Tag: Geek Law Firm

  • White Lives Matter Trademark Explained

    You’ve probably seen the news about how a certain celebrity can’t a get a trademark for apparel bearing the despicable phrase, “White Lives Matter.”

    Let’s breakdown what’s happened in this situation so far:

    • Everyone justifiably lost their minds when a celebrity wore a shirt that said “White Lives Matter” in a fashion show in Paris this fall.
    • The news reported that, even if this celebrity wanted to register a trademark for “White Lives Matter” for apparel in the U.S., he can’t because someone else already filed that trademark application with the U.S. Patent and Trademark Office (USPTO) on October 3, 2022.
    • The applicant for this trademark subsequently assigned this trademark to Civic Cipher, LLC, a syndicated black radio show on October 17, 2022.
    Photo courtesy of Courtesy of Candace Owens/Instagram

    How ITU Trademark Applications Work

    The trademark application in question is only an Intent To Use (ITU) application. A company or person can file an ITU application when they expect to bring a good or service to market within 6 months, and it’s a way to stake a claim in the desired trademark, so no one else takes it in the meantime.

    Once the USPTO issues a Notice of Acceptance for your ITU application, you have 6 months to either submit a Statement of Use, proving that you’re using the trademark in commerce, or you can request a 6-month extension. The USPTO will grant you up to 5 extensions, so essentially, you actually have up to 3 years to bring your product or service to market. If you don’t do it by then, that trademark application is “dead,” and you have to file a new trademark application and start over.

    The upside of filing an ITU application is that your federal rights date back to when you filed the application with the USPTO.

    That means Civic Cipher, a black radio show, will have to sell White Lives Matter branded apparel to get the registered trademark.

    Black Radio Show is Selling WLM Shirts (allegedly)

    As I was working on this post, I popped over to the USPTO trademark database (publicly available and free), to look up this trademark application. To my surprise, Civic Cipher submitted proof that they’re selling White Lives Matter branded apparel on November 8, 2022. Here’s the picture of their proof.

    Photo from white lives matter trademark application

    Civic Cipher did something very smart. They didn’t just take and submit a picture of a White Lives Matter t-shirt. This shirt has a tag that says, “White Lives Matter.” That’s the real branding and proof that they’re using the trademark.

    Here’s something important to know if you have or want to sell a brand of apparel:

    Phrases on T-shirts Aren’t Trademarks

    That’s right – putting a word, phrase, or logo on a shirt does not make it a trademark for apparel. The shirt is the product. The trademark is the branding on it, like on the tag inside the shirt, the paper tag attached to it at the store, and/or the bag or box it’s delivered in. That’s where the trademark for the product goes. The trademark goes on the product; it’s not the product itself.

    The purpose of a trademark is to prevent consumer confusion. They don’t want Company B to copy Company A’s branding so closely that consumers might buy Company B’s product, thinking it’s from Company A.

    Even though a phrase on a shirt isn’t a trademark, there’s still an argument that Civic Cipher could send cease and desist letters or takedown notices to prevent others from selling White Lives Matter t-shirts, asserting as the trademark owner, they have exclusive control over who sells apparel containing their brand in the U.S. – if the USPTO registers their trademark.

    Civic Cipher Hosts – Quinton Ward and Ramses Ja; photo courtesy of civic cipher

    Civic Cipher Doesn’t Have a Registered Trademark Yet

    The trademark application for White Lives Matter for apparel was filed on October 3, 2022. The USPTO’s backlog is so massive, it takes them more than 8 months to do the initial review of a new trademark application.

    That means the USPTO won’t weigh in on whether White Lives Matter is trademarkable until May 2023 at the earliest.

    Even if Civic Cipher did everything correct with their trademark application, the USPTO could refuse to register it on grounds that it contains “immoral, deceptive, or scandalous matter.”

    This is a gray area of the law. It’s ok to have a disparaging trademark (e.g., “The Slants” as a trademark for an Asian music group) and to use swear words in your trademarks; however, the Ku Klux Klan can’t register their organization’s name as trademark. I don’t know how the examining attorney assigned to this application will classify “White Lives Matter.”

    (Yes, whether your trademark complies with U.S. Trademark Law is determined by an individual, and different examining attorneys have come to different conclusions regarding the same trademark application.)

    Where is Civic Cipher Selling their WLM Apparel?

    One of the rules to get a trademark is, to be “in commerce,” you have to have a bona fide offer of sale to the public. You don’t have to make a sale, but your product or service has to be available to the public.

    For most of my clients, this means they have to have a website where they show or describe the product, with a price, and button that allows consumers to make a purchase.

    Since Civic Cipher has submitted proof that they’re using their mark “in commerce,” I wanted to see where it’s available for sale. Civic Cipher has a Redbubble online store where they sell Civic Cipher t-shirts, but the White Lives Matter shirt isn’t listed there.   

    When a simple Google search didn’t yield any useful results, I contacted Civic Cipher directly. (I haven’t heard back yet.) I would not be surprised if the price on this shirt is outrageously high or if all the profits go to a charity that helps black people.

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  • Legal Side of the Try Guys-Ned Fulmer Situation

    Photo courtesy of 2nd try llc

    I have a somewhat different perspective on the Try Guys/Ned Fulmer situation given that I’m a business and internet lawyer as well as someone who has built a business from scratch.

    Disclaimer: I am not at all involved in this situation. I’m just a person with legal knowledge who is watching from the sidelines. Also, I’m a fan of the Try Guys, so my analysis may be biased in their favor.

    Quick Overview of the Situation

    Eugene Lee Yang, Zach Kornfeld, Keith Habersberger, and Ned Fulmer were four guys who worked at Buzzfeed but then left to start their own business based on a YouTube channel called The Try Guys. The channel has millions of subscribers.

    A few weeks ago, it came out that Ned, who’s married, was having an affair with one of his employees, Alexandria Herring, after photos of the two kissing were posted online. Shortly thereafter, the Try Guys released a post that Ned was no longer with the company followed by a scripted video entitled “What Happened.”

    Some of the online reactions said the guys were acting like they were self-important and acting as if Ned cheated on them, not his wife.

    Now that we’re all on the same page, here’s my two cents:

    The “What Happened” Video Wasn’t as Self-Important as Some People Say.

    As YouTubers, the Try Guys put a lot of their personal lives and feelings on the internet. Sharing what happened and how they felt about it was on-brand for them.

    I also wondered if they’d been holding it together for weeks, keeping everything hush hush as they were investigating what happened and deciding what they were going to do, and this video was their first chance to vent how they really felt.

    Ned Cheated on The Try Guys as Business Partners.

    The Try Guys seemed to put their hearts and soul into this business without a Plan B if it didn’t work out. They based their professional futures and livelihoods on the belief that the Try Guys would be a successful business. Like many entrepreneurs, myself included, there is no differentiation between when their professional and personal lives.

    As Eugene, Zach, and Keith said in their video, Ned went against the values of the company that the four of them had created together. When they learned about Ned’s infidelity, they were rightfully worried about how this news would impact their company’s reputation and future opportunities. Not only were they worried about their company’s future, but also for their employees who rely on their jobs to provide for their families.

    Photo by Hooiserillusion from Flickr (Creative Commons)

    Ned Shit the Bed and the Remaining Try Guys are Left to Clean it Up.

    It’s important to remember that these guys weren’t just co-workers, they’re co-owners of a company. They’re creating content and running a business. It’s basically two full-time jobs in one.

    As the Try Guys said in their “What Happened” video, they felt they had found their cadence where their company was consistently creating content and they finally had enough time to explore other personal projects as well. Just as they had established this balance, Ned, through his actions, fucked all that up.

    The Try Guys had to drop everything and deal with hiring someone to do an HR investigation and talk to lawyers all day to figure out what they could and couldn’t do. Given what they do for a living and that they live in Los Angeles, I would not be surprised if their lawyers cost $500/hour. Dealing with this situation could have easily has cost them tens of $1000s so far. On top of that, The Try Guys had created weeks’, if not months’ worth of videos, that probably cost $1000s to make, and now have to be scrapped because there’s no way to edit around Ned. They also reduced their publication schedule from two videos a week to one, so that means less revenue coming in. So not only are they having to deal with substantial unexpected expenses, but they’ve also lost money on top of that that they’ll never recoup.

    Photo Courtesy of 2nd try llc

    The Try Guys Aren’t Done Dealing with the Ned Situation.

    While everyone else is moving on to the next internet drama de jour, the Try Guys are still dealing with this. I suspect they’re still having regular contact with their lawyers as they continue to clean up the figurative debris from this mess.

    Alexandria Herring was listed as an Associate Producer for the company until their latest video. It was clear from the responses from others in the company, it would not be a work environment for her to remain employed there. I bet she wasn’t terminated when Ned was voted out because they had to work with their legal team to give her a severance package that would allow them to terminate her employment without bringing a lawsuit onto themselves. 

    Additionally, even though they voted Ned out of the company, the remaining Try Guys are still dealing with him from a legal perspective. He may be gone as a creator, but he’s still an owner of the company. To get rid of him completely, somebody has to buy his ownership interest.

    Assuming each of the Try Guys owns 25% of the company, they have to determine what the entire company is worth, and negotiate a buy/sell agreement to purchase Ned’s 25%. Finding a company that performs business valuations and having it done can take weeks, and then there could be weeks of negotiations about the contract’s terms, including releases of liability. If I were a surviving owner, I’d want all the costs of having to deal with the Ned situation to be deducted from the purchase price of Ned’s share.

    The only way I can think that would prevent the Try Guys from having to buy Ned out would be if they had an operating agreement in place that said certain bad acts by an owner would result in that owner forfeiting their ownership interest in the company and getting kicked out with nothing. My gut says that didn’t happen in this situation because, as of October 28th, Ned (meaning Fulmer Media Inc.) was still listed as an owner of the company on the California business entity database.

    So, while Ned is doing his own thing, the other three guys have had to take a lot of time and energy away from what they want to be doing to clean up Ned’s mess, keep the company going in the interim, and probably will have to give him a lot of money to make him go away.

    Given all this, if I were Eugene, Zach, and Keith, I’d be pretty upset too.

  • F*cking Up my Contract for Content Marketing World 

    I’m excited to go back to Cleveland for CMWorld!

    Content Marketing World (CMWorld) is one of my favorite events every year. They have the best of the best speaking about what’s working with content marketing.

    Like every year when I have the privilege of being a speaker, I’m required to sign a contract. They recently sent me a link to the speaker contract landing page where I signed with my electronic signature. I signed the contract as it was written, but it inspired me to create a revised version. Some of the provisions I added were meant to be humorous, and others were added to fill gaps in the contract’s verbiage. I sent the revised contract to CMWorld, and they thought it was funny.

    Re-writing my friends’ real contracts has become one of my new hobbies. I keep these documents in a folder on my computer entitled, “Let’s Fuck Up Contracts.”

    Below are some of the provisions in the original CMWorld contract I signed followed by how I revised them.

    It’s ironic that I mostly revised it in ways that would benefit the event. Historically, when I’ve revised a contract I’ve been asked to sign, I do so in ways that only benefit me – like when I revised the liability waiver for a race so I could sue the organizers if they ran me into oncoming traffic or something. As a lawyer, I draft contracts based on what’s in my client’s best interests, which again, is not this situation.

    Compensation

    In CMWorld’s Original Contract:

    For my participation, I will be provided:

    • (1) Pass to the main event including admission to all main conference sessions, networking functions, and workshops.
    • (1) Complimentary access to on demand videos for up to one year following the event.

    How I Revised It:

    For my participation, I will be provided:

    • One (1) Main Conference Pass allowing access to all sessions at the Event including all networking functions and conference workshops,
    • One (1) Complimentary Pass to all sessions on demand for twelve (12) months following the Event,
    • Copious amounts of hugs and high fives from the Event team, as long as I’m not creepy about it,
    • First dibs to pet the dogs at the Yappy Hour event where there will be no less than four (4) rescue dogs; and
    • Access to the Event speaker lounge that will be stocked with hot and cold caffeinated beverages; ice cold sparkling water with lime; a selection or orange-colored candies, including, but not limited to M&Ms, Reese’s Pieces, Skittles, Starburst, and Mike & Ikes, each in a separate container (because mixing them is gross); and at least thirty (30) power outlets. 

    Power outlets are in high demand in the speaker lounge. Also, CMWorld has not said whether or not they will have a Yappy Hour at this year’s event. And just so there’s no confusion, I = me, Event = CMWorld, and Informa is the company that owns the Event.

    Photo by 3V Photo (Creative Commons License)

    No Selling From the Stage

    In CMWorld’s Original Contract:

    The Event is an educational event, not a sales or marketing platform. Informa is retaining me to provide an objective presentation that meets the educational needs of the Event attendees.  Informa may revoke my speaker invitation at any time if in its sole judgement that is in the best interests of the Event.

    How I Revised It:

    I grant to Informa a worldwide, non-exclusive, royalty-free, perpetual license to copy, distribute, display, and make derivative works using all materials and recordings of and related to the speaking engagement, in whole or in part, in any Informa anthology, compilation, or educational publication of materials associated with the Event, including without limitation any format, including those that haven’t been invented yet. I acknowledge and agree that this license is assignable and sublicensable without any limitations.

    I also added in the following: Moreover, if Informa is accused of wrongdoing for using any rights licensed to it by me herein, I, or my employer where possible, will indemnify and reimburse all its legal costs, including associated damages, for resolving the matter.

    Photo by JD Hancock (Creative Commons License)

    Dispute Resolution

    In CMWorld’s Original Contract:

    This Agreement and Release is governed by California law. Choice of law rules do not apply, regardless of jurisdiction.

    How I Revised It:

    Even though Informa is a UK company and the Event is in Ohio, I acknowledge and agree that this Agreement and Release is governed by California law and all disputes regarding this contract will be resolved in a court located in Los Angeles County, California. Choice of law rules do not apply, regardless of jurisdiction. Furthermore, I acknowledge and agree that, in a dispute, the non-prevailing party will be responsible for the prevailing party’s attorneys’ fees and cost.

    Other Terms I Added

    Entire Agreement: This contract contains the entire agreement between myself and Informa regarding my participation as a speaker at the Event, regardless of any discussions to date or in the future. Any modification must be in writing and signed by both parties.

    Force Majeure: I acknowledge and agree that neither Informa nor the Event, their employees, contractors, directors, affiliates, or lawyers (because the lawyers always cover their asses as well as their clients’) shall not be liable for damages or any inability to perform under this agreement, which is directly, or indirectly, caused by circumstances beyond their control, including, but not limited to, natural disasters, inclement weather, acts of god, acts by other deities, illness, plague, fires, alien invasion or abduction, floods, riots, strikes, government orders or recommendations, if someone releases a kraken, or any other justifiable conditions outside of Informa’s or the Event’s control.

    I’d expect every event to have a force majeure provision, especially with the COVID pandemic. This is particularly true if the event is at a third-party venue where the event would likely need to be cancelled or rescheduled if the location were no longer available due to a catastrophic event like a fire or earthquake.

    Learn More About Contracts – for Free!

    Earlier this year, I created a mini course for The Tilt called What Content Creators Need to Know Now to Avoid Legal Trouble. It’s a quick 20-minute overview of what content entrepreneurs need to understand about contracts, including how to read a contract and suggested terms to include in your own contract templates.

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    To my fellow CMWorld speakers: If we have containers of different types of orange-colored candies at this year’s event, you’re welcome.