Mailbag

It's always wonderful to receive letters. If you have any comments or questions, do not hesitate to write to averna@anthonyverna.com.

If the persona Mean Gene was created by Titan Sports or by Gene Okerlund while employed or to get employed by Titan Sports, I would think Titan Sports owns the mark, registered or not. Gene Okerlund's complaint against Hot Stuff Foods is then moot. Titan Sports would have the only valid complaint. And since Titan Sports declined to pursue registration of "Mean Gene", Hot Stuff Foods seems to be in the clear.

-Mark Hagenau (Derry, NH)

Mark, I can understand why you'd want to think this. What is tricky about trademarks, however, is that they live and die. Trademarks can also come back to life - you can think of it as resurrection or reincarnation. That is, a trademark can come back in the same exact form as it was. "MENE GENE" as a wrestling personality, involved in professional wrestling telecasts and appearances vs. "MENE GENE" in some other form. Of course, the other form relates back to the original - "MENE GENE" in the wrestling industry. Titan Sports may have dropped the application, but the ultimate lesson here is that the mark could come back in some form if Okerlund isn't a part of Titan Sports and the WWE and, therefore, Titan Sports no longer uses it. If Okerlund himself only uses it to sell himself, then the argument can easily be made that the mark, although not registered, belongs to him.

(On a side note, when a trademark is unregistered, it is referred to as a "common law" trademark. I'll use the proper terminology from now on, but wanted to introduce everyone to the concepts first.)


...[T]he economics are clear, namely, that big pharma can only develop new drugs like this, and give away drugs to third world nations, if it continues to milk the middle class of America for all it is worth.
....
But the purpose of anti-trust laws are to protect the consumers and smaller companies. Anti-trust laws keep big companies from controlling markets to the loss of consumers and smaller companies that would make the market more competitive. This is what Slate seems to be pointing to.
But Anthony, how do we protect stock values and markets and make drugs affordable?

-Brian Sipe (Philadelphia, PA - www.attorneysipe.com)

No letter from a fellow attorney is complete without a plug to his firm's website.

As you can read, this e-mail was much longer, but needed to be cut else this entry would be too long.

Part of what's missing in the Slate article referred to on Schering-Plough, the FTC, and the DOJ is the relationship between all intellectual property laws and and anti-trust laws like the Sherman Act. Intellectual property laws allow the owners to have a monopoly. It effectively carves out a monopoly on what is owned. A trademark allows the owner to use those words or that logo for that product in that industry. A copyright allows the owner to make that piece of art (usually) alone. A patent allows an inventor to make that invention alone. So this is the tug-of-war that is going on here. The monopoly is carved out and if someone else wants to make a generic version of a drug, then all the patents must be expired.

Wrestling's Golden Era

Mean Gene Okerlund - remember him? - is suing his nephew's company.

Jeff Okerlund was president of Hot Stuff Foods, based in Sioux Falls, SD. Hot Stuff Foods had a Mene Gene line of foods. This includes Mean Gene's Burgers and Mean Gene's Pizza.

According to this brief article, Hot Stuff Foods wrongly registered trademarks on both brand names without permission of Gene Okerlund. Of course, Hot Stuff Foods denies that its trademark registrations were done improperly. Jeff Okerlund insisted on the stand that if it were done properly, Gene Okerlund would have registered his name as a mark and then it would have been licensed to Hot Stuff Foods.

I would agree if Mean Gene Okerlund was the name that Gene Okerlund used himself to promote himself. I remember it always in connection to wrestling, however. A quick search of the USPTO trademark database finds that "MEAN GENE" (U.S. serial number 74099624) was a mark that Titan Sports, Inc, doing business as The World Wrestling Federation filed, but never registered. That application is now abandoned, though I'd argue that "Mean Gene" Okerlund was always associated with wrestling.

What else strikes me as interesting is that "MEAN GENE'S PIZZA" was filed by both Eugene Okerlund and Orion Food Systems (which seems to be a predecessor to Hott Stuff Foods) in different applications. In Okerlund's application, a final refusal to register the mark was recently mailed. "MEAN GENE'S BURGERS," however, is owned by Hot Stuff Foods only.

Certainly, this is a confusing mess and I don't envy the decision maker in this trial (since day two of the trial was yesterday, June 20, 2006). With nobody owning a registered trademark, is Gene Okerlund trying to assert what is called "common law" trademark?

Does Gene Okerlund then really own the mark of "MEAN GENE"? Would he have been "Mean Gene" Okerlund without the wrestling industry? I would argue that he would not be known at all. That leads me to believe he would not own any rights in "MEAN GENE" as a mark - but maybe he has been able to assert common law marks by making public appearances outside of wrestling matches and television shows owned by Titan Sports, Inc.

The more that I think about it, the more interesting this case becomes.

Philosophy - Why do we do this?

According to this article on Slate.com, the Federal Trade Commission and the Justice department disagree on an agreement between Schering-Plough and two manufacturers of generic drugs.

Schering and the two generic manufacturers agreed to delay the marketing of a generic version of a Schering potassium supplement. The FTC claims that Schering bought off competitors and wants to pursue antitrust violations. The Justice department does not want to pursue these claims, because the department claims that patent law makes an agreement like this allowable.

Why? Well, this is because of why we practice trademark, copyright, or patent law - collectively known as Intellectual Property. (I do not practice patent law, however.) We do it because we believe that entities (people or businesses) own their own work. We work to protect that work. Patent law protects the inventions that entities create. Trademark law protects the names of products or services that are sold - quality of the brand name is at stake. Copyright law (generally) protects works of art and helps to link the artist to the art.

Although the Slate article discusses who represents the United States in an argument, maybe the discussion is better framed as what rules: Antitrust law (to prevent monopolies) or Intellectual Property law (which exists to allow monopolies in certain instances).

I, obviously, am taking the side of the Intellctual Property law. Those monopolies - in inventions, names, or art - exist so that there can be fruits of labor.

For a much more thorough explanation, see, an article by Justin Hughes whose citation is 77 Geo. L.J. 287 (1988).

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Dale Earnhardt Jr. does not own the trademark in his own name.

According to the following story by ESPN's Darren Rovell, NASCAR driver Dale Earnhardt Jr. does not own the trademark in the name everyone calls him - "Dale, Jr."

http://sports.espn.go.com/rpm/news/story?series=2&id=2480863&lpos=spotlight&lid=tab1pos2

What is shocking to me is not the consent form that Dale, Jr. signed - but that the rights in the "Dale, Jr." trademark went into the estate of Dale Earnhardt, Sr. This means that Dale Earnhardt, Sr., somehow owned the trademark of "Dale, Jr." Was RDE Administrative Trust some kind of sole proprietorship that Dale Earnhardt, Sr. ran? (In most states, a sole propietorship dies with the death of the owner, and all assets are turned into a part of the estate of the deceased.)

This is a situation where a trademark would be worth millions of dollars, and should be owned by a corporation. This way, death would not cause the kind of transfer of a trademark that has been seen in this situation. The corporation would continue to exist and the mark would rest in there.

There are too many strange agreements in this situation for me to be comfortable, also.

If this were someone who had never been around trademarks and a business situation, I would not be surprised. (A 19-year-old and his mother visited my office last week about a copyright infringement case - their lack of knowledge did not surprise me.) This family, though, should know better. The Earnhardt family knows or should know the value of the family name, having been around NASCAR for so long. They also know or should have known that two drivers have different ownerships of their own names. I am shocked and surprised at the lazy way the value of the names (which is what trademark law provides) were protected. It seems as if the mark was not protected well at all.

Kanye West, Ludacris win copyright trial

Here is a link to the AP account on this judgment: http://news.yahoo.com/s/ap/20060602/ap_en_mu/music_trial_8

According to the article, "At issue at trial were the words 'like that,' repeated more than 80 times in each song, though one song precedes the phrase with 'straight' while the other precedes it with 'just.'"

What is confusing here is that the article does not provide much context or legal description. Copyright law provides very little aid in helping to determine if two works of art are similar or not. Cases like this come down to a determination of facts.

This is most famously seen in a case like Bright Tunes Music Corp. v. Harrisons Music, Ltd. 722 F.2d 988 (2d Cir. 1983), where George Harrison's "My Sweet Lord" was found to infringe upon The Chiffons' "He's so Fine." There, the repetition of several notes in "He's so Fine" was also in "My Sweet Lord," with a little variation. There is much reliance on the expert testimony in the decision. The paintiffs in this case won because the music was so similar and because of the popularity of the plaintiffs' song "He's so Fine."

This leads to the issue of discussing the facts in the current West-Ludacris case. The problem is that the plaintiff's witness was dismissed, and so one side had more expert testimony than the other, which could certainly influence a jury during a trial with complicated issues as most copyright cases have. The plaintiffs in the current case, I.O.F., do not appear to be as popular in current popular music as The Chiffons were at the time. Also, one wonders if the art form - rap - has an effect. Is a pattern of a rhythm in the West-Ludacris case the same as the notes in the "My Sweet Lord" case? Does popularity matter?

We will try to update you more as more information can be found on the case.

Welcome!

Welcome to the Trademark, Copyright, and Entertainment Law Forum. The Law Firm of Anthony Verna can be found at http://www.nyctrademarks.com.

This forum is for the discussion and review of current issues in trademark, copyright, and entertainment law - the practice areas of the Law Firm of Anthony Verna.

Once a week, there will be a mailbag edition of the forum. Please send any questions to averna@anthonyverna.com and selected questions will be answered on here.

Thank you! I look forward to this being a fruitful forum.

-Anthony M. Verna III
The Law Firm of Anthony Verna
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