Who Owns the Jelly Nailed to the Wall?
There are few legal holy messes like a dispute over trademark ownership. Sure, copyright and patent ownership disputes can be messy, but nothing like trademark ownership. And, sure, copyright ownership can be tricky, but it’s a walk in the park compared to trademark ownership. Here are some reasons why:
There can normally be only one owner of a trademark for a given set of products in a given market. Why? That’s because a trademark serves as a link between products and a single source. In contrast, copyrights and patents can have multiple owners.
But there can be multiple legitimate owners of trademarks for the same or similar products, if (a) they are geographically remote from each other AND (b) the later (“junior”) user isn’t on notice about the earlier use (which is often the case). Why? Because the point of a trademark is to prevent confusion, and there’s chance of confusion if different owners are far enough away from each other. Copyrights and patents, by contrast, automatically have national scope.
The owner of a trademark is the one who “actually uses” it for the products in the market. But often many hands are involved in…
Crystal Enter’t & Filmworks, Inc. v. Jurado, ___ F.3d ___, Case No. 10:11837 (11th Cir. June 21, 2011)
This decision is both fun and educational. It’s fun because it involves the 1980’s song-and-dance “girl group” Expose, and because the court couldn’t resist punning on the titles of the group’s hit songs. It’s educational because, even though it presents an unusual set of circumstances, it gets to the heart of the nature of trademark–and a gives a warning about the value of doing things right on the front end.
Like a lot song-and-dance musical groups, Expose wasn’t self-formed. The women didn’t meet each other at school or some place and decide to form a band. They were put together by impresarios, like producers of a movie. They find the “talent,” the songwriters, the costume designers, the choreographers, and so forth. For purposes of this discussion, we’ll call the folks who put Expose together the “Impresarios.”
So, the Impresarios (the plaintiffs in this action) put Expose together in the 1980’s. The first iteration didn’t work. They try again with three different women, and this time, Expose is a pretty big hit. The Impresarios are clearly instrumental in the success. The Impresarios knew enough to…