Law & Business

In Episode 34 of the "Law & Business" podcast, Anthony Verna talks to John Eastwood, a partner at Eiger Law in Taipei, Taiwan. They discuss the issuance of the Trump trademarks in China, if there appears to be any issues outside of the normal issuance of trademarks in China, and what any business moving into China should keep in mind about its trademarks. Ivanka Trump probably didn't get special treatment from the Chinese: Based on what John Eastwood has seen, it appears that Ivanka's trademark applications (which will not have much use for her given that she's announced that she's shutting down her brand) were approved in a fairly normal time frame.  The Trump Organization probably did get special treatment, but that doesn't mean that they shouldn't have gotten the trademarks: The first part of the case involves the Trump Organization's application for construction-related services that had languished for something like 10 years of struggles against the weight of several Chinese bad-faith filers who had apparently been using the "TRUMP" name to market all sorts of products. Now, anybody who's doing business in China knows that there's a big industry. Chinese companies and individuals are extremely fast to file for iconic western marks -- or even not-so-iconic marks. (Eiger Law and John Eastwood have a lot of clients that are up-and-coming or niche brands, and even they have problems.) To some folks, it looked suspicious that China approved Trump's trademark in the first month he was in office as president -- it looked bad, like "oh, now you're president of the United States, here's your trademark." This caused folks to worry about there being a breach of the Emoluments Clause, the part of the Constitution (Article 1, Sec. 9, Para. 8), which prohibits federal officeholders from getting anything of value from a foreign state. Be there also must be an examination at what was happening right before Jan. 2017. In December 2016, Michael Jordan got good news in a 15-year struggle to get back the Chinese name commonly used to refer to him -- "QIAODAN" -- from a Chinese company that used the name to sell sports clothing very successfully. Why? Because when Nike started selling Air Jordan products in China, only the English name "JORDAN" got registered by them -- they didn't bother to go for the Chinese name that everybody in China who cares about basketball chose to call him. The lesson for trademark owners is not to skip registering a Chinese name.  In October 2016, C.F. Martin & Co, the nearly 200-year-old company that's made the iconic acoustic guitars used in blues, country, folk and rock, famous around the world, finally got back its marks after years of pursuing action through official channels. This was a case that had caused profound annoyance and frustration for IP professionals working in China, as it was used for years as an example of the Chinese government allowing a copycat local company to brand-jack a famous American brand. Part of the problem perhaps was that the old measure for "famous mark" protection was whether you were a true household name in China -- you couldn't just be famous within an industry, among musicians or music lovers, you had to be what John Eastwood used to call "Coca-Cola" famous but now could probably say is "Jordan" famous or "Trump" famous. But the trademark law was amended a few years ago to refer more generally to "bad-faith" trademark filings, and that gave some more room for action.  OK, so back to Trump -- within a relatively quick period, one can see China clearing away a bunch of these cases on their appeals docket that, frankly speaking, were an embarrassment to the country. And you get them releasing their decision in January 2017 when he'd just become president for that mark for construction services, the one that had been part of the decade-long battle. So where was the special treatment? Well, a couple of months later in March 2017,

Diane Kennedy, CPA, joins Anthony Verna for episode 33 of the Law & Business podcast. Diane has written a dozen or so books and had the fortune of hitting the New York Times, Wall Street Journal and Business West best seller lists with some of them. That’s even more remarkable because her books are about tax, accounting and investing. They aren’t your typical beach books. Diane and Anthony talk about the need for corporate structuring and the possibility for licensing within holding and parent-child companies for intellectual property use. Diane does recommend having holding companies that own IP and fully discusses the asset protection that is in place for the business.  Ownership and licensing matter greatly to the tax ramification. Here is a lightly-edited transcript of the podcast episode: Anthony Verna: Hey everyone, welcome to the Law and Business podcast. We’re conferencing with Diane Kennedy, CPA as everybody knows her, right? Diane Kennedy: Well, I don't know about that, but your listeners will soon meet me. Anthony Verna: Yeah, but nobody just calls you Diane. It's always Diane Kennedy, CPA. Diane Kennedy: Yeah, typically. Yeah, I make my kids call me that too. So, just so you know. I’m kidding. Anthony Verna: As you should, that power trip, wherever your kids is always important. Yes. Says the guy who doesn't have any. So, Diane, why don't you tell everyone a little bit about your practice. I know you can be found over at ustaxaid.com but a little more than a plug. Why don't you tell everybody about yourself? Diane Kennedy: So I've been a CPA for a lot of years and I have a practice that focuses exclusively with small business owners and their businesses, obviously, and or real estate investors. So, with that focus, then we're able to really just hone in on how do we help you with strategies that build up the value of your business, create cashflow, and most importantly, how do you legally save on taxes? And I also write a lot of books. My latest is Tax Again 2018: How to Brace for the Trump Tax Plan. And the, the whole viewpoint of books I write is it's not an argument about whether tax law is right or fair or overthrow this or whatever. It's just simply how do you make use of the things that are in law right now? The rich have lots of advisors and they pay a lot of money for those. The average guy who's got a business and is working hard or trying to build up some real estate investments, they can't afford the team of experts that the rich have. And yet those same exact legal tax loopholes exist for everyone as a business owner or a real estate investor. So, it's just simply taking that arcane language and changing it so it's more accessible to everybody. That's the idea. By the way, I just turned down a client who had $1.1 billion in assets. So that's it. And I should say net worth of 1.1 billion simply because he didn't fit the model. And it's like, you know, you can hire a lot of really expensive people. You don't need me, but I want to work with the guys who can't get the experts or can't afford them normally. So, these are ways that we can provide you those services most efficiently. Anthony Verna: Wonderful. So today, let's talk a little bit in my wheelhouse. Let's talk a little intellectual property. And one of the discussions I like to have with my clients is I say you need to sit down with your business’ CPAs and you need to talk about what is right for your intellectual property. Meaning, is it right for your company to spin off a parent or spin off a child, some kind of sibling company? And what does that mean for your taxes? And the usual setup is that intellectual property sits in a holding company and in the regular company there's a licensing agreement so that a payment is made from the original company to the holding company for a license. And then this way there's a payment made and there are tax ramifications. None of which I ever handled in my practice. So, Diane,

It's Episode 32 of the Law & Business Podcast. Anthony Verna and Wil Jacques talk about the possibilities of a provisional patent application (PPA).  Many potential clients call asking for a provisional without really understanding that the provisional patent application only gives a one-year extension to the deadline of filing a full patent application. Law & Business Podcast with Wil Jacques Pros of a provisional: a way to initiate the patent process is because they are cheaper to prepare (because there are no formal requirements) and the filing fee due to the United States Patent Office at the time of filing is only $130 for small entities (i.e., individuals, universities and companies with 500 or fewer employees), which saves you several hundreds of dollars compared to the filing fees for a non-provisional patent application. Indeed, the filing fee is even less — just $65 — if you qualify as a micro entity cost less to prepare from an attorney fee perspective because there are no formal requirements, which means we can focus on disclosing the invention in its full detail while still preparing an exceptionally detailed application that costs a fraction of the cost of a nonprovisional patent application it is a filing that counts in a first-to-file scheme - used to secure an early filing date A PPA is also held in confidence with the USPTO, even if it is not converted to a regular application. More specifically, a PPA will not be published by the USPTO unless a later filed published application or issued patent claims the benefit of the PPA’s earlier filing date. no requirement that a PPA include any claims to an invention. 35 U.S.C. 112 (a). Those requirements can be divided into an “enablement requirement” and a “best mode requirement.” Section 112 (a) specifically states: The enablement requirement “the specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and” The best mode requirement “shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.” In other words, a PPA must disclose enough information that a person having ordinary skill in the same technology would recognize that the invention claimed in a later-filed non-provisional application is described in the PPA upon which it relies. If the PPA description is inadequate and does not meet these requirements, than a later filed regular application cannot claim the benefits of the PPA’s earlier filing date. Cons: pre-filing disclosures permitted by the USPTO may in fact disallow patenting in some foreign countries. Furthermore, even in the U.S., if the pre-filing disclosures are made more than one year before the filing date of the provisional patent application, patenting in the U.S. is likewise precluded. Although the initial cost is low, the required follow-up non-provisional filing fee means that the applicant is actually paying two fees to achieve what an initial non-provisional filing might have accomplished. The provisional patent application preserves the date and renders temporary protection but does not fully protect the invention unless and until the subsequent non-provisional filing or conversion filing meets all of the formal requirements for patent protection. Accordingly, some applicants may gain a false sense of patent protection when they in fact may wind up with no protection at all if the latter application or conversion does not meet with the examiner’s approval  (No formal examination and no issuance) Here is a lightly-edited transcript of the podcast episode: Anthony: Okay everyone. Welcome to the Law & Business Podcast. Anthony Verna here with our patent agent. Wil Jacques, how are you doing? Wil:

Law & Business Podcast with Wil Jacques On the new episode of the Law and Business podcast, Wil and Anthony talk about when clients have an idea. Episode 31 starts with the first words many clients and potential clients have:  “I Have an Idea”.  What is next in the intellectual property development process?  What are the first questions that a potential client is asked in a consultation? Law & Business Podcast with Wil Jacques -What is your business plan? -Is this a product or is this an idea that deserves patent protection? -Patent:  What makes this idea or product useful? -Utility: How do we know that a product is new? -We need to do a search.  Patents.  Patent applications.  Journals.  Pictures.  Videos.  Can this invention be found in action? -Looking at keywords, concepts, elements of the idea or product. -Are there differences between what is found and what is disclosed by the client? -Looking for suggestions in the prior art that is relevant to see if any prior disclosures teach the invention that the client has developed. -Looking for material that is new, useful, and not disclosed. -Design patents: Ornamentation may be different.  The design has to be different, even if the utility is the same as another product. -Copyright law: Can a product fall under copyright law (for example, a three-dimensional work of art)?  This protection is of what is not useful in a product.  For example, a lamp that has a statue.  So the light bulb is on top of the statue.  So there is a portion of the product that is a work of authorship; it is a work of art and would fall under copyright law.   But there is also a useful part of the product (the lamp) which does not fall under copyright law. -Trademark law:  Branding and selling a product.  Think of a box of Pepperidge Farm cookies.  In these mixed boxes of cookies, the company name is a trademark – Pepperidge Farm cookies.  However, all of the brands of the cookies are trademarks, also.  Be it Milano, Chesapeake, Chessmen, etc.  Customers are able to create the relationship of the brand to the product.  Trademarks can include color, sounds, shapes. -Trade dress law:  How the packaging of a product matters and creates that relationship to consumers. Wil and Anthony talk specific examples of intellectual property development and enforcement. Here is a lightly-edited transcript of the episode: Anthony Verna: All right, everyone. Welcome to the Law & Business Podcast where we continue with our quest to talk more about intellectual property. It is a journey. I have to say that when I litigate, I know a lot of litigants are looking for that instant response and it's not an instant response. It's a long journey. When people file a trademark, they want that instant response, but it's not an instant response. It's a six month journey. When we file a patent, it's not an instant response. Wil Jacques: I have to agree with you, Anthony. It's certainly not in the first question that comes out of my inventors’ mouths or can I get a patent? Well, we'll have to see. Anthony: This is Anthony Verna. I'm here with Wil Jacques, patent agent for Verna law. And we're talking about ideas today. What happens when somebody calls our office and says, “I have an idea”? Wil: This is the foundation, this is where it begins. Anthony: When a client tells me or potential client tells me, “I have an idea”, I ask what the idea is, I then ask, what's Your Business Plan? Because ultimately after everything we're going to talk about, I want a client to be able to say, yes, I want to make money on this and I want to sell it and it's going to be sold to people A of X ages Y incomes, and they're going to have a need for this product because enter your reason here. Wil: Agreed. Anthony: If I don't hear that, I'm going to try to do some little coaching and counseling so I can get some answers like that. Just to kind of plant ideas in the head.

It's Law & Business Episode 30: The Costs of Litigating. Law & Business Podcast with Wil Jacques Wil Jacques, patent agent to Verna Law, P.C., and Anthony Verna, managing partner of Verna Law, P.C. talk about the costs of litigating and the benefits of litigating.  They talk about damages in patent infringement, copyright infringement, and trademark infringement cases. In patent infringement lawsuits, there are two overall theories: Lost Profits and a Reasonable Royalty for infringement. Since 1952, 35 U.S.C. § 284 has governed the award of damages in patent cases: Upon finding for the claimant [patent holder] the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court. Lost Profits Lost Sales: Lost profits from sales are the classic and most common type of lost profits damages. Lost sales constitute sales that the patent owner failed to make due to the infringement, as well as sales the infringer made that the patent owner would have made but for the infringement. Price Erosion: Price erosion damages arise where the patent owner was forced to lower its prices or offer discounts to meet the infringer’s competition and where the patent owner was unable to raise its prices due to the infringement. Unpatented Items: A patent owner may seek lost profits on unpatented items. For example, if the accused product is a multi-function device of which the patent covers only one feature, the patent owner may seek lost profits for the entire device. Entire Market Value Rule: The “entire market value rule” is used to determine if a patent owner can recover lost profits where the patent covers only a feature of a multi-faceted device – the patent owner must prove that the patented feature drives demand for the overall device. Future Lost Profits: Projected (or future) lost profits are losses that the patent owner expects to incur in the future due to the infringement. The importance of future lost profits is demonstrated by its potential for large awards, as the patent owner may be able to project substantial losses far into the future. Damage to Reputation and Goodwill: Another lost profits theory that patent owners have advanced, albeit infrequently, is damage to the reputation and goodwill of the patent owner and/or patented product. The patent owner argues that the infringer’s product is inferior to the patent owner’s patented product and, as a result, has caused damage to the reputation of the patented product or the patent owner. In other words, the patent owner claims it has suffered damage because of the inferiority of the infringing product. Reasonable Royalty Damages The term “reasonable royalty” is susceptible of two definitions. The first is an actual licensing rate, to which the patent owner and a licensee would have negotiated and agreed entirely apart from any litigation or damages question. This can be thought of as the “reasonable royalty” used in § 284. This negotiated reasonable royalty is the minimum amount of patent damages the patent owner can recover, equal to what the patent owner would have negotiated as a royalty in the first place. The second meaning of “reasonable royalty” applies whenever the patent owner is unable to prove actual damages (i.e., its lost profits). The money awarded to the patent owner (however it is computed) is usually called a “reasonable royalty.” Interest and Enhancement of Damages A patent owner may also obtain relief in the form of collateral assessments, which include prejudgment interest and discretionary enhancement of damages up to three times the amount found or assessed – enhancement may be based on willful infringement or litigation misconduct. (A separate sub-page in this damages website addresses prejudgment interest and post-judgment interest.) In exceptional cases,

On Episode 29 of the Law & Business Podcast, Wil Jacques and Anthony Verna talk about copyright infringement, trademark infringement, patent infringement, and some thoughts to avoid infringement. What one needs to do is to assess the amount of damages that may be awarded because lawsuits can be expensive. Copyright infringement occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner. Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services. Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Wil Jacques, Patent Agent Wil discusses the need to understand how a product functions and works and solves problems.  That deep dive into the inner workings of a product is the only proper method to draft a patent and understand who may be infringing on that patent. Counterfeiting is the act of creating a fake.  Counterfeit products are fakes or unauthorized replicas of the real product – especially in relation to the trademark and use of the exact, same trademark. Wil and Anthony also talk about monitoring intellectual property. Wil Jacques:  https://www.linkedin.com/in/wiljacques/ Anthony Verna: https://www.linkedin.com/in/anthonyverna/ Here's a lightly-edited transcript of the episode: Anthony Verna: Welcome to the Law & Business Podcast. We keep continuing with season two. We're here with my own patent agent. Wil Jacques, please say hello. Wil Jacques: Hello. Good to be here again. Anthony: Thanks for making some more time to come on. Wil: Always nice to talk with you, Anthony. We have such a great topic. I couldn't afford to miss this one. Anthony: So both you and I have had to deal with infringers and counterfeiters; the possibility of copying in some aspect in our past and our current lives. And what I want to do today is talk about either finding, dealing with infringers counterfeiters and some solutions that you and I have seen throughout our careers. The first thing I do want to talk about though is defining what infringement is and on a soft IP basis in copyright law infringement is basically an authorized copy of a work that's protected under copyright law. That unauthorized copy, it could be made, it could be sold, it could be publicly displayed. Any particular amount of rights that's unauthorized in a copy, that's a copyright infringement. Trademark infringement is very similar. Now it's a little different because in trademark law we do see similar trademarks, not the same and trademark could infringe and certainly there has to be some kind of economic relationship between the plaintiffs’ and defendants’ marks and their products. We kind of have a formula that we look at to determine if there is infringement, but basically infringe on means similar mark on similar goods and services. And we also have some other trademark thoughts such as trademark dilution, which is somehow harming the value of a famous trademark. So that's what it is on the softer side of IP, on the harder side of IP, how do you look at similarities in product fest patented and a product that might copy or have some similarities to that? Wil: Oh, I got to say that a, you've made a comment and I had to laugh first when you talked a little bit about the amount of damages or money that would be there. Certainly this is not a game you want to get into unless there is sufficient dollars on the table, too. Anthony: Absolutely right. Make it a worthy effort. Wil: But, I would say that, in what we would call the hard IP world, or patents, in particular, we kind of parallel what you do: essentially copying is copying.

In the "Law & Business" podcast, Episode 28, Raj Goel of Brainlink International talks about Operational Maturity in business. What is Operational Maturity and what are the levels of Operational Maturity (OML)?  The difference between the OMLs of businesses depends upon the standardization of the internal and external processes they employ, their competency in the services they provide, and the value they place upon industry investments. A firm with a low OML (level one or two) generally lacks the uniformity of resources and knowledge of operations to run a business effectively. Businesses with level two OMLs have generally reached a point where processes are more standardized and repeated but complete uniformity has not been achieved. In this podcast episode, Raj Goel talks about where his business, Brainlink International ranks on the OML chart, what his business did to climb to that level, and what can still be done to grow. At a level three OML, the business has established an overall consistency throughout the organization and within the services it delivers. The business is capable of developing strategic plans to drive its services as opposed to merely keeping them afloat. Businesses that have reached the operational maturity of a level four or five have learned to leverage their industries' products or services effectively.  The firm will deliver consistent service and support, a stable business environment, and proactive monitoring of its services or products. The difference between a level four and a level five business exists primarily in the more mature businesses' ability to enhance its customers gain a competitive edge within their industries. A firm with a high operational maturity level will act as a trusted provider and a trusted partner for its customers or clients. Raj Goel also discusses Brainlink's need for standard operating procedures (SOPs) and how following standard operating procedures helps build efficiencies and helps continue to grow the OML of Brainlink and build the business overall. Raj Goel, CISSP, is an author, entrepreneur, IT expert and industry leader that specializes in the field of cyber security and privacy law. As founder of Brainlink, Raj has spent more than 20 years developing proven IT solutions for a range of high-profile clients in the financial, construction, architectural and property management industries. His uniquely developed SOPCulture Process (winner of 2015 SmartCEO’s Culture Award) has changed the way his clients think about documentation by showing them how to develop processes for documentation of each and every task, allowing them to rapidly increase productivity, eliminate redundancies and increase quality of service to their clients. Here's a lightly-edited transcript of the podcast episode: Anthony Verna: Welcome to the Law & Business Podcast. I am here with Raj Goel from Brainlink International. How are you doing, Raj? Raj Goel: I'm doing great. How are you doing Anthony? Anthony: I am well, thank you Raj. Why don't you tell everybody who's listening about Brainlink? Raj: Brainlink is based in New York City and is an IT and cybersecurity consulting firm. We work with hedge funds, construction firms, and fast-growing businesses that are operationally mature/ Anthony: And I want to get into this topic of operationally mature businesses. You and I were having dinner and we talked about it for a little bit and it was a fascinating topic to me about how a business owner thinks about his or her business.  There is a difference between that operational maturity and not having that operational maturity. So why don't you give me your general thoughts on, on the topic? Raj: As far as the beginning, it's just not my revelation. General thought: There's a whole body of business literature that talks about OMs, operational maturity levels, and essentially there are five stages in every business is life cycle,

The special guest in Episode 27 of the "Law & Business" podcast is John Eastwood, a partner at Eiger Law in Taipei.  John and Anthony discuss the issues that many American businesses have when they start production of their products in the Greater China Market. As a senior partner of Eiger’s Greater China Practice, John has headed up the firm’s intellectual-property and technology practice for the past several years, assisting clients with trademark, patent, copyright and trade-secret matters. In John’s role chairing the the European Chamber of Commerce Taiwan (ECCT) Intellectual Property Rights Committee for the past many years, he has worked closely with the European Commission, U.S. State Department, prominent academics and local government authorities on intellectual-property policy matters. John Eastwood, Partner, Eiger Law, Taipei Our first topic is about having a sourcing agent, distributor, or other local agent in China file a trademark application for the American business.  There are several pitfalls in having that local agent file a trademark application. Chances are the trademark application is badly drafted, only covering part of the product line or part of the scope of the planned-for business activities. John and his firm have seen filings that completely omitted key products and service activities because even a well-intentioned trading counterparty may not understand the business well. Local trading counterparts often don’t know how to respond to queries from the Taiwan IP Office (TIPO), meaning that they miss deadlines or don’t know that some of these TIPO queries can be easily enough resolved. This issue does not just happen in the the Greater China Market.  For example, Anthony discusses a case in which his firm represented a Germany company, whose local agent filed trademark application in his own name and was required to be a party in a trademark cancellation proceeding, despite not having worked for the company for several years. Another topic John and Anthony discussed was the failure to supervise the manufacturing company in the Greater China Market.  There is some truth to the notion that when a foreign company makes goods in China, that business is basically training its own future competitors. John and Anthony discuss how a business owner is able to make sure those issues do not begin.  After all, John's view is his firm has found that the pool of counterfeit manufacturers includes formerly authorized manufacturers, whose exact skills in making authorized products in the past make them able to make dangerously close counterfeits of products in the future. When a local manufacturing partner starts to realize that the American business is not paying attention, that’s when they start to evaluate their own rational self interest in the form of under-reporting, running extra lines of unauthorized product, inflating costs, or other such games. Typically, such situations continue onwards until finally a day of reckoning comes where the European brand owner terminates the local manufacturer, whereupon the local manufacturer speedily moves on to making straight-out counterfeits of the product.  John gives some tips on how to keep that manufacturing company in the Greater China Market happy.  Relationships still matter and having feet on the ground helps build those relationships. This was another fun episode to record.  It is chock full of excellent advice for any company trying to move outside of their home market and bring their manufacturing to the Greater China Market. Here is a lightly-edited transcript of the podcast episode: Anthony Verna: All right, and welcome to the Law and Business podcast where we continue our series here at the International Bar Association’s annual convention from beautiful Sydney, Australia. I'm here with John Eastwood. How you doing, John? John Eastwood: Hey, g’day. Anthony Verna: Wow. After we just had  an Australian solicitor on last time,

In the Law & Business Podcast Episode 26, Australian barrister Ed Heerey helps to compare U.S. and Australian Rights of Privacy and Publicity law and issues. This is one of the most fun episodes of the podcast.  Anthony visits Ed Heerey, an Australian barrister, to discuss Australian rights of privacy and publicity.  Anthony and Ed compare famous Australian cases with famous American cases. Ed Heerey, Barrister, Australia Australian rights of privacy and publicity are completely judge-made, stemming from Paul Hogan (famous as Crocodile Dundee) suing an Australian company for a parody advertisement that it made. Here is the original scene from "Crocodile Dundee": Here is a terrible advertisement for a shoe company in Australia.  But, as one can see, the mise-en-scene is taken from "Crocodile Dundee." In this case, the majority of Australian judges found the defendants liable in "passing off." The relevant issue on appeal, according to the majority, was "whether a significant sec­tion of the public would be misled into believing, contrary to the fact, that a commercial arrangement had been concluded between the plaintiff and the defendant under which the plaintiff agreed to the advertising", a question which was co be answered in the affirmative.  Another judge in the case said that character merchandising "should not be seen as setting off a logical train of thought" in the minds of the public, and its importance lies in the creation of an association of the produce with the character, not in making precise misrepresentation. Accordingly, to ask whether the consumer reasoned that the plaintiff had authorized the advertisement was to ask a question which was "a mere side issue."  What mattered was the fact that the consumer wished to identify with the character or personality and was moved "by the desire to wear something belonging in some sense to Crocodile Dundee (who is perceived as a persona, almost an avatar, of Mr. Hogan)."  According to the majority, the arousal of such a feeling by Hogan himself could not be regarded as misleading, since "the value he promises the product will have is not in its leather, but in its association with himself."  An unauthorized advertisement, on the other hand, would be misleading since it would lack the valuable association between the product and the celebrity. This is very similar to the Vanna White case from California.  The difference is that there are statutes in California (and in almost all U.S. states).  However, the California court similarly ruled for the plaintiff in stating that the advertising (despite not using any aspect of the actual person, just hinting at/parodying the person).  Click here for more on that ad campaign from Samsung.  Click here for the court's full decision. Samsung Ad that Vanna White sued about These cases provide ripe discussion for debate on the rights of privacy and publicity and how Australian and American courts may appear to treat them similarly or differently.  This is a fun episode. Next time Ed is on the podcast, we'll be talking about an advertisement featuring former Olympian Ben Johnson in Australia that was banned (and why it would not be in the United States).  Here's that advertisement:

This is our first "Law & Business" podcast episode recorded during the International Bar Association annual convention.  This year it was in Sydney, New South Wales, Australia. With John Rubinstein of Rubinstein Phillips Lewis Smith Ltd. of London, Episode 25 of the "Law & Business" podcast covers differences between the American and British trademark systems and differences in law. One particular example is "The Prince of Comfort" (originally in German) and how it may have a lack of distinctiveness in.  John Rubinstein had interesting issues in registering "GQ" as a trademark. This was John's first podcast episode ever - and he did a fantastic job.  John and Anthony also discuss how other trademarks are registered and how strong, for example, the "Burger King" trademark is.  (Please note:  In Australia, it's Hungry Jack's, so there's no doubt that the trademark there is arbitrary.) John's particular focus is disputes concerning publishing, intellectual property, the media, art, commercial contracts, professional negligence and IT. Over the years John has applied existing and evolving legal principles to deal with technological developments in IT, electronic media and communications. He has also promoted, and developed an expertise in privacy related law. John Rubinstein, Rubinstein Phillips Lewis Smith Ltd. A member of the International Bar Association since 1989, John served as Co-Chairman of the Art and Cultural Property Law Committee from 1998 to 2001. He speaks fluent French and conversational Italian. Here is a lightly-edited transcript of the podcast episode: Anthony Verna: And welcome to the Law and Business podcast. I'm here with John Rubenstein from Rubenstein Phillips Lewis Smith in London. How did I do? John Rubenstein: That is brilliant, Anthony. And we are both in Australia and we're all jet lagged. Anthony Verna: I've been here for a couple of days. That jet lag for me is… John Rubenstein: So you reckon that if we put up for an Australian trademark called jet lag, we'd be ruled out for descriptiveness. Anthony Vera: Well, what are we selling with jetlagged? John Rubenstein: Travel services? Anthony Verna: I think that might be a little on the descriptive side of life. John Rubenstein: Well, I'd argue that this was exclusive to the exercise of traveling and the selling of traveling services. So, this provides us with a suitable entry to the topic of, whether a mark is registrable because it is inherently incapable of being distinctive and whether it is descriptive. And I guess that when you travel, part of the quality of traveling is being jetlagged. Anthony Verna: Not always. If you're going North and South in the same time zone, there's, there's no jet lag. Go New York to Miami. There's no jet lag. John Rubenstein: Ahh, but see, quality doesn't have to be consistent quality. And, we have a number of cases in the United Kingdom, where we are subject to the European union regime on trademarks. Regulation 40 of 1994 and Trademarks Act 1994 which has stood the test of time. It's become an interesting battleground between brand registrars and the trademarks registrar who is fighting a rear guard action, using the swing doors of sections three, one B, which is an absolute prohibition. If the mark does not distinguish the goods as belonging to one particular owner, it will be ruled out, and section three one C of the act, which rules out marks which are descriptive of what is being offered. Anthony Verna: So it sounds like that the UK intellectual property office as compared to the United States patent and trademark office likes to kick things out a little bit more. And it sounds as if there are some brands that the UK IPO doesn't like even though they would technically qualify as trademarks. John Rubenstein: Well, the reality is you have to work quite hard in some cases to persuade the assessor that the mark is capable of being registered. And it is to my mind,