expert or celebrity continues to hold the views
the parties objected to the court’s jurisdiction over the case because in the endorsement. An ad representing that an endorser uses the
of the presence in the class of the authors with unregistered works. endorsed product must be true at the time the endorsement was given.
§ 255.1(b), (c).
The disgruntled freelancers appealed to the U.S. Court of Appeals
for the Second Circuit. The Appeals Court asked the parties to Advertisers and endorsers can both be held liable for false or unsub-
argue whether § 411(a) deprived the District Court of subject matter stantiated statements made in endorsements or for “failing to disclose
w w w. a r n s t e i n . c o m
3
w w w. a r n s t e i n . c o m
5
information in web page The TTAB agreed with the examiner that the web page did not con-
tain any instructions informing consumers that they would be able
specimens for goods to order the goods if they clicked on the “For Foodservice” box.
To obtain most federal trademark registrations, the mark must be The TTAB noted that, even if a consumer using a link on a web
used in commerce on or in connection with the goods. The Lanham page in an electronic store was similar to a consumer in a brick and
Act defines “use in commerce” as “the bona fide use of the mark mortar store seeing a shelf talker and taking an item to a cashier, the
in the ordinary course of trade.” 15 U.S.C. § 1127. For goods, the web page at issue did not provide a link for ordering the goods. If
mark must be “placed in any manner on the goods or their contain- a web page merely gives information about the goods but does not
ers or the displays associated therewith or on the tags or labels provide a means for ordering them, it is only promotional material
affixed thereto.” In contrast, an acceptable specimen of use for that is not an acceptable specimen of use of the mark for goods.
services is use or display of the mark “in the sale or advertising of
services.” The offered specimen had no sales form, pricing information, offers
to accept orders or special instructions for placing orders on the
The U.S. Patent and Trademark Office (“PTO”) has long required page. The web page had no information “normally associated with
that electronic specimens of use for goods (1) contain a picture ordering products via the Internet or the telephone.” The TTAB
of the goods, (2) in close proximity to the mark and (3) provide concluded the web page offered as a specimen merely advertised
information necessary to order the goods. However, in a previous and informed the public about the company and its goods, without
decision, the U.S. Court of Appeals for the Federal Circuit called
that three-part test into question when it decided that a picture of USE Continued on Page 7
The U.S. District Court for the Eastern District of California has
allowed a false endorsement claim under § 43(a) of the Lanham Act
(15 U.S.C. 1125(a)) to proceed against AT&T Mobility. The con-
troversy concerned AT&T’s press release about a new emergency
preparedness service that mentioned General Charles Yeager and
his historic feat of breaking the sound barrier in a jet plane. Yeager,
a retired general in the US Air Force, gained acclaim during WWII
as a fighter pilot and later became famous as the first person to
break the sound barriers known as Mach 1 and Mach 2. He earned
a lifetime of aviation and speed records and used his fame to his
profit by speaking to organizations and charging for his endorse- there was a triable issue whether the use was permissible “nomina-
ments of products and companies. tive fair use” or an unauthorized implied endorsement. The Court
relied in part on Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150
AT&T’s announcement, issued without Yeager’s authorization, (9th Cir. 2002), in which the U.S. Court of Appeals for the Ninth
read: “Nearly 60 years ago, the legendary test pilot Chuck Yeager Circuit held that the nominative fair use defense protected the sale
broke the sound barrier and achieved Mach 1. Today, Cingular of commemorative plates featuring the likeness of Princess Diana.
is breaking another kind of barrier with our Mach 1 and Mach 2 The nominative fair use defense applies where a defendant uses a
mobile command centers, which will enable us to respond rapidly plaintiff’s mark to describe the plaintiff’s product for purposes of
to hurricanes and minimize their impact to our customers.” It did comparing it to the defendant’s product. One of the tests for the
not contain Yeager’s picture or mention his name in any headline or nominative fair use is that “the user must do nothing that would, in
headings, nor did it offer any products or services for sale. conjunction with the mark, suggest sponsorship or endorsement by
the trademark holder.” Since Yeager alleged that AT&T’s refer-
Yeager sued for false endorsement under the Lanham Act and ence to him was likely to cause confusion and deceive consumers
related California state law rights of privacy and commercial mis- as to the affiliation between Yeager and AT&T, his allegations were
appropriation, alleging AT&T’s use of his name and identity in the enough to defeat a motion to dismiss.
publication impaired his ability to negotiate representation agree-
ments with other cellular and wireless providers. AT&T argued To what extent can the name or likeness of a deceased celebrity
that the reference was noncommercial speech and both merely be used in commerce? Does a celebrity’s right of publicity survive
incidental and a permissible fair use. An incidental use is use of a death? The answer depends on where the celebrity was domiciled
name for purposes other than to take advantage of the reputation, when he or she died. In Cairns, the Ninth Circuit concluded
prestige or other value associated with a celebrity, in a “fleeting and that heirs of Princess Diana had no right to sue for a violation
inconsequential” manner. of California’s postmortem publicity statute because she was
domiciled in England at the time of her death and England did not
The Court determined that Yeager had an actionable interest recognize any right of publicity, much less a postmortem right.
because his achievements in breaking the sound barrier were used Florida’s right of publicity statute (Fla. Stat. § 540.08) gives a
to attract attention to AT&T’s services by linking them to a public transferable right of publicity that lasts for 40 years after death,
concern, in a “carefully crafted” strategy to promote AT&T’s brand. while Illinois (765 Ill. Comp. Stat. § 1075/30) provides postmortem
A company cannot rely on the First Amendment right to publicize rights for 50 years after death. New York, however, does not
a matter of public interest where it uses a celebrity’s identity in recognize a posthumous right of publicity.
commercial speech. A publication need not offer products or ser-
vices for sale to be commercial speech if it was distributed with an Source: Yeager v. Cingular Wireless LLC, United States District Court for the
economic motivation to promote a company’s services. Use of Yea- Eastern District of California, No. 2:07-cv-02517, December 7, 2009
ger’s name was not merely incidental. AT&T intended to “make an
association between breaking the sound barrier and breaking new Update on patent mismarking damages
barriers of disaster preparedness,” so that the public would “make On remand, the District Court awarded $6,840 in damages to
positive associations with” and “think highly” of AT&T. Bon Tool for patent mismarking, based on the full selling price
of the mismarked items rather than the profit margin (see Spring
Because Yeager alleged that the publication was an “advertisement/ 2010 issue).
promotional article” and that the reference to him was mislead-
ing and likely to cause confusion as to his affiliation with AT&T, Source: The Forest Group Inc. v. Bon Tool Co., United States District Court
for the Southern District of Texas, No. H-05-4127, April 27, 2010
w w w. a r n s t e i n . c o m
7
The Intellectual Property Practice Group counsels clients on matters related to the protec-
tion of trademarks, copyrights, domain names and trade secrets, including preparation and
processing of trademark and copyright applications, unfair competition, rights of privacy
and publicity, review of Web sites and advertising claims, and preparation and registration of
contest and game promotion rules.
www.arnstein.com
Chicago
120 South Riverside Plaza
Suite 1200
Chicago, Illinois 60606
P 312.876.7100 | F 312.876.0288
This newsletter provides information on current legal issues. The information should not
be construed as legal advice or opinion in particular situations or applications.
© 2010 Arnstein & Lehr LLP. All rights reserved.
w w w. a r n s t e i n . c o m