The Art of Protest

1st Amendment

One of our arts and entertainment attorneys, Caroline Kert, was recently asked to address a group of local artists and arts organizations regarding Protest Art. She covers protester rights as well as the boundaries of free expression. This is a must watch for artists and dissenters in the current political climate. Contact Caroline Kert at carolinekert@danieltgoodwin.com for more information.

You can watch the full presentation here:

Our Tips for a Successful Career in the Arts

Careers in the Arts (larger file size)

Don’t let your dad who wanted you to major in business administration tell you otherwise – In today’s economy, making a living as an artist is probably more viable than it has ever been before.

Many individuals (including your dad) are under the impression that the only way to succeed in the arts is to become a superstar.  Media representations tend to present the arts as an all-or-nothing proposition, with the spotlight only given to the celebrity successes.

However, a viable career in the arts can encompass a broad range of options for those of us who aren’t necessarily nobodies, but whose lives aren’t fodder for PerezHilton.com either.  The arts are not a competition, and you don’t need to be a superstar to make a living doing what you love!

Here are some key points, some legal but many non-legal, we try to relay to our artist and creative entrepreneur clients:

  1. Identify and Maximize Various Revenue Streams

It can’t be denied that those working in creative professions often lack traditional benefits and job security.  There is nothing in this post that offers solutions towards finding a tradition 9-to-5-with-health-insurance job in the arts.  Instead, those who are able to pursue multiple sources of income and become comfortable (or even thrive) with a lifestyle with no promises of a paycheck can find career sustainability.

Experimenting with a variety of moneymaking options allows artists to discover which methods are the most lucrative.  Here in Colorado, we unfortunately do not have a long-established art collector scene like on the coasts.  However, traditional gallery art sales and online art sales may be complemented by speaking gigs, public art commissions, publishing, teaching, commission projects, crowdfunding and grants.

In other words, we believe it is a good investment for artists just beginning to establish their careers (but also for those looking to give a boost to current careers) to participate a little in a lot.  If one revenue stream (for example, gallery sales) is not doing so well, you ideally should have multiple other sources of income to fall back on.  The downside is that your schedule may be very full.  The potential upside after several years of pursuing all options is that you’ve found something that really works for your medium, personality, lifestyle and business model, and you have found financial security.

  1. Be Weird

Being “weird” could be a bad idea at a lot of jobs, but it is definitely an asset in the creative professions.  To sell art or become known as an artist, it helps to grab your audiences’ attention by creating works that are distinctly different from what is already out there.

Moreover, artists who devote time beyond their actual artwork to create a unique brand around themselves will likely have more opportunities to engage in various projects and receive more invitations to work, speak, sell and teach (all towards, see above, diversifying income streams!).  Individuals who succeed in branding themselves aren’t necessarily the most talented and brilliant artists out there, but they do produce more bankable work.  Navigating the fine line of being your authentic self yet making an impression on those around you can be tricky, but finding that balance can yield profitable results.

  1. Be Professional

Passion, talent and weirdness aren’t the only qualifications for becoming a successful professional artist.  A creative individual pursuing a career in the arts should also be able to successfully navigate the business side of their own enterprise.

For example, grants can be a good source of income for an artist or arts organization.  There are even some arts grants where, if you’ve received it once and demonstrated you were able to meet the objectives of the grant program, you can receive the same grant several years in a row.

However, groups that award such grants want to ensure their money is going to be used appropriately.  They require clear and straightforward descriptions of how the grant funds will be used, and they also need assurances that the funds will be properly accounted for once received.  This kind of due diligence is legally required for most of the foundations, endowments, 501(c)(3)s, and other organizations who are in the business of making arts grants.

If you never know the balance of your bank account or choose a casual attitude towards the financial aspects of your business, this is trouble!  It is critical to establish, and continually maintain, a high level of professionalism in your arts business.  Certain actions that can go a long way include:

  • Setting yourself up as a legal business entity with a separate business tax ID (an EIN);
  • Having separate business bank accounts;
  • Staying on top of deadlines and document requests from grant organizations, vendors, and other collaborators or colleagues;
  • Recognizing and protecting your intellectual assets (copyrights and trademarks);
  • Having a good professional services contract when you are hired for projects, shows, etc.;
  • Maintaining an active and professional online presence (social media and your website); and
  • Sustaining a solid network of mentors, colleagues, and professional advisors such as accountants and attorneys who are on your team as you navigate your career in the arts.

 

Guidance for Denver DIY Spaces and Zoning Requirements

DIY Zoning Social

I practice arts & entertainment law in Colorado, have co-created a local cooperative artistic space, volunteer services to artists, and socialize in arts and Burning Man communities. I live and breathe arts in community.

So, when I heard about the tragedy in Oakland’s GhostShip, I was hit particularly hard. I didn’t know any of the victims directly, but many of my friends did. My mind quickly turned to our Colorado DIY spaces—what were they feeling, what were they scrambling to correct in their safety approaches, and how could I help? Not surprisingly, I found that artists in Colorado are grieving and also fighting to keep their spaces up to code in the face of increased interest from safety agencies.

At a recent gathering of artists running DIY spaces, I heard a lot of confusion and uncertainty about the lay of the legal landscape. Watch this space over the next weeks as I pen a blog series that answers questions many spaces are having and elaborates on top issues for DIY creative spaces.

All situations are case specific, so you may need further guidance given your particular situation.

Verifying Your Zoning Status in Denver

In Denver, the public online records provide a nice link to the basic information you will need to feel more assured about your zoning status. Remember that public government websites are never guaranteed to be 100% up to date, but this should give you a reasonable place to start in confirming that your space does not have unresolved zoning issues.

1) Visit the online real estate records page:
https://www.denvergov.org/property

2) Hit “Advanced Search”

3) Enter your address information

4) There will be a hyperlink on your building’s address. Click on the address to go to the detail page.

5) The website will take you to the “Property Summary” tab. Click the Tab to view “Property Map”. This is where you will find all sorts of juicy information about your zoning allowances.

6) Note all special designations for your property, including Enterprise Zones, Historic Landmark status, and zone district information. I recommend making a written note for easy reference as you look at the Zoning Code. You may be part of an “overlay district”, which means that two sets of requirements apply to you—make sure to check the requirements for any and all references made in this section.

7) The page will link to the version of the Denver Building Code that relates to your property. Click through to that document in the “Code Version” line.

Check the Code and How It Applies to Your Building

Understanding the Zoning Code is complicated and technical. This makes it difficult to maintain exact compliance and leaves property owners open to differing interpretations and potential violations, even discrepancies within the same department. Keep your focus on trying to get reasonable compliance with the most that you can. There is always a chance that the city will show up and point out a non-compliance issue that you haven’t thought of. Your attempts to get it right in the other instances will help you establish good faith and some negotiating room with the city if you need it.

Click through to the version of the Zoning Code that applies to your property.

a) Look at Articles 1 and 2 to get an overview of how to use the manual.
b) Look for the Article that matches each of the zoning assignments given to your building.
c) Find the Chapter on your specific zoning assignment and read.
1. You will find information on what types of buildings are allowable and offset distances from the sidewalks (this won’t really be anything you can control or worry about). What will be important is to Check the Uses Allowable for Your Type of Building.
2. You do want to look at any requirements that apply to free-standing structures you have in your space (sheds, lockers, garages…).
3. Look at the tables that apply to your type of zoning in each section of the chapter for the requirements that you need to follow. This is where you can start to pull together a list of items to prioritize as you come into compliance. Or, hopefully, you won’t need to make any improvements at all.
4. Pay particular attention to parking requirements and the USE TABLES. You should verify that the way you are using the property is allowable. And, you will want to know if you are required to get a permit for any specific types of use. For example, if you are zoned for mixed industrial use and live/work, there are limitations on parking and biking for which you will need approval.
d) Look at Article 10 for rules that apply to everyone.
e) Look at Article 11 for definitions and rules that apply to your specific uses.

If you determine that there may be compliance issues, discuss with the building owner. Your landlord may know something you don’t regarding prior approvals from the city or being grandfathered in for certain items. And, your landlord may be willing to help you with expenses to make things right.

Note that these instructions only apply to the Zoning Code. You will also need to be in compliance with the Building Code.  Check this blog later for highlights from the International Building Code, which is used as a model law for municipalities.

If you don’t live in Denver, your city may also include zoning information as part of the public record. Research what information is available to you through both the assessors office and the real estate records office of your city.

If you need more information or help with these or other topics for your DIY space, please contact Caroline Kert us via www.danieltgoodwin.com.

Protecting Your DIY Vision: Seven Things Creative Spaces Need to Know

DIY Series Social

I practice arts & entertainment law in Colorado, have co-created a local cooperative artistic space, volunteer services to artists, and socialize in arts and Burning Man communities. I live and breathe arts in community.

So, when I heard about the tragedy in Oakland’s GhostShip, I was hit particularly hard. I didn’t know any of the victims directly, but many of my friends did. My mind quickly turned to our Colorado DIY spaces—what were they feeling, what were they scrambling to correct in their safety approaches, and how could I help? Not surprisingly, I found that artists in Colorado are grieving and also fighting to keep their spaces up to code in the face of increased interest from safety agencies.

At a recent gathering of artists running DIY spaces, I heard a lot of confusion and uncertainty about the lay of the legal landscape.  Watch this space over the next weeks as I pen a blog series that answers questions many spaces are having and elaborates on these top issues for DIY creative spaces.

1. Your Use of the Space Needs to Match Your Zoning Classification

In most cities, you can run an Internet search to double-check that your space is zoned for the type of activity that you conduct. If you cannot find a quick answer online, you may need to call the building and permit department to find out.

Pay closest attention if you are a work/live space. If you run your space out of a residential area, and your space is zoned for residential use, be aware of the limitations to how many non-related people can be living in the same space. For industrial spaces that are zoned for mixed use, check to ensure that you have zoning for residential use and that your space has been issued a certificate of occupancy.

Zoning violations may expose you to eviction. If you are out of compliance, consider an immediate change in use to match the zoning.

2. Even if You’re Cool with the City, You Still Need to Stay Cool with Your Landlord

Cities and safety officials aren’t the only ones that are nervous about safety in your space right now. Landlords have their hackles up, also.

Review your lease to make sure you aren’t doing anything that would warrant you getting evicted. Does the lease acknowledge how you are using the space, in reality? If not, was the landlord clear on how you were going to use the space when you moved in? If you and your landlord are out of sync about how you are using the space, do your best to fix the situation. This could be anything from changing how you are using the space to having a frank conversation with your landlord, depending on your relationship.

3. Building Code Violations Should be Your Biggest Concern

City and agency officials in Denver are taking a proactive stance toward ensuring the safety of live/work spaces. While it may feel like a witch hunt, it’s not. The last thing the City wants is for another tragedy to occur in Denver. So, if your building is targeted for inspection, be cooperative, be cordial, and communicate that you share safety concerns. The more professional you remain, the better an outcome you can expect.

The International Building Code (IBC) is complex, and most cities adopt bits and pieces as local Code. So, don’t expect to understand it all. Talking to other spaces and understanding what issues have created problems in the past will be a huge guidance. In general, and irrespective of what city you are in, pay attention to:

  • Do you maintain the limits on how many people live and attend events in the space?
  • Your fire extinguishers must be charged and inspected on schedule. You must have enough fire extinguishers; and you may also be required to have more advanced fire suppression equipment.
  • Your interior walls need to be made of the proper material.
  • If you have live/work space, there are requirements regarding the square footage and how much space is non-residential.
  • Your exit lighting needs to be self-illuminating—check the Code to make sure you have the right amount of the right kind.
  • You need proper egress and your doors need to be up to code so they are easy to operate in case of fire. There are specific requirements surrounding garage doors.
  • Rises in the floor and areas that are uneven need to be marked as required in the Code.
  • If you have loft areas, the Code will have guidance on headroom, stairs, and square footage required for occupancy levels.
  • Electrical systems and fuse boxes have specific requirements.
  • Extension cords should not be over utilized or used instead of permanent wiring.
  • Some types of gas canisters need to be tied down.
  • If you hang art in gallery space, there are requirements that may apply to how densely that artwork is displayed
  • You must be up to Code regarding bathrooms and running water.

Each space and usage has its own particular requirements, so it is impossible to list all the pitfalls here. There are independent contractors who will review your property for a fee and give you a feel for where you are in violation. This is if you don’t want your list of violations to come from the City.

4. Your Alcohol Policy Should be Up to Snuff

If you are serving alcohol at either private or public events, you need to have a liquor license or an exemption to having one. There are a number of ways to get licensing:

–Get a nonprofit to sponsor your event and use their license for your space.

–Club license—if you are a certain type of membership organization (most likely a social club), and you have been a member organization for three or more years, you could qualify for a club license

–Arts license—tax exempt, nonprofit arts organizations that sponsor productions or performances can obtain a license. You need to be registered as a nonprofit in Colorado and have federal tax exempt status.

–Gallery Special Use License—Your primary purpose must be to exhibit and sell art and you can obtain a license to gift alcohol at up to 15 events per year.

–Special Event License—If you are a certain type of organization (most likely a social organization), you can apply for a special event license. You are limited to 15 special event licenses per year.

–Membership Organization Exemption– If you are a certain type of membership organization (most likely a social club) you may provide alcohol to your members and their guests at a private function. You can charge for entry, but you cannot charge more to those consuming alcohol

Make sure that the individual named on your application is “of good moral character”. The license can be denied if they are not.

5. Even if You Have a Liquor License, Be Careful Who You Serve

Even with a liquor license, you will face serious issues if you serve underage drinkers or intoxicated guests. “Dram Shop” laws still apply and you may be liable for damages if you continue to serve a drunk guest and they injure someone.

6. Protect Yourself with Insurance

If you are running an organization with business or management elements, purchase some insurance. Protect your belongings with renter’s insurance. Purchase event insurance if you will be hosting large groups. Make sure you disclose to the insurance company exactly what you are doing on the property and always make sure you read and understand the policy before you sign. The devil is in the details with insurance.

7. Be Aware of How You Present Yourself on Social Media

Cities and agencies use social media to locate potential issues with DIY spaces. Insurance companies will scour your social media postings if there is an accident in your space. Always review your posts with the assumption that those who want to create issues for you are reading.

8. In Denver, You May Need a Cabaret License Also

Bonus Tip!

If you hold events in Denver at which there is live or recorded entertainment and dancing, you may be required to hold a cabaret license. Depending on how you receive permission to serve alcohol, you may not be required to get a cabaret license. So, check up on what is required in conjunction with your liquor license. Special rules and exemptions apply for club, arts, social and special events.

If you need more information or help with these or other topics for your DIY space, please contact Caroline Kert us via www.danieltgoodwin.com.

 

 

 

 

“Open Studios” Trademark Dispute in Boulder, Colorado

Open Studios

Our guest contributor today, photographer John Uhr, posted this great analysis on Facebook of a current, local and much-publicized trademark dispute regarding the name “Open Studios.”

A quick background:  Open Studios, established in 1995,  is an arts-awareness and -appreciation organization based in Boulder, Colorado.  Recently, the organization has been quite aggressive in its legal efforts to protect the name “Open Studios” in the Boulder area by asserting its trademark rights.  This has impacted many artists in the area, including the Boulder Metalsmithing Association.   Recently, Open Studios and the Boulder Metalsmithing Association are parties to a trademark lawsuit in federal district court here in Colorado.  You can read Open Studio’s complaint, filed in August 2016, here.

FB John Uhr

October 10, 2016 at 11:17am ·

A funny thing happened this evening.  Completely by coincidence, I made the acquaintance of Open Studios board-member and attorney, Howard Bernstein.  He was discussing with Chris Brown (respected photographer and O.S. artist) a certain controversy surrounding Open Studios suing a small arts organization.  Since I have a passing interest in the matter, I asked Mr. Bernstein a number of questions I had been wondering about and listened carefully to the answers. We spoke for around 45 minutes and at the end I inquired whether Open Studios would abide by the results of the upcoming mediation if it should go against them. His answer (after assuring me that Open Studios would most certainly win) was an emphatic “why would we?” ……more on our conversation as I have time.

Ok, It’s later …

This article reports on an unexpected conversation I had with Open Studios lawyer and board-member, Howard Bernstein. The conversation took place at about 6 PM Oct. 10th at Chris Brown’s photography studio and in the presence of Chris and Mr. Bernstein’s wife, who listened with interest and occasional interjections. If Mr. Bernstein disagrees with my characterization of his position, I would welcome his input. These are his words and position to the best of my memory. I would also like to add that I hold no enmity toward Mr. Bernstein and believe he has the best interest of Open Studios at heart.

1) Mr. Bernstein believes that due to the their many years of use of the term, good works, etc. that Open Studios owns the right to the phrase “open studios(s)” for promotion of events in all of Boulder County. I asked if an individual artist (such as Chris Brown) would be allowed to post a sign saying “open studio” and he indicated that he would. I took this to mean that they only wished to control usage by organizations, but didn’t pursue the point.

2) While Mr. Bernstein seemed very anxious to make this issue about Boulder Metalsmithing Association and its director/founder Beth Merkel, it was apparent that he believes that any organization in Boulder County using the term “open studios” is violating OS’s rights and that allowing them to continue would be irresponsible. He would very much prefer that other organizations voluntarily stop using the term and that litigation is a last resort if they refuse to stop using it.

3) Mr. Bernstein believes that Boulder Metalsmithing’s attempt to trademark the term “open studios” was clearly an attempt to get exclusive rights to it’s use (keeping OS from being able to use it). I suggested that it was simply an attempt to ensure that the phrase could continue to be used by anyone, in the face of Open Studio’s demands. I said that I and everyone I had spoken to would be equally against anyone else claiming exclusive rights to the term.

4) I pointed out that literally thousands of organizations use the term “open studios”, many of them for far longer than Boulder’s OS and that I could find no instances of any of them suing to keep exclusive rights, but Mr. Bernstein insisted many times that they were “forced” to take legal action. It was clear to me during the course of our discussion that OS is pursuing exclusive rights to the term and will oppose any use of it, using legal means if voluntary compliance is not forthcoming in the misguided belief that they are protecting OS and their artists.

The Solution:

A search for “open studios” reveals that virtually all other of the thousands of open studio organizations attach their open studios name to their location. “Open studio” is a common generic phrase, while “open studios Cornwall” provides the uniqueness commonly valued in a trade name. For the same reason, common descriptive phrases like “farmer’s market”, “art fair”, “film festival” are attached to a location like Boulder County, Pearl St, or CU International when used as an organization’s name. I suggested that a simple solution for OS would be to attach their name to “Boulder” or “Boulder County”.  Mr. Bernstein emphatically rejected this idea seemingly because “open studios” had always been “open studios” and always would be. Tradition! The response is ironic because one of the main reasons Mr. Bernstein gave for preventing the use of the term by others is the potential for “confusion”.

Mr. Bernstein also seems to be overlooking a much greater potential source for confusion. If OS doesn’t claim “Boulder Open Studios” as a trade name, what prevents another organization from doing so, for instance, as a public forum for discussion of open studios issues and controversies? Talk about confusion!

It seems to me that Open Studios simply made an easily fixed mistake in not using the more appropriate, specific and descriptive name of Boulder Open Studios. Fixing this would do much more to avoid confusion than using a generic descriptive phrase and then being “forced” to prevent other organizations to stop using it.

To make things much easier for Open Studios to adopt this solution, I have purchased the tradename “Boulder Open Studios” and the domain name “boulderopenstudios.org”. I am offering these names to Open Studios free of charge if they will acknowledge that the term “open studios” is simply a common generic phrase which should be available for anyone to use.

What do you think of John’s solution?  Do you agree with Open Studio’s attorney or is this a case of trademark bullying?  This is certainly a case our intellectual property team will be watching!

Katy Perry’s Left Shark – Copyright

16573374880_a96df23eef_o

In the last blog post, we discussed Katy Perry’s attempts to secure a trademark in “Left Shark” and a design image of a shark. That discussion focused on trademark, which protects phrases and images that identify and distinguish a source of goods or services.  Copyright, on the other hand, protects works of authorship, such as drawings, songs, musical recordings, or books.

Cease and Desist Letter

Florida-based artist Fernando Sosa markets himself as “Political Sculptor,” [http://politicalsculptor.com/] and creates irreverent 3D-printed figurines inspired by current events and world politics. Immediately after Katy’s halftime show, Fernando began selling Left Shark figurines.  On February 3 (the Super Bowl took place on February 1), Katy’s legal team sent Fernando a Cease and Desist letter asserting that he was violating Katy’s rights under U.S. copyright law.  They also sent a takedown notice to Shapeways, the website selling Fernando’s figurines, and Left Shark was promptly removed from the site. Fernando decided to make the fight public, explaining on his blog: “Usually when it comes to small business owners, when the lawyers come after you the outcome is usually pretty predictable.  I decided to finally take a stand and break the usual cycle of rolling over or giving into legal threats.”   He engaged the services of a prominent intellectual property attorney, NYU Law Professor Christopher Sprigman, to respond to Katy’s lawyers.  Fernando also shared the electronic files online so that anyone with a 3D printer would be able to create their very own Left Shark sculptures.

Cease and Desist Responses

Professor Sprigman’s response letters brought up two points of copyright law.  First, under U.S. copyright law, costumes and clothes are generally not copyrightable.  He asked Katy’s lawyers to explain why the Left Shark costume should be treated any differently. He also questioned whether Katy Perry actually was the author of any Left Shark works of authorship, citing to Katy’s interview in Elle magazine where she explained: In my show, I am boss daddy.  I am boss mommy.  They call me Boss.  Everything goes through my eyes; I call all the shots, 100 percent of it.  With the NFL, I have to be accountable to several levels of red tape.  There are many committees I have to go through for my costumes, the budgets of my show, every interview – everything, I have to report to somebody.  So I am no longer the boss; I have to relinquish that control.” The Copyright Act requires all transfers of copyright ownership to be in writing.  [https://www.law.cornell.edu/uscode/text/17/204]  Thus, Professor Sprigman brought up a cogent point that the Left Shark design may belong to another individual or the NFL. Katy’s lawyers answered Professor Sprigman’s first point by explaining that Katy’s team created multiple shark drawings in the process of designing the costumes, and those were copyrightable.  They also explained that “multiple elements” within the costume itself were copyrightable, though did not explain specifically which elements these were. Katy’s lawyers also quickly asserted that Katy did, “pursuant to the terms of multiple agreements,” own all relevant copyrights to her dancing sharks.

Unfair Competition

After receiving Professor Sprigman’s first letter, Katy’s legal team asserted in addition to copyright infringement claims, they would also bring claims under unfair competition law, because “it is clear that any commercial value that your client’s sculptures have derives solely from the public’s association of them with Ms. Perry.” Unfair competition is a set tort claims that can be brought against a party that causes an economic injury to a business through a deceptive or wrongful business practice.  In the intellectual property context, unfair competition often is an accompanying claim to trademark infringement and the attempt to use an already-established name, logo, or other identifying characteristic to deceive consumers into thinking that they are buying the product of a competitor.  

“Left Shark Belongs to Us All”

In the last exchange between Professor Sprigman and the Katy’s lawyers, the professor made a salient point about the collective capabilities of the Internet: “No one knew that one of the sharks dancing next to Katy Perry during the Super Bowl halftime show was Left Shark until the Internet told us so.  The Internet decided that Left Shark’s flubbed dance moves were hilarious.  [The Internet] gave Left Shark his name, and then made him into a meme.  Left Shark isn’t really about Katy Perry.” In April 2015, Fernando retained a new attorney in Florida to continue work on his instinctual property infringement/unfair competition case with Katy Perry but, as of the date of this writing, any new developments between the two have yet to be publicly shared.

Photo taken by ShoreShot Photography

Katy Perry’s Left Shark – Trademark

16464994135_ddbc7c37f0_o

During 2015’s Super Bowl halftime show, Katy Perry dazzled a worldwide audience of 118.5 million [http://www.billboard.com/articles/news/6458264/katy-perry-super-bowl-halftime-record] viewers, the largest halftime show audience in history.  

During one segment of her performance, Katy was accompanied by several dancers in various beach-themed costumes, including two dancers who were dressed as sharks. When social media users commented en masse how the shark on the left (actually, Katy’s right) seemed to be incorporating its own moves instead of the planned choreography, a new Internet meme was born – Left Shark!  

He became a symbol of individualism and doing things your own way.

 

Katy’s Trademark Application

Katy’s lawyers wasted no time attempting to capitalize on the meme.  Eight days after the Super Bowl aired, they filed applications with the U.S. Patent and Trademark Office (USPTO) for the phrases “Left Shark,” “Right Shark,” “Drunk Shark,” and “Basking Shark,” as well as for a design of a smiling, cartoon, bi-pedal shark.

 

Action Letters

After a trademark application has been filed with the USPTO and gone through a preliminary review and entered into the offices data system, it is assigned to a trademark attorney.  The Examining Attorney who reviews an application will send what’s called an action letter if he or she has come across one or more problems with your mark or your application that warrant rejections.

Katy’s examiner, David Collier, found a number of problems with Katy’s shark design application.  

 

Substantive Rejection

Foundationally, to get USPTO approval of a mark as a trademark, the mark must function to identify and distinguish the applicant’s services from those of others and indicate the source.  However, Katy’s examiner found that the image of the shark only identified a particular character.  He wasn’t able to see evidence that the shark identified or distinguished Katy’s live musical and dance performances.  

 

Formal Rejection

Next, Katy’s design application also needed to include a specimen of her mark being used in commerce for live musical and dance performances.  Katy submitted a photograph of herself on stage at the Super Bowl with the shark-costumed dancer.  However, the shark in the photo and application’s shark cartoon design did not match.  

Said the examiner: “[T]he specimen displays the mark as a stylized depiction of a forward leaning shark in nearly a front profile with a portion of a dorsal fin, two pectoral fins and two legs and feet substituted for the caudal fin on the tail.  The shark has five gills, a full mouth with teeth and round eyes with eyelids; however, the drawing displays the mark as a stylized depiction of an upright shark in full front profile with no dorsal fin, two full pectoral fins and two legs and feet; the shark has three gills and the sharks mouth appears without teeth; the shark also has oval eyes without eyelids.”

The application for “Left Shark” fared better than the application for the design, but the examiner still wanted further clarification on the identity of goods for the marks.  For example, one of the classes of goods or services listed on Katy’s application was “Plush toys, action figures, figurines,” but the examiner wanted more for “figurines.”  Would they be made out of rubber?  Stone?  “[B]one, ivory, plastic, wax, plaster, wood?”

 

No Trademark for Katy?

The week Mr. Collier’s USPTO Action Letters were released, the media declared that Katy Perry had “failed” in her attempts to trademark the Left Shark and the Internet squealed with glee.  In reality, the orders clearly stated Katy’s legal team still has the opportunity to fix the identified issues.  If they are able to do so in the proscribed timeframe, her registrations will be published in the USPTO’s Office Gazette [http://www.uspto.gov/learning-and-resources/official-gazette].  Then, any opposers will have 30 days to file their oppositions with the USPTO.  If no opposers come forth, the marks will be officially registered with the USPTO as trademarks.

However, due to the high-profile nature of this application, it will be interesting who emerges to lodge complaints against the marks.  Will other artists or businesses see the USPTO opposition process a way to get some great publicity off Katy Perry and the grand saga of Left Shark?