Florida IP Trends

It has been about one year since the last update on the Outlaws lawsuit.  A lot has happened in that time, but I’m going to fast forward to April 6, which is the date that Judge Lazzara entered his order granting summary judgment to…  the DEFENDANTS!

My very first post concerning this case hinted that “the paperwork” would be the key to the case.  That was a reference to the license agreement that was attached to the Complaint and which allegedly gave the Defendants the right to use the OUTLAWS mark while touring.  The Court carefully inspected the license agreement and noticed some major problems with it.  One problem was that the license purported to be an “exclusive” license granting the Defendants the exclusive right to use the mark; but, in a different provision, the license said that the Licensees (Defendants) agree that they may not use the mark without prior written consent of the Owner (Plaintiff).  WHOOSH!  That’s the sound of the license agreement being sucked into a black hole of unenforceability.  A trademark licensor cannot grant an “exclusive” license to a licensee and then require that licensee to ask for written permission before using the trademark.  That’s not a license, and it results in “no mutuality of obligation,” meaning that the licensee has obligations under the contract but the licensor doesn’t.  It’s “illusory.”

Also, the license agreement (properly) contained provisions whereby the licensor (Plaintiff) could monitor the quality of the Defendants’ services under the mark.  This is necessary to prevent “naked licensing.”  Since the mark is still owned by the licensor, they have to make sure that the licensee is providing goods or services that live up to the quality of the trademark or risk abandoning or otherwise harming the mark.  The record in this case established that the licensor did not monitor the quality of the services being provided under the licensed mark, thus the license agreement was illusory.

It wasn’t just the license agreement that sunk the case for the Plaintiff, however.  The Order is filled with references to Mary Thomasson’s deposition.  That deposition provided extremely valuable information for the Defendants.  It revealed numerous problems with the transfer of the Outlaws intellectual property and the corporate structure used to control the intellectual property.  It’s a bit sad because a lot of the ownership problems seem to have occurred in the wake of Mr. Thomasson’s death.

This case is, at least for the Plaintiff, a painful reminder of the importance of properly assigning and licensing one’s intellectual property.

After spending pages and pages explaining how the OUTLAWS trademark was improperly assigned and licensed, the Court makes a poignant statement:  “The Licensee Defendants have not infringed Outlawlessness’ [Plaintiff's] ‘Outlaws’ trademark, to the extent it exists.” (emphasis added).  Ouch.  Mismanagement of the mark may have legally killed it.  (The Court makes an interesting finding that a “recording company” and “live musical performances” are not related for purposes of trademark infringement.  I think that’s debatable, especially with the facts in this case.  However, that issue really wouldn’t have mattered given all of the other problems with the mark.)

There were some other issues in the case that I haven’t addressed (i.e. copyright), but my focus in featuring this case has always been the trademark issues.

Here is a link to the Order.  It’s worth the read.

There has been a lot of interest in this case, so I figured I would give Florida IP Trends readers an early Christmas present by uploading recent documents from the case.

A hearing was held in Miami yesterday, and it appears that Mr. Link/Lang was not in attendance.  In his absence, the judge granted a temporary restraining order (TRO) which essentially kills Mr. Lang as played by Mr. Link.  Oddly, the Motion for Temporary Restraining Order is sealed, so I’m unable to see the arguments and affidavit from Steve Budin that resulted in the judge granting the TRO.  There is a hearing set for December 30th to show cause on why a preliminary injunction should not be ordered.  A preliminary injunction would essentially extend the TRO so that the same prohibitions are in place during the case (i.e. Mr. Link is prohibited from using the BRANDON LANG trademark).

CLICK for Temporary Restraining Order details.

Note that this is not the end of the case.  The merits of the case have not even been addressed.  All of the activity thus far has been trying to stop Mr. Link from portraying himself as Mr. Lang while the case progresses.  An Answer hasn’t even been filed.

So, it will take more time to solve mystery of who signed the “Brandon Lang” consent statement in the trademark application.  (Which, coincidentally, was signed 3 years ago this Sunday.)

This one is a real headscratcher.  I have to make an initial disclaimer before diving in – my firm is currently representing a defendant in an unrelated case brought by the same plaintiff in this case.  This post reflects my personal opinions and is not related to any issues in the case I’m working on with the firm.

With that said, Florida IP Trends presents:

Stevo Design, Inc. v. Brandon Link,  Case No. 1:2010cv24283 (SDFL December 1, 2010)

Complaint| Exhibit A |Exhibit B

Two for the Money

According to the complaint, “Stevo Design provides sports handicapping services. In general, handicapping is the practice of assigning advantage through scoring compensation or other advantage given to different contestants to equalize the chances of winning…Stevo Design operates over 7 internet-only sports handicapping brands, and services over 10,000 unique clients worldwide. This is accomplished online via pay-per-view sports analysis and selections, or what is commonly known as providing ‘Sports Picks’. Stevo Design employs more than 15 full-time sports handicapping professionals to analyze games and sporting events on a daily basis throughout the year and deliver their opinions and rated selections to clients.”

Several years ago, a movie was made about the world of sports handicappers. The film was called Two for the Money, and it starred Al Pacino, Matthew McConaughey, and Rene Russo.  One of the main characters was based on a Stevo handicapper named Brandon Link.  As far as I know, Brandon Link is Brandon’s real name.  However, in the movie, Mr. Link is named “Brandon Lang.”

Sensing marketing opportunities, Stevo submitted a service mark application to the U.S. Patent and Trademark Office (“USPTO”) for the mark “BRANDON LANG” for the following services: “Handicapping for sporting and other entertainment events.” The application was submitted March 15, 2007, and a registration ws issued on June 17, 2008.  The registration information may be viewed HERE.

It’s somewhat rare, but not unusual, for a living person’s full name to receive a trademark registration, but given the obvious boost in visibility that the movie would bring to Stevo’s services, it makes sense that Stevo would want to protect the Brandon Lang “brand.”  Following the success of the movie, Brandon Link continued offering his handicapping services under the Brandon Lang name.

As alleged in the complaint, at some point the relationship between Brandon and Stevo broke down.  The details are in the complaint, but ultimately, the parties decided to part ways.  They signed a separation agreement, and one of the counts in the complaint is based on Brandon’s alleged breach of that agreement.

The reason that the case is appearing on Florida IP Trends is because of the unique trademark infringement issue – specifically, infringement of the registered BRANDON LANG mark.  The infringement is allegedly based on Brandon’s use of the BRANDON LANG name in providing handicapping services and in the use of Brandon’s website, which is located at www.therealbrandonlang.com.  Stevo runs www.brandonlang.com.  [12/7/2010 UPDATE:  I noticed that one of the search terms used to hit Florida IP Trends was "brandon lang, website cancelled" so I checked out both sites.  It does appear that therealbrandonlang.com is currently down.  Perhaps settlement talks are underway.]

Brandon Link/Lang

Sharp readers are probably scratching their heads at this point.  That’s right, The case is Stevo Design v. Brandon Link.  Brandon Lang is a fictional character in a movie.  (I couldn’t find any fictional name/dba’s in the Florida Secretary of State records.)

So, doesn’t Stevo still have the right to prevent others from offering services under a trademark registration owned by Stevo?  Absolutely.  But here’s the problem.  In order to obtain a trademark registration for a personal name, the applicant must inform the USPTO if the mark does indeed identify a particular living individual, and if so, then that living individual must submit a signed consent statement indicating that he or she consents to their name being used in the trademark application.

As THIS document shows, on June 23, 2007, the USPTO Examining Attorney followed proper procedure by asking Stevo if Brandon Lang was a living individual, and if so, then a consent form was required.  If Brandon Lang was NOT a living individual, then Stevo was supposed to reply as such.

Responding three days past the six month deadline for a response, on December 26, 2007, Attorney Mark Jordan submitted a signed consent form from “Brandon Lang.”  You can view the form HERE (see page 3).

Say huh?  Sure as heck, on Christmas Day, 2007, one “Brandon Lang” signed his name to a form indicating that he consented to his name being used in the trademark application.

I’m no Columbo, but I had a hunch  Luckily, one of the exhibits to the Stevo v. Link complaint is the separation agreement signed by Brandon Link.  Let’s compare Mr. Link’s and Mr. Lang’s signatures:

Rut-ro.  I’m also no handwriting expert, buuuuuuut…..

So here’s the problem.  If there is no living individual named Brandon Lang, and Stevo (or the attorney handling the application) knowingly submitted a document that [cringing] falsely [/uncringing] represented that Mr. Lang does exist, then the entire trademark registration is at risk.  That means canceling the registration – or perhaps the registration would be void.  That means no trademark infringement as to the registration.

Stage names are registrable with the USPTO, but the “real” person should – or at least typically does – sign their real name on the consent form.  For example, Mario Lavandeira signed the consent form in the trademark application for his stage name, “Perez Hilton.”

This is a fascinating issue – a real person signs the name of a fictional character loosely based on his own persona in an attempt to register the fictional character’s full name as a trademark.

Ultimately, if the trademark registration is canceled, I think hindsight will show that a simple response to the Examining Attorney’s June 23, 2007 office action indicating that “Brandon Lang is a fictional character” and/or having Brandon Link sign his real name for the “Brandon Lang” pseudonym would have prevented this entire mess.

Wonder what the odds are?

Grabbing my popcorn…