A Box of Toys

Pretend you own a box of toys that contains:

• A baseball
• An Etch-A-Sketch®
• A Barbie® doll
• Some Lego® bricks
• A jump rope

I decide I want some of your toys. We write up a contract that says I get the baseball, the jump rope, the Barbie doll, and the Lego bricks. The contract says you get to keep the Etch-A-Sketch.

Many years later, we realize there was also a baseball mitt in the toy box that neither of us knew was there.

Who owns the baseball mitt? Me or you?

That’s what’s happening in the dispute between Miramax and Quentin Tarantino. They have a contract that says which Pulp Fiction stuff Tarantino kept and which he transferred to Miramax. Tarantino’s now selling NFTs relating to Pulp Fiction. The contract didn’t say anything about NFTs because NFTs didn’t exist.

Who gets the NFT rights?

It depends how you look at it.

Miramax says NFT rights are like copyright and the copyrights were transferred to Miramax, so Miramax owns the right to create and sell NFTs.

Toy box translation: The contract says Miramax got the baseball, so surely the mitt goes with it.

Tarantino says anything not specifically mentioned to be transferred stays with him.

Toy box translation: The contract didn’t say anything about a mitt, so it belongs to Tarantino.

This isn’t the first time this issue is being raised and it won’t be the last. How do you think the issue should be resolved?

Shout out to Cassandra G. for yet another great question.

Featured image credit: © 2019 NFT MCH+ used under Creative Commons Attribution-Share Alike 4.0 International license via Wikimedia Commons.

How NOT to Pick a New Trademark Part 2

16,670-word description of
goods and services

Cleveland baseball team: We’re going to announce our new team name before we know whether it’s available to use.

Facebook: Hold my beer.

The Cleveland baseball team blundered but can still use GUARDIANS as its new trademark just by buying rights from the GUARDIANS roller derby team.

Facebook faces quite a few more hurdles before it can use or register META.

Why?

Because Facebook is trying to register for so many different goods and services.

How many?

It took them 16,670 words to say it all.

Here are the problems I found in the first 3 minutes of searching the U.S. Trademark Office records:

• Five registrations for VR headsets owned by Meta Company. (Facebook’s application includes: “headsets . . . for engaging in virtual reality experiences”.)
• A registration owned by M37 Inc. for software for machine learning. (Facebook’s application includes “software for machine learning”.)
• A registration owned by Celia B. Banks and Rajiv Rishi for information in the field of marketing (Facebook’s application includes a variety of marketing services.)

There are plenty of other problems out there, both in the U.S. and in other countries.

So, what’s Facebook going to do?

It’ll probably throw its weight and money around but may have been buying up rights before it announced.

In April 2021, Chan Zuckerberg Initiative LLC, bought a registration for META for marketing, advertising, and promotional services that dates back to 2015. If Chan Zuckerberg has a connection to Facebook, that could create leverage for getting another registration in that field.

Whatever its plans, wouldn’t it have been better to be original instead of fighting for the mundane?

Aftermarket Changes

M. Caitlin Minges made and sold candles in empty White Claw® hard seltzer cans. The maker of White Claw sued her for trademark infringement.

Meanwhile . . .

Lil Nas X teamed up with the collective MSCHF^TM to modify 666 pairs of Nike® Air Max® 97 with satanic symbols and, purportedly, one drop of human blood. They sold each pair for $1,018 (a reference to Bible passage Luke 10:18). Nike sued MSCHF for trademark infringement.

How much control should a trademark owner have after someone buys their product? Certainly it depends on how likely consumers are to think the aftermarket product is actually sponsored or condoned by the company that owns the brand but I think it depends on other stuff, too:

• An aftermarket modification that’s making an artistic statement seems less infringe-y to me.
• The potential for actual harm beyond social media whackitude feels important, too. The candles could cause a fire. The running shoes are merely embarrassing to Nike.
• Reselling a modified product feels less infringing than reusing packaging. I should be able to buy a car and modify it however I want no matter how the manufacturer feels about it. I shouldn’t be able to sell socks in a See’s Candy® box.

Companies need to protect their brands but consumers should be able to mess around with stuff once they buy it. Another case of “it depends.”

Shout out to Cassandra G. for sending me both the Lil Nas X and the White Claw stories.