The High-touch Legal Services® Blog • For Startup/Early-stage Companies

Cover from "Finding Rin Tin Tin" DVD

Those of a certain age will recall watching “Rin Tin Tin” on TV as kids. The venerable canine recently was the subject of a trademark infringement suit (Rin Tin Tin, Inc., et al. v. First Look Studios, Inc., et al.).

Rin Tin Tin was a German Shepherd dog found in France during World War I. He became famous through movies and remains well-known to this day.

Plaintiffs breed German Shepherds descended from the original Rin Tin Tin and manage related business endeavors. Rin Tin Tin, Inc. obtained federal trademark registrations for “Rin Tin Tin” pertaining to puppies and dogs of the Rin Tin Tin lineage.

Defendants distributed a movie on DVD titled “Finding Rin Tin Tin: The Adventure Continues.” The movie is based on the life of the original Rin Tin Tin and features German Shepherd puppies and dogs with that name. The movie and the DVD cover make no reference to the plaintiffs and do not claim any affiliation to the Rin Tin Tin bloodline.

Plaintiffs brought suit in the U.S. District Court for the Southern District of Texas, alleging that unauthorized use of the name “Rin Tin Tin” will cause confusion as to the origin, sponsorship and nature of the movie, thereby injuring or diluting plaintiffs’ trademarks. Plaintiffs asked for  destruction of all unsold DVDs, an injunction against  use of the Rin Tin Tin name, and various damages, incidental costs and attorneys’ fees.

Defendants countered that their use of the name falls under the “fair use” defense. The court agreed, noting that all three elements of fair use were satisfied:

• Defendants’ use of the name Rin Tin Tin was descriptive of the historical dog, rather than a reference to plaintiffs or their products.
• Defendant’s use of the name was fair in that it was the most precise way to describe the subject matter of the movie.
• Defendants acted in good faith because they did not use the name Rin Tin Tin to indicate the source of the movie (defendants clearly stated that they were the source).

Bottom line: This case illustrates that if one properly uses a mark in in a descriptive fashion, rather than as a reference to another’s company, products or services, the trademark fair use defense is available to protect such use.

Photo credit: Flixster

This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.

This evening I will present “Top Ten Legal Tips for Current and Would-be Independent Independent Contractors” at The Society for Technical Communication Silicon Valley Chapter.

If you are interested in the topics that I will be covering, please check out “Top Ten Legal Tips for Independent Contractors” on this blog’s Downloads page.

This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.

I recently ran across a situation where several members of a limited liability company wanted to get rid of a fellow member whose disruptive behavior was harming the LLC, but they did not know whether or how they could kick him out.

California Corporations Code Section 17100(c) says that an LLC operating agreement may provide for termination of a membership interest. Upon termination, the member is entitled to a return of the member’s capital contribution to the LLC.

Regrettably, the operating agreement in question did not address termination of memberships. As a result, the LLC was stuck with the trouble-maker.

The bottom line: At a minimum, an LLC operating agreement should include a provision for terminating memberships in the event of a serious breach, such as failure to make a required capital contribution.

This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.

ProtectMarriage.com (left) and Courage Campaign Logos

It appears that at least some gay marriage foes need to learn a thing or two about trademark law.

On January 12, ProtectMarriage.com sent Courage Campaign a cease and desist letter, alleging that Courage Campaign’s Prop 8 Trial Tracker logo infringes ProjectMarriage.com’s trademark and copyright in its logo.

On January 14, Courage Campaign responded that its trademark is protected as a parody (most notably, it has a family led by two women rather than a man and a woman), and that if ProjectMarriage.com brings suit, it will lose and have to pay Courage Campaign’s legal fees. In my opinion, Courage Campaign has the stronger argument.

The story, including lawyers’ letters in their entirety, is told at ProtectMarriage.com issues Cease and Desist for Prop 8 Trial Tracker logo depicting family of two mothers with two kids.

Image credit: Prop 8 Trial Tracker

This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.

A few months ago, I posted Does your Employee Handbook address social media? This post discusses a specific social-media issue that is of great importance to every employer: Online endorsements of products or services by employees.

The Federal Trade Commission has published Guides Concerning the Use of Endorsements and Testimonials in Advertising. Actions that are inconsistent with the Guides may result in an FTC enforcement action.

Section 255.5 of the Guides states:

When there exists a connection between the endorser and the seller of the advertised product that might materially affect the weight or credibility of the endorsement (i.e., the connection is not reasonably expected by the audience), such connection must be fully disclosed.

So, if an employee touts your product or service on your company’s blog, no disclosure is required, because a company is expected to promote its own products or services. But if an employee touts your product or service on someone else’s blog, the employee should clearly and conspicuously disclose the employment relationship to readers of the blog.

Every employer should make employees aware of this requirement and should address this issue in its Employee Handbook.

This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.