Tuesday, December 16, 2014

Legal Geek No. 30: Beware the Promiscuous Licensor

This is the latest installment in a series of "Legal Geek" articles and audio segments regarding current events and trends where the geek world crosses streams with legal land.  An audio version will appear on the Current Geek podcast, available for direct download here.


Welcome back to Legal Geek! 

This week, we take a look at so-called promiscuous licensors, and what trademark owners can do to protect themselves from losing their IP rights by being labeled as promiscuous.

(Furtado has a record called "Promiscuous" and is also a likely licensor, but not exactly what we are referring to here)
A Michigan court hit the legal news cycle in September for deciding a trademark case based on the well-established doctrine that so-called naked licensing by a trademark owner can destroy the right to protect that trademark. "Naked licensing" is understood to mean the situation where a trademark owner licenses the rights to use the trademark to another party without exerting some control over the quality of goods and the use of the mark by the third party. 

This practice is disfavored in trademark law because trademarks are protected for the primary purpose of avoiding consumer confusion, by properly identifying the source of well known trademarked goods. It logically follows that if a company allows others to use the trademark without exerting any real quality control over the use of that mark, then the line blurs for consumers about where the source of goods bearing that trademark is located. That makes the trademark not really identify the true source anymore, which undermines the primary reason we protect trademarks in the first place.

Returning to the Michigan case, a company called Movie Mania was suing to stop a rental service competitor from using the trademark, but the court discovered that Movie Mania had licensed the rights to use that trademark in many agreements since 1996 without any quality control provisions in the license agreements. Thus, these naked licenses ruined any trademark rights Movie Mania had to its own company name, and the competitor won the case and the right to continue using the mark.

This naked licensing was deemed by the court to make Movie Mania a "promiscuous licensor," a cute play on words that helped this case become a bigger news item, but this language may help solidify this often overlooked trademark concept in the public eye. Trademarks are based on some sort of exclusive use, otherwise the mark would not indicate the source of goods for the consumer to avoid confusion, so being "promiscuous" or running around "naked" with your licenses to third parties can clearly undermine that intellectual property.

One of my regular duties in my day job as an attorney is to review publishing and distribution agreements for video and board game designers, as well as other creative types who license the rights to make and sell what is covered by their intellectual property, such as the game in the game design context. Almost every single time, the license granting language for the use of copyrighted and trademarked material contains no real provision for quality control.

This is very bad, as signing such an agreement could wreck one of the client's most important business assets, specifically the trademark rights!

So if you want to learn anything from my past and current clients, learn this: (1) there is no such thing as a form contract, especially when written poorly and one-sided, and (2) there is no reason to sign a license agreement with no quality control provisions for trademarks, as doing so jeopardizes the trademark rights that both parties want to use and exploit.

Bottom Line: just like most IP rights, trademark law has some quirks which can lead the uninformed to make bad decisions that could kill assets like trademarks when conducting regular business agreements. Be careful out there, as you don't want to end up being the next "naked and promiscuous" party we hear about in the legal news.

Do you have a question? Send it in!

Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy

Legal Geek No. 29: Will Spiderman Toy Dispute Overturn 50 Year Patent Law?

This is the latest installment in a series of "Legal Geek" articles and audio segments regarding current events and trends where the geek world crosses streams with legal land.  An audio version will appear on the Current Geek podcast, available for direct download here.


Welcome back to Legal Geek!

This week, we mix all of our favorite things for this holiday season: toys for Christmas, superheroes, and 50-year old patent law precedents at the Supreme Court. The Supreme Court granted cert this week to decide the Kimble vs. Marvel Entertainment case, which involves all of these awesome things.

Product Details
(A current version of the Web Blaster toy, still available for your kids)

In a 1964 patent case entitled Brulotte, the Supreme Court deemed that a patent licensee, who pays a patent owner royalties to be able to manufacture and sell goods covered by the patent, is absolved of any further duties after the patent expires following its normal 20 year term. In other words, for 50 years the law has been that a patent owner cannot continue to demand payment of royalties from licensees following expiration of a patent, because public policy dictates that the invention go into the public domain at that point.

That doctrine is now directly under fire thanks to complicated cases like the Kimble case the Supreme Court will hear in early 2015. Kimble received a patent in 1991 for gloves capable of shooting foam string from the palm, just like Spiderman. Or as Andrew Allen would put it...(insert theme music)

He approached Marvel with this idea and an oral agreement was reached that Marvel would not exploit this idea. However, in 1997, a Web Blaster toy which was exactly this type of Spiderman glove hit the market from Marvel. 

Kimble sued for patent infringement and breach of contract, and when he won on the contract claims but lost on the patent claims, the parties settled before appeal. This settlement led Marvel to buy out the patent and pay royalties on all future sales of this type of toy. Despite the patent expiring in 2010, the settlement agreement had no set termination date.

A new dispute over this settlement agreement led to another breach of contract lawsuit two years ago, and Marvel asked for declaratory judgment in view of the 50-year old Brulotte patent doctrine.  Basically, Marvel argued that the now-expired patent rights released Marvel of any further obligations to pay royalties.

The District Court and the Court of Appeals have ruled in favor of Marvel by using this 50-year old doctrine. The Supreme Court taking this issue means the status of the Brulotte doctrine is unclear, at best.  This hybrid contract and patent set of facts is the perfect type of case to determine whether expiration of patent rights trump any other contractual agreements to pay royalties for an idea.

Though it is clear that patented ideas should go into the public domain after 20 years to keep the patent system working as intended, it is not clear whether this need to put things in the public domain is so strong as to override private contractual agreements between two parties. To this end, Marvel had the opportunity to negotiate and write this settlement contract better than it did, so it's unclear why this party should now benefit from a rule intended to protect everyone else in the public.
It's unlikely we will see Justices Scalia and Ginsburg shooting webs at one another during oral argument, but the business makers and innovators in our nerd world will help determine just how far 50-year old patent law precedent can be applied. And there may not be enough spiderwebs available to hold together this seemingly overreaching patent doctrine, at least as it is currently applied. 

Bottom Line: I personally expect some minor changes to be implemented to this doctrine for special fact situations just like this where a contract likely should not be disturbed by a patent expiring. If nothing else, this is another fun and nerdy set of toys and facts to see the Supreme Court grapple with this term.

Finally, Apologies for the brief hiatus, thank you for those who sent kind words and segment requests over the past two weeks.


Do you have a question? Send it in!

Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy

Monday, December 15, 2014

Character Insight No. 124: Private Woods

This is the latest installment in a series of "Character Insight" articles regarding the rich history of characters in the Star Trek universe.  An audio version will appear on the This Week in Trek podcast, available for direct download here.

Welcome back to Character Insight! This week, we profile Private W. Woods, a recurring character in Enterprise.
 ("Just a regular grunt in the crowd, so to speak") 

Private Woods is assigned as one of the MACO, or military assault command operations officers aboard the Enterprise during the Delphic Expanse mission. As a military attache, he is often seen guarding various personnel and ship assets, as well as leading security on various away missions.

It is these trips off the ship where Woods makes some of his biggest impact. He is one of three MACO's chosen by Lieutenant Reed to join him on the assault of the Xindi weapon. Woods was one of the lucky few who survived this type of encounter. He also plays an important role during a firefight with a Skagaran colony of humans who mistake their own kind trying to make "first contact" with covert Skagaran operatives. Despite having few speaking lines in 21 appearances, he is clearly one of the most important military or security members on board the ship, as evidenced by his numerous appearances on the most dangerous missions. 

Despite being referred to as Private Woods on various occasions, one of the jumpsuits this character wore had a name tag N. Meyers, which is clearly incorrect. Of course, that's what happens when background characters are not critical to the stories being told, other than to stand in when the security is needed. 

Unlike the general tendency to have redshirts or security detail officers killed off frequently in The Original Series, Enterprise does a better job of having some key background players in the MACO's show up time and time again in these roles. Although space exploration is clearly dangerous, this appears to be more realistic than the constant redshirt deaths depicted in the later timeline of TOS. Private Woods, despite an unfortunate name, is one of the better developed truly background characters in Star Trek history, which is a type of background character which will hopefully be used again when Trek comes back to the television. 

Woods was played by Ricky Lomax, who was hired just as a background actor. However, he brings real-life military experience and credibility to the role having served for three years as a Bradley tank operator in the U.S. Army. He also has appeared in the movies Mr. and Mrs. Smith and Clueless along with a number of commercials for IBM, Miller Brewing Company, and Pepsi.


Feedback can be sent to me with future segment suggestions on Twitter @BuckeyeFitzy. Until next time, live long and prosper...

Monday, December 8, 2014

Character Insight No. 123: Ashmore

This is the latest installment in a series of "Character Insight" articles regarding the rich history of characters in the Star Trek universe.  An audio version will appear on the This Week in Trek podcast, available for direct download here.

Welcome back to Character Insight! This week, we profile Ensign Ashmore, a recurring background character from Voyager.
Ashmore, The killing game I.jpg
 ("This poor guy, always going through some hell even in a bad screenshot!") 

Ashmore is one of the faces in the crowd of Voyager, not receiving many speaking lines but appearing down corridors and serving in engineering on numerous occasions. He is often seen during crises in engineering being one of B'Elanna Torres's best assets in the department.

However, like many bit characters in Voyager, he also takes a fair share of abuse. His favorite food is macaroni and cheese, but when he asks Neelix to make it, the bacteria cultivated to make the cheese infects the ships Bio-neural gel packs. For those who don't speak technobabble, this is a fancy way of saying the mac and cheese almost ruined much of the food supply on board the rationing ship!

In other episodes, Ashmore is traumatized by an alien beacon causing horrific flashbacks of a slaughter of Nakan colonists, he attacks Neelix with a carving knife when under Bothan influence, and he gets into an altercation when Seven of Nine after she unexpectedly attacks a guest of the ship. It's not easy serving on the final frontier, even as a low level engineer. 

Ashmore is one of many crewmembers who receives letters from home when the Hirogen communications network is developed, so it is clear he has a big goal to get back home to that family. One of his regular expanded roles to help Voyager get back home is as a specilaist serving on the Delta Flyer, such as when Captain Janeway finally goes on a temporary shore leave with the Flyer. By the time Voyager returns home, he is serving as a background bridge officer, a fitting promotion for a good recurring character. 

He is mentioned multiple times in the first three seasons of the show, but he has all of his on-screen appearances from Seasons 4 through 7. Once again, this is the type of character that had to be developed for this show because new crew members could not come on every week. That said, we unfortunately don't learn much more about this family man due to limited speaking roles. This was a nice payoff role for a background actor who really paid his Star Trek dues over many years as a regular stand-in.

From the Killing Game
"We need an isolinear emitter form Engineering"

Ashmore was played by David Anderson, who is a regular background actor and body double in Star Trek. He appeared in bit roles in Star Trek VI and several TNG and Enterprise episodes, but his most notable work outside the Ashmore character was as a stand in for Levar Burton, Tim Russ, and Anthony Montgomery. He was mainly a professional dancer and he continues to teach dance performance in Hollywood today.


Feedback can be sent to me with future segment suggestions on Twitter @BuckeyeFitzy. Until next time, live long and prosper...

Notes for Common Room Appearance

I guest hosted on Common Room (Hadas/Sophrosune's podcast) on November 24, 2014. The topic was Interstellar and the renaissance of science fiction films in the last five years.

My focus points for good science fiction are good world building (including visuals), interesting and well-written stories, high quality character depth and development, solid science background and interesting technologies, and (if appropriate) bigger themes or underlying questions making a message

Here's the list of films and some notes I had from my reviews.







Guardians of the Galaxy




My Other References
Gravity -
Lucy -
Snowpiercer -
Edge of Tomorrow -
Star Trek -
Star Wars -
Hunger Games - just for note about dystopian future, what makes Interstellar so compelling.
The Walking Dead - again, just for a note about lazy storytelling and breaking the rules of the world set up

Show Notes

Common Room Special Episode
MONDAY November 24th, 2014
Invite: 9:15 PM  Start: 9:30 PM Eastern

Fitz (Dave), Hadas, Vanessa, Cindy

  • Introductions
  • Going to try something new and say “who is in our Common Room today?” or something like that.
    • H-
    • C -
    • V-
  • Entertainment Segment
    • Topical Dish: (Hadas) explain what it is
    • Please prepare a question to ask the other two hosts in order to make your topical dish a conversation starter.
      • D- Are you a Black Friday shopper, and if so, do you have any great war stories?
      • C-
      • V-
      • H-

    • Main Discussion: Sci Fi Film Renaissance, films from the last five years or so that brought something new to the table. We will focus mostly on original screenplays and mention outstanding adaptations.
          • Discussion Rundown:
          • Please add topics or questions to this section using your colors and we will do the rundown immediately before the episode.
            • World Building Analysis
              • Visuals
                • Oscar Worthy?
                  • Here we can talk about Gravity
              • Technology
              • Earth or Other?
              • Dystopia or Utopia?
              • Character Development
                • Tropes?
                • Role of Women
                • Realistic (Gravity/Sunshine/scene in The Core/Deep Impact)
              • Influence from past films/books

            • Final List of Films we will FOCUS on:
  1. WALL-E
  2. Her
  3. Moon
  4. Avatar
  5. Elysium
  6. Inception
  7. GotG
  8. Looper
  9. Sunshine
  10. Interstellar
            • Complete Film List
              • Recent New
                • Gravity
                • Lucy
                • Interstellar
                • Her
                • Avatar (2009)
                • Transcendence
                • Source Code (2011)
                • Moon (2009)
                • Elysium (2013)
                • Looper (2012)
                • Inception (2010)
              • Recent Adaptations
                • Edge of Tomorrow
                • Guardians of the Galaxy
                • Snowpiercer
                • Oblivion
                • Ender’s Game (Estee)
                • Limitless (2011)
              • Returning Adaptations
                • Star Trek
                • Star Wars
                • Godzilla
                • Pacific Rim
                • Planet of the Apes
                • Hunger Games (need to confirm why this is placed here)
                • Terminator (Terminator franchise - 1984, 1991, 2003, 2009)
                • Total Recall (1990, 2012)
              • Relatively Recent
                • District 9 (2009)
                • WALL-E (2008)
                • I, Robot (2004 - Adaption)
                • Sunshine (2007)  
                • Riddick (2000, 2004, 2013 franchise)
                • Prometheus (2012) (part of Alien franchise/prequel)
              • Older Sci-Fi
                • Alien (Alien franchise - Alien 1979, Aliens 1986, Aliens 3 1992, Aliens Resurrection 1997)
                • Dune (1984, 2000 mini series on SyFy)
                • Contact (1997)
                • Matrix (Matrix Trilogy 1999, 2003, 2003)
                • Metropolis (1927)

Common Room Questions

  • Obsessions (V)  We've reached the final segment: Obsessions, where we discuss what we've been obsessed with recently. Share your obsessions with us in the comments!

Please prepare a question to ask the other two hosts in order to make your Obsession a conversation starter.
    • V- Gossip Girl - I can’t believe I just said that. Out loud. The Sci-Fi Princess of Common Room is binge watching Gossip Girl.  This is all Netflix’s fault. But here I am on Season 5.  I love Dan & Blair. So ladies, did you watch the show?
    • D- Hearthstone, once again I’ve been totally hooked by a Blizzard game! At least this one is free to play and on iPad, definitely scratches the competitive itch and appears to be growing. (If TV is more appropriate, then Survivor Blood vs. Water and Utopia have been our recent guilty pleasures).
    • C-
    • H-

  • (H) Thank Dave/Fitz for being on the show. Plug his blog, podcasts, other projects
    • healertrek.blogspot.com (written versions of audio segments on This Week in Trek and Current Geek podcasts)
    • Talking10.com
    • @Buckeyefitzy on Twitter
    • Thanks! I amended the Sci Fi Month intro post too!

  • Contact (C) And that wraps up our show. If you'd like to contact us don't forget to follow @commonroompc on
  • H: FB,
  • V: Twitter,
  • C: Instagram
  • H: Pinterest,
  • V: and Tumblr
  • C: We have playlists on spotify and youtube
  • H: Please leave a comment on commonroompc.com
  • V: and don’t forget to rate, review, and subscribe on iTunes

  • Outros
    • I’m Vanessa
    • I’m Cindy
    • And I'm Hadas
      • Thanks for listening to Common Room!