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By Joel I. Rosenblatt, Attorney at Law
Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jirosenblatt@earthlink.net
CALL ME ISHMAEL
So starts the Melville classic Moby Dick, with the unique white whale serving as the writer’s way into 19th century whaling, its economics, technology, and world class characters, that made “character,” the mark of Melville, Cooper, Irving, and others known as the Hudson River School. With this opening line, Melville says to the reader, if you want to learn the whaling trade, and understand Captain Ahab, a man caught in a self destructive vengeful compulsion, who destroys his shipboard community, pay attention to the name Ishmael, an apprentice whaler from New England.
Had Melville, asked, I would have suggested he call the book “Ishmael,” not “Moby Dick,” and I think his answer would have been similar to what is written in the preceding paragraph, that it is not the mere name that’s important but what that name evokes, which in the case of “Moby Dick,” keeps the reader’s attention on “Ishmael,” the one character who is there at the beginning and who will be there at the end of the story of whaling and Captain Ahab.
Names, however, do have uses other than the name Moby Dick when spoken by Captain Ahab. Melville did not explain the character of the whale. He was just described as “swimming around,” when Ahab spotted him, and I believe Moby Dick was not nearly as excited about Ahab as Ahab was about the whale. For, Melville, the name “Moby Dick,” was enough name recognition to stir Ahab’s destructive compulsion, different from what is understood as a constructive compulsion, with the desirable effect of stirring a consumer’s enthusiasm for the “recognized named” goods and services. Moby Dick should have been as lucky but as the story goes, his death was not without dishonor.
While the pursuit of literature is more interesting, we must have a lesson in the law of intellectual property and particularly in relation to the commercial value of names. Lesson number 1 is without commercial value, misuse or misappropriation of a name can’t cause any injury for which actions may be filed and damages may be paid. Of course there is always the self help style of Captain Ahab, but he was in international waters, after an unprotected dumb animal and which was not yet an endangered species.
However, Spike Lee, the famous writer, director and producer, is not a white whale or dumb for that matter, and is fully capable of hiring capable lawyers to defend his recognized name “Spike,” when used without his authorization and in a way that Spike Lee and his lawyers believe, will damage its commercial value without just compensation. Fortunately too for Mr. Lee’s intended targets, they are not dumb animals swimming in Melville’s 19th century international waters and are just as capable of hiring their own lawyers to match those of Mr. Lee.
Where this leaves us is a court battle over the recognized name “Spike,” which erupted recently in New York State Supreme Court. At stake was film director Spike Lee's right, if any, to keep media conglomerate Viacom from renaming one of its cable networks “Spike TV.” While it may have been simple for Mr. Lee’s lawyers to file the action, promptly satisfying Mr. Lee’s compulsion to protect his name, compulsion, as learned by Captain Ahab and learned by Mr. Lee. has its consequences. While not as drastic as the total loss of Ahab’s ship, his life and the lives of all, save one of his crew, Ishmael, the cost to Mr. Lee of indulging his compulsion was a surety bond in the amount of $2 million to cover damages to Viacom in the event Lee lost his case. What that means is while the court may have issued a temporary or preliminary injunction, pending the outcome of the trial, should Lee lose, then Viacom’s damages caused by the injunction would be guaranteed by the bond. A point to remember for those that jump into lawsuits.
The point of the case is Viacom wants to name its new TV network “Spike TV,” and Lee, famous in his own right, said he would be mistakenly associated with the network, implying that would be bad for Spike Lee or for Spike TV (he didn’t say). Which brings us to the real issue in any action claiming misuse of a name, which is the “name’s” value, if any, which must be proven by admissible facts to the satisfaction of a judge sitting in equity.
Because the courts are just as logical as anyone else, an indicia used to measure value is exclusivity, which Lee claims from the public’s recognition of “Spike,” as exclusively representing his persona or work. A rather large claim for Mr. Lee who shares his name with Spike as in “Spike the dog, “Spike Jonze,” an all around famous person according to his website, “The Spike,” a newsletter on Native American Powwows, the mark “Spike,” for video game controls, and we must not forget the famous bank leader Spike Jones, whose son Spike Jones Jr., and a musician, criticized the Spike Lee injunction because it has the potential to hamper his own projects. However, to the credit of Jones, Jr., he did limit his own right in “Spike,” to the television and entertainment field, anticipating the argument by Spike Lee that the damage is to the value of the name “Spike,” only in the entertainment field of movies, and TV, as no one would be expected to claim Spike for a dog’s name when Rover, Rex and Spot, remain available.
While the U.S. Patent And Trademark Office shows no registered “Spike Lee” trademark or service mark, there are five dead trademark applications and one live trademark application for “Spike Lee,” applied to clothing; certainly not compelling evidence for Mr. Lee’s case as there is no record of any association of the application with Spike Lee the plaintiff. A better example for Mr. Lee would have been Kathy Lee Crosby, well known TV personality who filed and obtained a trademark registration for her name in association with a line of clothing. While not in the TV field, it is a start in name protection, which Mr. Lee could have followed by using his name “Spike Lee,” as a trademark in association with his film products, as in “A Spike Leetm production,” or as a service mark in association with film creation services as in “Spike Leesm film and TV production services.”
Even though the Trademark Office can reject Lee as merely a surname, had Mr. Lee chosen to use “Spike,” in the composite mark “Spike Lee, his case would be more persuasive to the Trademark Office and to the Judge in the Viacom case. So, as Ahab pursues the whale and Spike Lee pursues Viacom, how will each become the victims of their own compulsions, if at all? We already know Ahab and the whale kill each other and that the court in the Spike Lee case believes a two million dollar bond is appropriate in case our Spike is the losing party. My prediction is Spike will have to bring in some heavy evidence of “Spike” recognition by consumers in the film and entertainment market, lacking the assist of an active trademark or service mark registration.
Stay Tuned for Next Month's Article!
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Joel I. Rosenblatt is state Supreme Court certified and available for mediation and arbitration. He practices as a registered patent attorney in patents, trademarks and copyrights. Specific areas of practice include commercial law related to electronics, computers, data processing, telecommunications, materials and mechanical engineering, the Internet and entertainment and in the development and licensing of technology and creative works. As Intellectual Property and Licensing Counsel for Fortune 200 corporations, he has acquired numerous patents for electronics and computer related inventions, and has prepared and negotiated design, development and distribution agreements for software, telecommunications, electronic technology, and creative works. As a logistics attorney, he has provided counsel and representation in the field of customs, logistics services, and in loss and damage claims.
Mr. Rosenblatt is available for mediation and arbitration in the fields of general law, intellectual property, entertainment, and technology law, and in logistics law and loss and damage claims. Emphasizing technology and the arts, he serves a wide range of intellectual property and commercial needs for individual and business clients. Mr. Rosenblatt, as a senior level attorney can provide clients easy access and quick turnaround.
Education and Professional Affiliations:
Mr. Rosenblatt holds a Bachelor of Electrical Engineering Degree from the New York Polytechnic University, an MBA from the Wharton School of the University of Pennsylvania, and a JD from the Catholic University of America Law School.
Mr. Rosenblatt is a Registered Patent Attorney with the U.S. Patent and Trademark Office and a member of the Florida and New York State Bars. Admitted to practice in the Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 11th Circuit, the United States Court of International Trade and the United States District Courts for the Northern, Southern, and Middle Districts of Florida. Florida Supreme Court Certified for Circuit Court Mediation and approved by the Florida Bar as a Mediator of Computer Law Disputes. Mr. Rosenblatt has completed Florida Supreme Court Certified Arbitration Training and is certified as a Mediator and Arbitrator in the United States District Court for the Middle District of Florida. jirosenblatt@earthlink.net . |
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