Many of you may remember reading a “Choose your own Adventure” book in your childhood, and being fascinated by the different trajectory a story could take as you made different selections in the story line. R.A. Montgomery created the children’s book series entitled “Choose Your Own Adventure” in the late 1970’s. The original Bantam series sold more than 250 million copies from 1979 to 1998, when computers naturally took over the divergent path idea. In 2003, Montgomery formed Chooseco, LLC in 2003 to breathe new life into the series and expand into new media. Chooseco now owns the trademark CHOOSE YOUR OWN ADVENTURE in over 15 different international classification of goods and services, including the production of television programming (the “Mark”).

chooseyourownadventure (1)More recently, in January of 2019, Chooseco instituted a multimillion-dollar lawsuit against streaming giant, Netflix, for several causes of action relating to trademark and trade dress infringement. Chooseco claims that an episode of Netflix’s show Black Mirror, which feature a young programmer who creates an adventure video game called Bandersnatch based on a “choose your own adventure” book of the same name, infringes and dilutes the Mark. 

Netflix’s Bandersnatch is an interactive film that allows its viewers to make choices which ultimately decide the plot and ending of the film. The main character is a video game developer who adapts a fantasy “choose your own adventure” novel into a video game. Bandersnatch “dark and, at times, disturbing content” which, according to its complaint, is in stark contrast to Chooseco’s own CHOOSE YOUR OWN ADVENTURE books, which are lighthearted and targeted at audiences between the ages of seven and fourteen. They argue that Bandersnatch, which contains, including “murder, mutilation of a corpse, decapitation, and other upsetting imagery” dilutes and/or tarnished their mark.

Chooseco further points out that it engaged in extensive negotiations with Netflix regarding licensing the Mark for use in the episode, but that negotiations fell through and Netflix chose to go forward and use the Mark regardless. Netflix does not deny these allegations. 

In response, Netflix filed a motion to dismiss the suit on several bases. Principally, Netflix argues that a media in which the reader or viewer makes decisions which ultimately affect the outcome of the story, is a storytelling device, which is not protectable by trademark law. Netflix notes that trademark law protects “symbols or devices used to identify a product in the marketplace” and do not protect ideas. Borrowing a page out of copyright law and precedent, Netflix concludes that a narrative storytelling device, like the one employed in Chooseco’s Choose Your Own Adventure series, is an idea and thus is not protected by trademark law.

The federal judge in Vermont assigned to the case has yet to make any definitive rulings in the case, but it seems that Chooseco faces an uphill battle. As noted by Netflix in its motion to dismiss, artistic works CYA01_Box_sample_largelike Bandersnatch receive special protection from trademark litigation under the First Amendment – think Andy Warhol’s use of the Campbell soup can or Marilyn Monroe’s image. Under the cited Second Circuit case, Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), for example, the use of a trademark in an artistic work is constitutionally protected unless it either “has no artistic relevance to the underlying work whatsoever, or explicitly misleads as to the source…of the work.” The threshold for proving that a work has at least some artist relevance to the underlying work is extremely low and should easily be satisfied by Netflix in this case.

The constitutional free speech protection provided by the First Amendment requires an “especially compelling case of consumer confusion” to satisfy the other prong of the Rogers standard. Id. Here, Chooseco will need to provide sufficient evidence of consumers who were confused into believing that Bandersnatch was somehow affiliated with its Choose Your Own Adventure Trademark and compelling reasons for why other consumers will continue to be confused by Netflix’s use of the Mark. Chooseco may be unable to do either or both.

As with a choose your own adventure book (or television show), there are several different pathways this litigation could take, whether the two sides hash it out in federal court or quickly settle out of court, but it is hard to imagine any ending where Chooseco takes this case to trial and successfully litigates the case on the merits.


By Drew Harris

How delicious are those 11 “secret herbs and spices” assembled by Harland Sanders in 1930 for his popular “Kentucky Fried Chicken” sold at his local service station? It was so “finger lickin’ good” popular that the Governor Ruby Laffoon proclaimed him a “Colonel” and he started franchising his chicken business. But rather than patent the recipe, he chose instead to keep it a “secret” in order to protect it. The KFC Original Recipe is, in fact, perhaps the most famous and notable trade secrets in history.

In order to protect the ingredients, the secret original recipe, handwritten and signed by Colonel Sanders himself on a now yellowing piece of paper, is held in a special segregated company vault in Louisville, KY, along with 11 viles of the ingredients for good measure. Throughout time, it has only been seen by a handful of employees (all of whom must, of course, signed ironclad pledges of confidentiality). The vault itself, which can be accessed by only two people working in tandem, is monitored around the clock by video and motion-detection surveillance systems.

To further insure that the secret remains so, the 11 herbs and spices are mixed in separate halves – one half by Griffith Laboratories and the other by McCormack – and then combined together all at once by the latter to ensure that nobody outside of the companies should ever know the incredibly lucrative blend.

Many have claimed to have discovered various versions of the Original Recipe, one of which was published in the Chicago Tribune, however KFC maintains that those are not even close. The ability to maintain the secrecy of the Original Recipe is paramount to the business of KFC, and establishing it as a trade secret offers the fast food giant the best protection. If KFC (or their parent company, Yum! Brands) were to have patented the Original Recipe, the recipe would’ve been published, and made available to the public after the expiration of the patent, allowing anybody to copy the secret recipe verbatim, which would dramatically devalue the KFC brand.

The story of KFC illustrates that trade secrets are very lucrative commodity to U.S. companies such as McDonalds, Coca-Cola, and many others. That is why the Defend Trade Secrets Act of 2016 (the “DTSA”) was an important piece of legislation. The DTSA is a powerful tool for companies like them that ferociously defend their trade secrets.

A Brief History of Trade Secret Protections in the United States

Protecting Intellectual Property has long been important in the United States, and indeed internationally as well, however trade secret law has historically taken the backseat to copyright, trademark and patent law on a federal level. Until 2016, with the passage of the DTSA, trade secret law was handled exclusively on a state-to-state basis, with statutory law differing in respect to statutes of limitations, definitions, application, and other relevant criteria. Companies were required to jump through certain hoops established variously by state legislation and court precedent to establish a trade secret.

Some progress was made toward uniformity in 1980, the Uniform Trade Secrets Act was approved by the American Bar Association. Nearly every state that has enacted a trade secret law has adopted the UTSA (New York and Massachusetts being the two states with trade secret law that have not). Another reference is the Restatement of Trade Secrets, which provides a summary of the varying trade secret laws passed in states throughout the US.

In 1996, Congress passed the Economic Espionage act (EEA), the target of which was stopping trade secret theft by foreign governments, individuals, and entities in general. While the EEA did provide a step in the right direction concerning Federal legislation regarding trade secret theft, instead of provide a private cause of action the EEA instead relied on the U.S. Attorney’s office, which was already strained.

Finally, in 2016, the DTSA greatly altered the way in which U.S. companies can seek remedy for trade secret misappropriation and changed the legal landscape of trade secret enforcement in the following ways:

1. U.S. Companies can now hire their own lawyers

Under the DTSA, rather than relying on enforcement actions of the U.S. Attorney General’s Office, companies now can file private legal actions to protect their trade secrets and seek remedies from individuals or companies that infringe, steal or misappropriate them. The DTSA provides the necessary “teeth” to enforce these valuable rights.

As noted above, under the EEA any company in need of litigation regarding the misappropriation of their trade secret had to go through the U.S. Attorney’s office. By allowing the owners of trade secrets the ability to hire their own counsel, companies are in control of their own enforcement of intellectual property. Companies can also seek out lawyers that have a greater wealth of knowledge pertaining to trade secret law, providing them a benefit that a prosecutor in the U.S. Attorney’s office might not afford. Furthermore, the office of the U.S. Attorney juggles myriad cases at once involving many national issues – it thus cannot consistently give a company in need of trade secret litigation undivided attention. If the company hires its own private counsel, they can choose one who has the appropriate work ethic, knowledge and motivation to pursue the case. Thus, companies that take legal action regarding their trade secrets now are afforded the possibility of more attentive, accountable, and (quite possibly) knowledgeable attorneys- at least in the field of trade secret litigation.

2. There is now a federal (national) standard to use for trade secret cases. Much simpler than before.

The DTSA provides much needed uniform definitions for certain critical terms, most notably “trade secret” and “misappropriation.”

The DTSA definition of trade secret, for example, is rather broad. It allows protection of a wide range of proprietary information, specifically: “all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing if (A) the owner thereof has taken reasonable measures to keep such information secret; and (B) the information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, another person who can obtain economic value from the disclosure or use of the information.” This is very similar to definitions found in prior laws dealing with trade secret, such as the one found in in 18 U.S. C. 1839(3).

Acts that constitute misappropriation are also specifically explained in the DTSA, giving guidance to litigants as follows:

acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means; or

disclosure or use of a trade secret of another without express or implied consent by a person who—

  • used improper means to acquire knowledge of the trade secret;
  • at the time of disclosure or use, knew or had reason to know that the knowledge of the trade secret was (a) derived from or through a person who had used improper means to acquire the trade secret; (b) acquired under circumstances giving rise to a duty to maintain the secrecy of the trade secret or limit the use of the trade secret; or (c) derived from or through a person who owed a duty to the person seeking relief to maintain the secrecy of the trade secret or limit the use of the trade secret; or

before a material change of the position of the person, knew or had reason to know that—

  • the trade secret was a trade secret; and
  • knowledge of the trade secret had been acquired by accident or mistake.

3. U.S. Companies Can Seize Assets and Freeze Business of individuals or entities that misappropriate their trade secrets (if they can make a strong enough case for it)

In addition to these uniform definitions and the ability to retain private counsel, section 2 of the DTSA granted owners of trade secrets the very powerful, though specific, right to seizures of personal property in order to enforce their rights. They may now act through court order to seize the assets and freeze the business activity of an individual or entity who is potentially misappropriating their trade secret, or disseminating information stolen from that company. This type of civil seizure generally occurs ex parte (meaning only one of the parties to the lawsuit, in this case the plaintiff, is in the court room) prior to a court formally finding misappropriation in the actions of a company against which a claim was filed. The court grants a TRO and seizure order. This seizure, though very useful and necessary in certain situations, must meet a laundry-list of criteria, in order to make reasonably certain that this ability is not used maliciously or in bad faith.[fusion_builder_container hundred_percent=”yes” overflow=”visible”][fusion_builder_row][fusion_builder_column type=”1_1″ background_position=”left top” background_color=”” border_size=”” border_color=”” border_style=”solid” spacing=”yes” background_image=”” background_repeat=”no-repeat” padding=”” margin_top=”0px” margin_bottom=”0px” class=”” id=”” animation_type=”” animation_speed=”0.3″ animation_direction=”left” hide_on_mobile=”no” center_content=”no” min_height=”none”][i] These seizures are important as they provide previously unavailable legal strategies for protecting trade secrets.

In Conclusion…

The most noticeable effect of the DTSA will be the ability of companies to privately pursue legal action against individuals or business entities that misappropriate their trade secrets. While the ex parte seizures (civil seizures) are exceptionally noteworthy, the instances in which they can be used are exceptionally rare, making them a useful, though seldom-used ally.

The passage of the Defend Trade Secrets Act of 2016 might not have made the front page, but it has radically changed the legal reality for U.S. companies that need to defend the trade secrets their business relies on.

The Entire Language of the Defend Trade Secrets Act of 2016 can be found here.

Drew Harris Drew Harris is a rising junior at the University of Tennessee and an summer intern at Shrum & Associates.  Drew’s goal is to attend law school and possibly practice entertainment law upon graduation.







[i] The following is the criteria necessary to be granted a court ordered ex parte seizure under the DTSA:

– Order following Fed. R. Civ. P. 65 or some other equitable relief would have to be insufficient in order to obtain this order

– Must be immediate and irrecoverable damage done if the seizure is not ordered and carried out

– A denial of the seizure order must harm to applicant, and that harm must: (A) be greater than the harm to the person/entity against whom/which the seizure is ordered; and (B) significantly outweigh the harm done to any third party by such a seizure

– Chance of success of applicant in showing that the person against whom the seizure was ordered indeed did misappropriate or conspire to misappropriate his trade secret is highly likely

– The request by the applicant is reasonably particular as to the property in need of seizure, location, basically the extent necessary under the circumstances

– The person against whom the seizure is ordered would attempt, or be successful at destroying, moving, hiding, or making his property unavailable through other means if he was served a notice by the court

– Finally, the applicant has not already publicized his request for a seizure, which would counteract the purpose of an ex parte/ civil seizure in the first place[/fusion_builder_column][/fusion_builder_row][/fusion_builder_container]

OR, What’s in a Name? Personal Names as Trade Names REMIXED.

By Barry Neil Shrum, Esquire (with Ashley Trout)

“That which we call a rose by any other name would smell as sweet.”

You may know this quote from William Shakespeare’s classic play Romeo and Juliet or from the more “pop-culture” reference by Anne Hathaway in The Princess Diaries, but chances are you’ve heard it countless times before. A name is a sense of originality and persona. It is what gives us our sense of identity and belonging. Some psychologists and sociologists believe that people with certain names, such as Curt, David and Jeff, receive more positive affirmations in life than persons with less desirable names, such as Agatha, Edgar and Mabel, which are more likely to evoke negative messages from teachers, professionals and acquaintances.  One study reported in the Journal of Educational Psychology used elementary teachers to grade identical papers on which random positive and negative names were attached and, as you may have guessed already, the papers with the negative names routinely received the lower grade.  Now you don’t have to wonder why supermodels and handsome actors have the most unique and appealing names!  But Shakespear was perhaps trying to imply that it is the essense of the rose that matters, not its name.

One of the more popular articles on my blog dealth with this issue: What’s in a Name? Personal Names as Trade Names, written by my then-colleague, James H. Harris III for what was then a physical newsletter version of Law on the Row.  In it, Jim elucidates the user of personal names a marks or trade names in business.  I felt it was time to reexamine the issue in the light of celebrities, and extend the discussion to the rights of publicity sometimes also associated with a name.  So, the subtitle of this article is appropriately What’s in a Name? Personal Names as Trade Names REMIXED.

PalinThe bottom line is that some names are more unique than others, but your name is what makes you uniquely “you.” So, what happens when someone “steals” our name?  With the billions of people in the world, the chances significant that there is at least one other person who is walking around with the same name as you.  Is there anything that a person can do to protect their “unique” identifier?

What happens, for example, when someone tries to take a name like “Heidi Klum” or “Albert Pujols”?  Key figures or celebrities that, when you say their name, a certain image comes to mind.   Or, perhaps the name evokes an event:  mention the name Charlie Sheen, and you will likely think not only about his image, but more about his recent escapades surrounding his departure from Two and Half Men.

A very good example of this power of a name to evoke strong messages is the name “Sarah Palin.” Whatever your political opinion, whether you love Sarah Palin the Alaskan Governor/Vice Presidential candidate or whether you hate her, the name “Sarah Palin” evokes very strong thoughts, associations and yes, feelings. Look at the photographs associated with this article.  What kind of feelings does that evoke in you?  If you thought either was the real Sarah Palin, you are wrong. They are both actually impersonators – and different ones to boot!  Yet, the images evokes the association and the feelings that make you think of the real Sarah Palin and her personal idiosyncrasies.

Sarah Palin is, of course, an American politician, formerly governor of Alaska, but best known as John McCain’s “choice” as the Vice President candidate for the Republican Party in the 2008 election. She is best remembered for her “cowgirl” image, folksy humor and distinctive, if annoying “wink”:   but she is often also associated with her completely ineffective interview with Katie Couric that some say cost the Republican party the election that year – an interview greatly publicized by an impersonator.

Since the 2008 election, Palin has become a fixture on the Fox News networks. Whether she is expressing her opinions about issues such as abortion or gun control, Palin is anything but shy in making her voice heard. The result of all this puimageblicity, of course, is that her television and cable “Q Score” has increased significantly.

With a character as polarizing as Palin, the result is often a proliferation of impersonators. It did not take long in the case of Palin – immediately subsequent to the interview – for Tina Fey to begin imitating the Couric interview on the Saturday Night Live. Impersonators, of course, trade off the personalities and idiosyncrasies of the imitated celebrity or public figure.  Since the days of Rich Little, and his current replacement Frank Caliendo, the art of imitation has been a popular part of American pop culture.  There is no doubt that Ms. Fey’s notoriety increased as a result of her performances. Imitation may be the most sincere form of flattery, but can it go too far?  According to Sarah Palin and her handlers, it already has!

Tina Fey was just the first in a long line of Sarah Palin impersonators. Many people have since taken it upon themselves to impersonate Sarah Palin and trade on her persona, including perhaps the best known of the tribe, Patti Lyons and Patsy Gilbert.  See, infra.  So, the question is “Can Palin stop this type of activity?”

Not to sit on the fence, but the answer is maybe! Perhaps more precisely, she will be able, in a somewhat limited way, to enforce certain aspects of her persona and, in an even more limited way, the use of name in connection with certain services and/or goods.

We must first look to trademark, not copyright, for the answer to our quest.  According to the U.S. Patent & Trademark Office, a trademark is a “word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.” Whenever you see the Golden Arches looming in the air, you immediately associate it with the burgers made by Mickey D’s – both trademarks of the McDonald’s corporation.

Likewise, whenever you hear the name “Sarah Plain,” chances are you picture a woman with long brown hair, most likely pulled back, thigh-length boots, and a pair of Kazuo Kawasaki 704 designer eyeglasses. Perhaps you see that aforementioned hackneyed wink she was so fond of using during the televised vice-presidential debates with VP Joe Biden. Whatever you see, the image of Sarah Palin is a very unique and distinctive image. And, more importantly, it is an association engrained in our minds.

So, since the image and name are so synonymous, does it follow logically that Sarah Palin can copyright her name? According to U.S. Copyright Law and historical interpretations thereof, it is well-established answer is “no, she cannot.”  Since its creation by our Forefathers, the Copyright law has never protected mere “ideas.” In fact, Jefferson stated flat out that “[fusion_builder_container hundred_percent=”yes” overflow=”visible”][fusion_builder_row][fusion_builder_column type=”1_1″ background_position=”left top” background_color=”” border_size=”” border_color=”” border_style=”solid” spacing=”yes” background_image=”” background_repeat=”no-repeat” padding=”” margin_top=”0px” margin_bottom=”0px” class=”” id=”” animation_type=”” animation_speed=”0.3″ animation_direction=”left” hide_on_mobile=”no” center_content=”no” min_height=”none”][ideas] cannot, in nature, be a subject of property. Specifically, things like titles, names, short phrases and slogans fall into that category, and thus are not eligible for copyright. Anything that can be treated as a building block – musical notes, letters, words – fall outside the scope of copyright’s protection.

But this doesn’t mean Palin is without protection all together.  In the United States, celebrities like Palin and others can protect their name, through trademark laws, and their persona, at least in 28 of the 50 states, through state laws governing rights of publicity.

Sarah Palin has opted, at least initially, to use trademark law to protect here interests in her moniker.  In an article by the Christian Science Monitor , she acknowledged filing for a trademark application for her name in International Classification 41 for “educational and entertainment services, namely, providing motivational speaking services in the field of politics, culture, business and values” and in IC35 for “Information about political elections; Providing a website featuring information about political issues.” The application is Serial Number 85170226 and the mark was approved for publication and the review of that publication was completed on April 12th. Likely the marks will issue within the next few months.

The thing to understand here is that it is not an uncommon practice among celebrities who want to enforce their intellectual properties, namely their persona or publicity rights, and prevent others from using their identifying features in similar trades and endeavors.  Filing a trademark application for use of their name in connection with certain services and goods is, in fact, extremely common for celebrities and I often advise my clients to take such action.

Currently, back in Sarah Palin’s world, there are two well-known figures impersonating her: Patti Lyons and Patsy Gilbert. Patti Lyons seems the most aggressive of the two, although both have been successful. In a Yahoo article, it was reported that Lyons showed up at a recent event in Washington, D.C. knowing that Palin would not be present.  Lyons impersonated Palin by dressing like her and making an appearance.  At the event, she deceived the crowd into thinking she was Palin.  Lyons spoke with her “fans” at the event and even those people were unable to detect the ruse. Lyons travels the country doing the impersonation with “fair and balanced” political comedy, and allegedly appeared onstage with Bill Clinton and Barack Obama. Lyons also has a website dedicated to her Sarah Palin impressions and is in negotiations with A&E for a special. Other impersonators, like Patsy Gilbert for example, have similar websites.

But even if Sarah Palin is successful in registering her trademark on the Primary Register, does that enable to prevent these impersonators from practicing their trade?  Maybe, maybe not. As our examination of protection moves further down the tracks, we have to reference a person’s right of publicity. Unlike copyrights, trademarks and patents, there is no uniform federal law that governs the intellectual property right of the right of publicity.  This right is based partly in common law, but also, as noted earlier, has statutory representation in 28 states. The problem is that there is very little uniformity among these state statutes, which range from 50 years in Illinois Cf. Ill. Comp. Stat. § 1075/30 – the most protection – to as little as 10 years at a time in Tennessee, for example.  Illinois’ neighbor, Indiana, gives protection for as long as the publicity rights are continuously transferred! Cf. Ind. Code § 32-36-1-16.  To quote another celebrity, can you say “to infinity and beyond?”  But don’t get me started on the rights of cartoon figures, lest I digress.

The right of publicity is essentially the inherent right of every human being to control the commercial use of his or her identity, in some state even after their death!  Some courts view this as a “moral” right, in line with the natural rights philosophy of John Locke, arguing that a celebrity’s identity is the fruit of his or her labor and creates property entitled to legal protection. See McFarland v. E & K Corp., Civil No. 4-89-727, 1991 U.S. Dist. Lexis 1496, at 4 (D. Minn. 1991).    Using this property right, celebrities may protect the commercial use of their persona, including their name, voice and personal characteristics, limiting their exposure and/or seeking compensation for their use.

Many of these laws, however, only prevent limited types of commercial use. Tennessee has a right of publicity statute which gives Tennessee residents “ a property right in the use of his name, photograph or likeness in any medium and in any manner.” Cf. Tenn. Code Ann. §47-25-1103, et. seq. In a case of first impression, Tennessee’s Supreme Court examined the statute in the context of a Beatles tribute band, i.e.¸a group of impersonators. The imitators dressed liked the Beatles, performed – remarkable close in sound – to the Beatles and, most importantly, advertised their concert using a pose similar to the one the actual Beatles use on the American version of the album, A Hard Day’s Night. The impersonators called themselves “1964 as the Beatles.”

The court ultimately ruled that the band could perform as impersonators, but could not use printed advertisements that evoked the persona and look of the original Fab 4. The court found that the impersonators’ use of the mark, The Beatles, in their name, and their use of the composition of the famous album cover in their marketing materials, was likely to create confusion for consumers. The court therefore issue an order containing prohibitions on using of the names “John,” “Paul,” “George,” and/or “Ringo” in advertisements, using their likenesses in advertisements, or using their famous mark, “The Beatles” in advertisements. The prohibition, the use of the mark, was extended to apply to the live performances, or stage name, of the impersonators. The band subsequently changed its named to “1964 the Tribute” and has gone on to moderate success.

The Tennessee court relied heavily on a New York case involving Jackie Onassis and Christian Dior.  Jacqueline Kennedy Onassis v Christian Dior, 472 N.Y.S.2d 254 (1984). The latter had used an impersonator of Onassis for a print advertisement. In the ruling the court stated:

We are dealing here with actuality and appearance, where illusion often heightens reality and all is not quite what it seems. Is the illusionist to be free to step aside, having reaped the benefits of his creation, and permitted to disclaim the very impression he sought to create? If we were to permit it, we would be sanctioning an obvious loophole to evade the statute. The essential purpose of the statute must be carried out by giving it a common sense reading which bars easy evasion.

The court found that the designer had violated Ms. Onassis’ right of privacy under the New York right of publicity statute

So, what is the bottom line for Sarah Palin. Once she successful obtains the registration of her marks, will she be able to prevent Ms. Lyons and her ilk to stop using her persona and her name? Again I say, maybe yes, maybe no. She will most certainly be able to prevent others from benefiting commercially from the use of her trademark and service mark in connection with her specified goods and services. But there is one more factor that may come into play with regard to Ms. Palin. In America, we uphold certain Constitutional principles to be paramount to property monopolies, particularly those of the intellectual types, such as copyright, trademark and, last but not least, rights of publicity. The First Amendment’s guarantee of freedom of speech and the Copyright concept of “fair use” come to mind immediately.

Sarah Palin is more than just a celebrity, she is a politician. Ms. Lyon is more than just an impersonator, she is a political humorist. Therefore, in the event that Ms. Palin ends up suing Ms. Lyon in an effort to enforce her newly obtained trademarks, she may very well have to overcome the defenses fair use and freedom of speech. Ms. Lyons has a constitutional right to imitate Ms. Palin in an effort to “comment upon” the state of politics in this country. However, her website, wisely, does not address politics or political issues, it merely offers her services as a humorist – notably a different service from that marked by Ms. Palin. Her URL is “,” while Ms. Gilbert’s URL is “,” arguably not likely to confuse anyone into thinking these are associated with the real Ms. Palin – in fact, they arguable connote the opposite! So it will be unlikely that the real Sarah Palin will be able to prevent their usage of her name in that context.

But this is where it gets interesting. Reread the New York court’s comment above, and you will struck with its concept that an impersonator should not be allowed to create “an obvious loophole to evade the statute.” Exactly what will Ms. Palin be able to prevent. Do the images of Lyons and Gilbert that appear on their respective websites fall into the same category as the Onassis image and the Beatles cover art? The final answer is that it probably depends on the court and, ultimately, upon which law applies. Some states have more expansive rights of privacy and trademark protections. This will certainly be an interesting case to follow as it winds its ways through the courts.

Guest co-author, Ashley Trout, is a sophomore at Belmont University’s Mike Curb School of Music with an emphasis in music business.  Ashley graduated Freeburg Community High School (Illinois) in 2009.  She prepared the original draft of this article as part of an assignment for Mr. Shrum’s Copyright Law class.   She enjoys all things Disney and Harry Potter!

Get 50% off your first 3 months at![/fusion_builder_column][/fusion_builder_row][/fusion_builder_container]

Editors Note:  The following is a research paper from one of the students in my Entertainment Law & Licensing class I teach at Belmont University’s Curb School of Music.


tivo_logo_man-744939-790582 On July 30, 1998 Tivo Inc. registered a patent for their multimedia time warping system that allows a user to store selected television programs while simultaneously watching or reviewing another program. They patented their process for making this then phenomenon so as to protect their discovery and to become the exclusive financial beneficiaries of this technology. In 1999 it was announced by Dish Network that along with their affiliate Echostar would soon have the time shifting abilities that Tivo was spearheading. This was the warning sign of what would end up being years of court battles between Tivo and the Echostar-Dish Network team.

Tivo filed suit for patent infringement in January of 2004, once they realized that the patent they obtained was being violated, to seek financial retribution and an injunction against Echostar to halt the production of infringing DVR systems that they were producing. Tivo alleged that Echostar was infringing two software claims, “The process for the simultaneous storage and play back of multimedia data, and the apparatus as well” (Tivo v. Echostar, 2). In addition to the software claims, Tivo asserted that Echostar was violating their hardware patent as well.

The suit was first filed with the United States District Court for the Eastern District of Texas. The court found Echostar to be in violation of both claims by Tivo. The judge issued a permanent injunction against EchoStar ordering them:

(1) to stop making, using, offering to sell, and selling the receivers that had been found infringing by the jury and (2) to disable the DVR functionality in existing receivers, with the exception of select receivers that had already been placed with its subscribers”

(Tivo v. Echostar, 3). In addition, the court awarded Tivo $74 million in lost profits.

echostar-to-dish At that time, Echostar did not appeal the permanent injunction imposed by the court, but it also did not discontinue providing the DVR service. In response, Tivo requested that the district court hold Echostar in contempt. Echostar claimed that it redesigned its product so that it was not infringing any longer.

The district court evaluated EchoStar’s modifications to the infringing DVR software and concluded that the modifications were also infringing. The court concluded

Even if EchoStar had achieved a non-infringing design-around, EchoStar would still be in contempt because it had failed to comply with the disablement provision in the district court’s order requiring it to disable DVR technology completely from the receivers

(Tivo v. Echostar, 4-5).

Dish and EchoStar had argued that it was entitled to a trial to determine if its altered products infringe the patent. The company said it “paid 15 engineers to spend 8,000 hours on the redesign, which took a year” (Decker and McQuillen). Tivo argued against this point saying that the changes made to their DVR players do not make a “colorable” difference.

The court agreed with Tivo stating,

We have made it clear that a lack of intent alone cannot save an infringer from a finding of contempt”

( Tivo v. Echostar, 12).

Echostar claimed that the injunction was unclear, but Tivo claimed the opposite and the record of the court reflected the clarity of the injunction. Also important to note is that the DVR’s time warping software was the only aspect of the boxes required to be disabled; not all of the actual units and hardware, the DVR functionality is just one of many functions that the Echostar Broadcom and 50X receivers performed. Since Echostar never directly appealed the injunction it was judged as a lost cause for them and the court fined them nearly $90 million and amended the previous injunction requiring EchoStar to seek the court’s approval before implementing future DVR software.

The final decision by the Federal Court of Appeals was to uphold the decision made by the district court in a divided 2-1 decision. TiVo said it will be entitled to a total of about $300 million in damages and contempt sanctions through July 1, 2009, and it will seek additional cash for continued infringement after that date. That’s in addition to $100 million Dish paid TiVo after the original appeals court ruling (Decker and McQuillen). While it is a victory for Tivo, they only got a portion of the $1 billion they were seeking.

This case made a huge impact on the DVR industry as well as Tivo’s stock, which skyrocketed following the May 4th decision by the federal court. Tony Wible, an analyst with Janney Montgomery Scott LLC in Philadelphia, wrote in a note today. “The courts have ruled in TiVo’s favor numerous times over the past five years, which should help the company in the company’s litigation against AT&T, Verizon and Microsoft” (Decker and McQuillen).

It is a good that courts are protecting intellectual properties such as Tivo’s patent in this case, so as to discourage the stealing of ideas and encourage the promotion of innovative thinking. The court’s decision to find EchoStar in violation was a good decision, as Tivo should be the sole beneficiaries of their intellectual property, i.e., the patent.

To play devil’s advocate, however, such decision does stifle competition in the industry, namely, EchoStar was the only true competing DVR provider with any clout.  Generally speaking, it is not good to promote a monopolist environment in any industry. This is essentially the state of the DVR industry until Tivo’s patent expires in 2018.

This decision confirms the principal that the twenty years of exclusive ownership granted by patent law is a positive thing—without that right someone could easily profit off of another’s innovation and inventive nature.  It is reassuring to see that judges like those in this case are still interested in the protection of important intellectual discoveries such as Tivo’s time warping technology. It also also reinforces the fact that courts will enforce their injunctions against parties and do not take it lightly when a defendant tries to skirt the injunction or slyly work around it. EchoStar’s was penalized an extra $90 million because they tried to do things their own way and work around the court.

These proceedings took over five years, but Tivo still has many legal proceedings ahead of them, probably enough to last the entirety of their patent ownership and beyond! Nonetheless, the EchoStar decision is the most positive sign that Tivo could have received in the midst of the myriad of legal battles they are still facing. This case proves that if one want to protect valuable ideas and me
thods they had better be ready to fight tooth and nail in the court system for years on end—luckily the reward can be great.

Works Cited

Tivo v. Echostar. No. 2009-1374. U.S. Court of Appeals for the Federal Circuit. 4 March 2010.

Decker, Susan, and William McQuillen. “TiVo Wins Court Ruling Against Dish, EchoStar (Update4).” Ed. David E. Rovella. Bloomberg, 4 Mar. 2010. Web. 11 Apr. 2010.

gg Grant Guinane is a recent graduate of Belmont University.  He obtained a B.A. in Entertainment Industry Studies with a focus in writing and music, as well as a minor in marketing.  Originally from St. Joseph, Michigan, Grant came to Nashville to pursue music.  He currently lives in Detroit, Michigan.

One question clients often asked me is whether an idea can be protected.  The question frequently arises when a client has an idea for a screenplay, or an outline for a story, or a unique title for a song or book, and wishes to submit or  “pitching” that idea to a major movie house, publisher or record company.  While it is fairly common knowledge that an “idea” cannot be copyrighted, it is important to know that there may be certain types of protection be available for the intellectual properties contained in such a proposal pursuant to current laws, specifically trademark and copyright laws.  This article analyzes and summarizes your rights under each of these two areas of law and offers suggestions for protecting your legal rights when “pitching” ideas.

Protection Under Trademark Law

Titles and names may be entitled to trademark protection at both the state and federal levels by anyone claiming a right to use such a title or name in connection with certain specified trades or services.   These types of marks are commonly designated by use of the “™” and “®” symbols, indicating respectively that registration of the mark has been applied for and registered on the Primary Register.  To be entitled to use these symbols in respect to a mark, a person must apply for and receive a federal or state trademark.

In most states, a state trademark can be applied for in the Secretary of State’s office.  The application is a simple form and payment of a nominal fee is required.  Protection at the state level is, however, somewhat more geographically limited than that of a federal mark.  The application process for a federal mark is much more tedious, complicated and costly than that of the state trademark process.  In addition to legal fees which will, most likely, be incurred, the application fee for each international classification of goods and services is $325.

Protection Under Copyright

As stated earlier, with regard to copyright law, and speaking very generally, an idea, in and of itself, is not entitled to copyright protection.  Rather, it is the expression of an idea that can be copyrighted.[1]

It is not always clear from the case precedents, however, when an idea becomes developed enough to rise to the level of an “expression.”  Some examples of expressions of ideas that have been protected are a screenplay similar to the old television series A-Team,[2] an employee survey regarding employee satisfaction,[3] and a particular section of categories appearing on a form for collecting baseball pitcher statistics.[4] On the other end of the spectrum, courts found that (1) a manual of operation for patented leaching system. [5] and (2) the addition and arrangement of facts to legal opinions [6] were not protectible expressions of ideas.  The only general rule that can seemingly be extracted from this convoluted line of cases is that the more an expression diverges from the mere recitation of raw facts, the closer it gets to expression, as that the courts legally recognize that term.

Is your Idea Literary or Business in Nature

There is another, albeit tangential issue which is relevant and should be briefly discussed here, i.e., whether an idea is literary or business in nature:

Literary ideas are those that, upon development, would become literary property and hence clearly eligible for copyright protection.  Literary ideas include ideas for motion pictures,[7] radio programs,[8] and television programs.,[9]

Business ideas, on the other hand, even when fully developed, may not be copyrightable. ,[10] Business ideas are those that relate to methods of conducting businesses, such as bank night in theaters,[11]contests, [12]and credit rating systems.[13] Here again, however, the more an idea, even a business idea, departs from mere factual recitation, the more it is likely to be considered literary, and therefore entitled to protection under copyright law.

When does an idea rise to the level of expression?

So, let’s now return to the primary issue of when an idea rises to the level of an expression entitled to copyright protection?

In their attempts to deal with the dilemma, courts have created a body of case law which attempts to strike a middle ground between the comprehensive protection of copyright on the one hand, and the complete denial of any legal protection for ideas on the other.  I will attempt to delineate and evaluate some of the legal theories on which a person may be able to rely to render an idea legally protectible, the underlying tort theory of which is known in legal circles as “idea misappropriation.”

In brief, the elements for a claim of idea misappropriation are, first, the idea must be novel and concrete, and, second, there must be a legal relationship between the parties, whether by an express contract, a contract implied-in-fact, a quasi-contract, or a fiduciary relationship.[14]

Novel & Concrete Element

In instances where they have dealt with the protectibility of an idea, the courts hold the plaintiff to a greater burden of proving not merely that the idea is original (as in copyright protection) but that it is actually novel,[15] i.e., “not formerly known; of a new kind.”[16] This standard is, for most courts, a great standard to meet than that required by copyright, i.e., that a work be original – although some courts do confusingly use the terms interchangably.

The second component of the first prong, “concreteness,” in essence requires that an idea be sufficiently developed so as to constitute “property.”  By its very nature, this requirement is intentionally vague, allowing the courts great flexability in applying it.  One court described the concept as follows

while we recognize that an abstract idea as such may not be the subject of a property right, yet when it takes upon itself the concrete form which we find in the instant case, it is our opinion that it then becomes a property right subject to sale.[17]

This is, as pointed out, a rather vague element.  This is sort of like how U.S. Justice Potter Stewart described hard-core pornography in Jacobellis v. Ohio, i.e., it’s difficult to define, but “I know it when I see it.” So, in short, the more developed an idea becomes, the further it goes toward dispelling any doubt as to whether the idea is “concrete.”

Legal Relationship Requirement

The second prong of the test, i.e., the legal relations prong,  can complicate matters when it comes to submitting an idea to a third party.  Whether a legal relationship exists between the parties depends, as does everything in law, on countless fact scenarios to the degree that one small change in a fact pattern can affect the outcome of interpretation.

Most often, clients “pitch” their ideas to a third parties for consideration in hopes that they will take the idea and “run with it.”  But in such instances, it is important to be aware that the method by which an idea is submitted can directly impact whether or not there is a legal relationship.

A non-disclosure and confidentiality agreement with a publisher, for example, would create such a relationship beyond any doubt.  This is one end of the spectrum.  This method can easily be dispensed with since it is difficult enough to get a publisher’s attention, for example, much less without the added complexity of having to get their legal department involved. Most people will likely submit the idea directly to a publisher, either with or without permission, without any such NDA, or they will submit the idea through an agent of some sort.  Each of these variations result in different treatment.

For example, courts have held that if an idea is submitted without solicitation and without advance warning, the idea is not protectible, even if it later turns out to be valuable.[18] There is one variation of this fact pattern, however, where one might successfully argue that an implied contract results because of an implied solicitation by the idea recipient. This occurs where the recipient is engaged in a trade or industry (such as the entertainment or publishing industry) that, by custom, purchases ideas of the type submitted. A book or music publisher, as an idea recipient, makes a continuing offer to pay for any submitted ideas that it elects to use. Thus, an unsolicited submission is not an offer that necessarily requires further conduct by the publisher to establish an acceptance, but rather can be viewed as an acceptance of the publisher’s implied continuing offer. Although no court has expressly recognized this theory, courts have implicitly adopted it by recognizing an implied agreement based upon custom where such a factual pattern can be established.[20] I caution in advance, however, that this is a minority opinion, not expressed by the majority of courts.

Some courts, particularly but not exclusively those in California, imply an affirmative duty on the part of a publisher to reject an unsolicited submission or else the legal relationship is created – hence the practice of most publishers to advertise “no unsolicited submissions.”  Under this so-called “failure to reject” theory, any means of notice that gives the publisher some sort of advance warning of, and an opportunity to prevent, a proposed idea submission is sufficient to establish an implied contract if the recipient then permits the submission to be made.

Thus, the following examples may create such an affirmative obligation on the part of the publisher: (1) enclosing the proposed idea in a sealed envelope accompanying an unsolicited transmittal letter that explains that the contents of the sealed envelope contains such a submission, or (2) a series of two unsolicited letters, the first explaining the intended submission and the second in fact containing the idea to be submitted. [20]

If a publisher specifically requests the submission of an idea, a legal relationship is clearly established creating an obligation to pay the creator if the idea submitted is used. [21] So finding a creative way to solicit a request from a publisher is also a very good means of securing protection for you idea.

Finally, it may come as no surprise that utilizing the services of a agent will help protect your ideas.  It may be inferred that the recipient of an idea submission has knowledge of an expectation of payment for the idea when the submission is arranged by a person whose known occupation is that of representing idea purveyors, such as a book or movie agent. “This fact alone must have indicated to [the recipient of an idea submission] that the persons whom the agent brought together with him were not social callers.” Donahue v. Ziv Television Programs, Inc. 54 Cal. Rptr. 130, 138 (Cal. App. 1966).


As you can clearly see, the question of whether an idea can be protected is not an easy one to answer in any specific situation because the answer depends so heavily on the individual fact pattern of each case.  Although it may not be apparent from its length, this article in no way exhausts the body of legal information and case law that exists with regard to the protectible nature of an idea.   Therefore, if you have questions concerning this issue, please contact a respected entertainment attorney.

Having stated this, with regard to submission of ideas in general, the following are recommendations that can be followed:

(1)    First, trademark all slogans, titles or name, at the very least your state level, but preferably at the federal level;

(2)    Make sure the idea is as fleshed out as it can be, i.e. as “concrete” as possible.  Rather than a mere outline, insert summaries of each bullet point.  Then, flesh out selected points, e.g., create a summary of each chapter of a particular example book, or maybe even two or more examples of each.  Then, create a few complete chapters of a books, for example;

(3)    Mark everything confidential and, in addition to the copyright notice generally included, add the phrase “All rights reserved” after it.  The copyright notice and your intent to be the owner of the copyright should be clearly indicated in the beginning of the correspondence;

(4)    Attempt to procure an agent, and ask if the agent is willing to enter into a non-compete and confidentiality agreement;

(5)    As an alternative to paragraph (4), solicit the publishers by telephone or in some other general fashion, preferably with written followup, to encourage them to “solicit” the work in advance; and

(6)    As an alternative to paragraphs (4) and (5), place your idea submission in an envelope, draft a summary cover letter explaining that this is the submission of a copyrighted idea and that by opening the envelope, they are agreeing to the confidentiality and non-disclosure of the submission and further, agree to pay for it if they decide to use it.

While these ideas may not be “iron-clad,” they will go a long way toward establishing the necessary elements of an idea misappropriation claim.

[1] 17 U.S.C. §  102(b) . See e.g., Holmes v. Hurst, 174 U.S. 82 (1899); Kalem Co. v. Harper Bros., 222 U.S. 55 (1911) ; Dymow v. Bolton, 11 F.2d 690 (2d Cir. 1926) ; Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930) ; Dellar v. Samuel Goldwyn, Inc., 150 F.2d 612 (2d Cir. 1945) ; Gaye v. Gillis, 167 F. Supp. 416 (D.C. Mass. 1958 ). This was also the rule under common law copyright. Fendler v. Morosco, 253 N.Y. 281, 171 N.E. 56 (1930) ; Weitzenkorn v. Lesser, 40 Cal.2d 778, 256 P.2d 947 (1953) ; Desny v. Wilder, 46 Cal.2d 715, 299 P.2d 257 (1956) ; Ware v. Columbia Broadcasting Sys., Inc., 61 Cal. Rptr. 590, 155 U.S.P.Q. 413 (Cal. App. 1967).[Back]

[2]Ernest Olson, V. National Broadcasting Company, Inc., 855 F.2d 1446 (9th Cir. 1988).[Back]

[3]Gallup, Inc. V. Talentpoint, Inc., 2001 U.S. Dist. LEXIS 18560; 61 U.S.P.Q.2D (BNA) 1394 (M.D. PA. 2001).[Back]

[4]George L. Kregos v. Associated Press and Sports Features Syndicate, Inc., 937 F.2d 700; 1991 U.S. App. Lexis 12113; 19 USPQ2d (BNA) 1161; Copy. L. Rep. (Cch) P26,744 (Ct. App. 2nd Cir. 1991).[Back]

[5]Presby Construction, Inc., v. Normand Clavet, et al, 2001 DNH 210; 2001 U.S. Dist. LEXIS 20951; 61 U.S.P.Q.2D (BNA) 1184 (Dist. NH 2001).[Back]

[6]Matthew Bender & Company, Inc., et al v. West Publishing Co. et al, 158 F.3d 674; 1998 U.S. App. LEXIS 30790; 48 U.S.P.Q.2D (BNA) 1560 (App. Ct. 2nd Cir 1998). [Back]

[7]Desny v. Wilder, 46 Cal.2d 715, 299 P.2d 257 (1956).[Back]

[8]Stanley v. Columbia Broadcasting Sys., 35 Cal.2d 653, 221 P.2d 73 (1950).[Back]

[9]Stone v. Goodson, 8 N.Y.2d 8,200 N.Y.S.2d 627 (1960).[Back]

[10]This exclusion also applies to scientific ideas.[Back]

[11]Affiliated Enterprises, Inc. v. Gruber, 86 F.2d 958 (1st Cir. 1936).[Back]

[12]Lewis v. Kroger, 109 F. Supp. 484 (S.D. W.Va. 1952).[Back]

[13]Burnell v. Chown, 69 Fed. 993 (N.D. Ohio 1895).[Back]

[14]See Kienzle v. Capital Cities/American Broadcasting Co., Inc. , 774 F. Supp. 432, 436 n.8, 438 n.13 (E.D. Mich. 1991) (Treatise cited). McGhan v. Ebersol, 608 F. Supp. 277, 284 (S.D.N.Y. 1985) (New York law). [Back]

[15] Noble v. Columbia Broadcasting Sys., 270 F.2d 938 (D.C. Cir. 1959) ; Santilli v. Philip Morris & Co., 283 F.2d 6 (2d Cir. 1960) ; Stevens v. Continental Can Co., Inc., 308 F.2d 100 (6th Cir. 1962) ; Pittman v. American Greeting Corp., 619 F. Supp. 939 (W. D. Ky. 1985) ; Downey v. General Foods Corp., 31 N.Y.2d 56, 286 N.E.2d 257 (1972) (no promise to pay for an idea will be implied or enforced if the idea is not both novel and original).[Back]

[16]Webster’s New Int’l Dictionary (2d ed.) 1670.[Back]

[17]Williamson v. N.Y. Central R.R., 16 N.Y.S.2d 217, 258 App. Div. 226 (1939) ; Bailey v. Haberle-Congress Brewing Co., 193 Misc. 723, 85 N.Y.S.2d 51 (1948 ) ; Masline v. New York, New Haven and Hartford R.R., 95 Conn. 702, 112 Atl. 639 (1921) ; contra Brunner v. Stix, 352 Mo. 1225, 181 S.W.2d 643 (1944).

[18] Giangrasso v. CBS, Inc., 534 F. Supp. 472 (E.D.N.Y. 1982) ; Curtis v. United States, 168 F. Supp. 213 (Ct. Cl. 1958), cert. denied, 361 U.S. 843 (1959) ; see Borden & Barton Enters. v. Warner Bros., 99 Cal. App. 2d 760, 222 P.2d 463 (1950) ; Donahue v. Ziv Television Programs, Inc., 54 Cal. Rptr. 130 (Cal. App. 1966) ; Official Airlines Schedule Info. Serv., Inc. v. Eastern Air Lines, Inc., 333 F.2d 672, 674 (5th Cir. 1964) (concurring opinion); Sterner v. Hearst Corp., 144 U.S.P.Q. 237 (N.Y. Sup. Ct. 1964) .[Back]

[19]Desny v. Wilder, 46 Cal. 2d 715, 739, 299 P.2d 257, 270 (1956) ; Aliotti v. R. Dakin & Co., 831 F.2d 898, 903 (9th Cir. 1987).[Back]

[20] Cole v. Lord, 262 A.D. 116, 28 N.Y.S.2d 404 (1st Dep’t 1941) ; Kurlan v. Columbia Broadcasting Sys., 40 Cal. 2d 799, 256 P.2d 962 (1953) ; Vantage Point, Inc. v. Parker Bros., Inc., 529 F. Supp. 1204 (E.D.N.Y. 1981) (Treatise cited), aff’d mem., 697 F.2d 301 (2d Cir. 1982); Bevan v. Columbia Broadcasting Sys., Inc., 329 F. Supp. 601 (S.D.N.Y. 1971) (Treatise cited); cf. McGhan v. Ebersol, 608 F. Supp. 277, 285 (S.D.N.Y. 1985) (New York law); Bailey v. Haberle Congress Brewing Co., 193 Misc. 723, 85 N.Y.S.2d 51 (Mun. Ct. 1948).[Back]

[21] See, e.g., Whitfield v. Lear, 751 F.2d 90 (2d Cir.) , where in advance of submission, plaintiff sent a mailgram to defendants advising that a submission was being sent.[Back]

 By James H. Harris III*

JimMore than just occasionally, entertainers adopt stage names. They do so because they believe the new name will add a luster and specific identity to their careers. Thus, Harold S. Jenkins became Conway Twitty.

A stage name, of course, is a type of mark that an entertainer uses to identify himself or herself as a business enterprise. In most states, including Tennessee, a mark, in general, includes any trademark or service mark entitled to registration under the applicable state trademark act, regardless of whether the mark is actually registered.

A trademark in Tennessee is “…any word, name, symbol, or device, or any combination thereof, adopted and used by a person to identify goods made or sold by the person and to distinguish them from goods made or sold by others.” A service mark is similar to a trademark, but it is “a mark used in the sale and advertising of services of one person to distinguish them from the services of others.”

Finally, there is a trade name. “Trade name” means a word, name, symbol, device, or any combination thereof, used by a person to identify the person’s business, vocation, or occupation and distinguish it from the business, vocation, or occupation of others.

As can be seen from these definitions, the terms are inclusive rather than exclusive. A service mark differs from a trademark in that it identifies services rather than goods. A service mark or trademark can also be a trade name.

Common law protects the rights of the owners and users of unregistered trade names. In Tennessee, the law specifically provides that “Nothing in this part shall adversely affect the rights or the enforcement of rights in marks acquired in good faith at any time at common law.” A trade name is entitled to the same protection as a trademark or a service mark. For all practical purposes, the legal principles governing trademarks and trade names are virtually identical.

Personal Names In Trade Names

A trade name which consists of a personal name (first name, surname, or both) is entitled to legal protection when it attains secondary meaning. For example, a department store called The Harris Company acquires a secondary identification in the minds of the consuming public by the owner’s initial appropriation of the name and his continual use of the name in connection with the business enterprise of the store.

Because there may be thousands of persons with the same name, be it first name or surname, such names are not considered to be inherently distinctive trademarks. The work Harris used as a trademark or as part of a trade name would probably signify to the public only that someone of this name was connected with the business. However, when the requisite degree of notoriety attaches, as in the case of Ford for automobiles, the use of Harris becomes part of the trade name and the courts are likely to award some form of injunctive relief against a latecomer – one with the same name – who adopts the same or a confusingly similar name as a trademark or as part of a trade name.

When that happens, even though there be thousands of Harrises in the immediate area, only one has the right to use the name The Harris Company. All others who adopt the name or a confusingly similar one are infringers.

There is, of course, the romantic, ruggedly individualistic notion that an individual possesses some type of legal right to use his or her personal name as a trademark or service mark. A person frequently feels that “It’s my name and I can use it as I choose.” This influence, which is not present where other types of marks are involved, led the courts in early decisions to characterize the right to use one’s name in business as a “sacred” or “absolute” right. No such right has ever been thought to exist with respect to other kinds of marks, such as slogans or designs.

The United States Supreme Court in 1905, upholding the defendant’s right to use the name “Remington” as part of a corporate name, stated that “…[I]n the absence of contract, fraud or estoppel, any man may use his own name, in all legitimate ways, and as the whole or a part of a corporate name.”

This view quickly died. The Supreme Court began to uphold qualified injunctive relief in a number of surname cases, and it ultimately modified its earlier view. Referring specifically to the Remington case, the Court in 1914 shifted from favoring the interest of the alleged infringer to favoring the interest of the public:

But, whatever generality of expression there may have been in the earlier cases, it is now established that when the use of his own name upon his goods by a later competitor will and does lead the public to understand that those goods are the product of a concern already established and well known under that name, and when the profit of the confusion is known to and, if that be material, is intended by the later man, the law will require him to take reasonable precautions to prevent the mistake ….

LE. Waterman Co. v. Modern Pen Co., 235 U.S. 88, 35 S. Ct. 91, 59 L. Ed. 142 (1914).

The public interest is now generally regarded as outweighing whatever interest an individual might have in using his own name. For this reason, courts more recently have viewed personal name trademarks as being no different from any other. The Fifth Circuit stated:

… [A] man has no absolute right to use his own name, even honestly, as the name of his merchandise or his business. As such it becomes a trade name or service mark subject to the rule of priority in order to prevent deception of the public.

John R. Thompson Co. v. Holloway, 366 F. 2d 108 (1966).

Tennessee’s Personal Name Cases

The granddaddy of all name cases in Tennessee is M.M. Newcomer Co. v. Newcomer’s New Store, 217 S.W. 822 (1917). Shortly after the close of World War I, Mr. Newcomer left one corporation and started another. As the style of the case suggests, both businesses used Mr. Newcomer’s personal name in their trade names. The Supreme Court stated its findings in the leisurely language of the time:

It further appears that, notwithstanding the great confusion growing out of the similarity of the names of the two corporations, and the efforts of the complainant to prevent this confusion, the defendant persisted in retaining the name “Newcomer” in connection with its business, which fact, we think, showed a clear intention on its part to benefit by the extensive previous advertisement for a long period of years of said name in connection with the business of complainant. If this were not the intention and purpose of the defendant, then all of the confusion which has resulted to both complainant and the defendant could have been easily avoided by the defendant adopting a corporate name without the association of the name

“Newcomer” therewith. Id. at 824

It then confirmed the two lower courts’’ holdings that

… the persistent use by the defendant of the name “Newcomer” in connection with its business was for the purpose of misleading the public and inducing complainant’s customers to patronize the defendant under the belief that they were patronizing the complainant.

Id. at 825

From the court’s analysis came the rule:

The extent to which an individual may use his own name is not unlimited. He cannot resort to any artifice or contrivance intended to delude the public as to the identity of his business or products….

A man must use his own name honestly and not as a means of pirating upon the good will and representation of a rival by passing off his goods or business as the goods or business of his rival who gave the name its reputation and value. No one will be permitted to use even his own name with the fraudulent intention of appropriating the good will of a business established and built up by another person of the same name.


The court emphasized that this principle was not a strained or overly-philosophical legal conceit. To the contrary,

The legal principles which are controlling here are simply the principles of old-fashioned honesty. One man may not reap where another has sown nor gather where another has strewn.

Id. at 825. [Citations Omitted].

All Tennessee cases on uses of trade names after Newcomer have reaffirmed these principles. Despite the consistency of the courts’ opinions, however, there is still in Tennessee a nod to a bygone day. In a case called Kay Jewelry of Chattanooga v. Morris et al., the Court of Appeals in the Eastern Division recognized in 1943 the “general right of a natural person to use his family name in conducting business ….” This general right is subject to all of the limitations described above, however, so the apparent respect for a person’s name may be less than it appears from the court’s simple statement of the perceived right.

The better view, in my opinion, is that, in this day of mass and immediate marketing, a personal name is really of no greater importance, nor is it entitled to any more sanctity, than any other mark. After all, none of us has earned our names; we simply received them at birth. If we wish to add value to our name, we should be required to associate the name with a particular activity or goods, and further, to use our name only in a way that shows respect for all other existing trade names.

James H. Harris III has been my partner for over ten years.  He is a member of the professional association of Harris, Martin, Jones Shrum, Bradford & Wommack.  A 1967 graduate of Vanderbilt Law School, he has practiced on Music Row since 1975.  Mr. Harris is also a member and former trustee of the Copyright Society of the United States.