The Ultimate Discussion of IP Law with Howard Leib

Episode Notes

Transcript

Intro:  Welcome to the official Aba Law Student Podcast, where we talk about issues that affect law students and recent grads.  From finals and graduation to the bar exam and finding a job, this show is your trusted resource for the next big step.  You’re listening to the Legal Talk Network.

Meg Steenburgh:  Hello, and welcome to another edition of the ABA Law Student Podcast.  I’m Meg Steenburgh, a 3L at Syracuse University College of Law JDI Program.  Today we are honored to have with us Professor Howard Leib.  Professor Leib is an attorney and educator with over 35 years of experience with each.  As an Intellectual Property and entertainment attorney, he has represented clients such as Kiss, Whitney Houston and Bobby McFerrin as well as corporations such as Atlantic Records, Universal Entertainment and Rhino Entertainment.  As an educator, he has taught for numerous schools including Cornell Law School, NYU, Syracuse University College of Law, and Newhouse School of Public Communications.  He is a graduate of Columbia University and Benjamin N. Cardozo School of Law, where he graduated with honors and was a member of both the Law Review and the Moot Court Board.  Professor Lieb has also served as a member of Cardozo’s Board of Trustees.  Professor Lieb, thank you so much for joining us today.

Howard Leib:  I’m really happy to be here with you, Megan.

Meg Steenburgh:  I’d like to begin today’s discussion with Intellectual Property and trademarks.  Trademarks are everywhere as you’ve noted in the past, trademark law affects commerce, consumer protection, many areas, huge part of the nearly $7 trillion of value that Intellectual Property adds to the U.S. economy every year.  I think that one of the many practical tips as a student or lawyer is that when it comes to your client, you likely have IP issues right off the bat, it’s not very niche in that sense.  Let’s start, though, with the definition of trademark.

Howard Leib:  Well, a trademark is any mark which can be a word, a picture, a symbol, a sound, a color, even a smell that can distinguish your product from somebody else’s product or service.  It is designed to allow consumers to recognize the source of goods.  People don’t think about it this way, but at its heart, trademark law is a consumer protection, statute.  It’s designed so that when you go to the store and buy a brand, you like, you know it’s coming from the source that you got it from last week, not somebody else who just happened to slap that label on.

Meg Steenburgh:  So what are some of the risks and exposures clients have when it comes to IP?

Howard Leib:  Well, they come from two sides.  They’re basically, are you infringing somebody else or is somebody else infringing you?  Starting with the first, people come out of the gate with an idea for their company, their product, their service, whatever it may be.  Take for example, Meta, Facebook became Meta.  Somebody didn’t do their job very well, because as soon as Facebook became Meta, the lawsuit started dropping.  The reason for that there are a lot of other companies out there already called Meta.  How will that shake out?  Facebook will buy them all off.  That’s what happens.  But if they come up with something else that people didn’t already have, they could have saved the cash.  Happens frequently, people just don’t do their research fully or correctly, so that’s when you’re infringing somebody else.  They come after you and say, “You have to stop,” and then all the time and money and effort you put into promoting your product under that name to that point or that mark to that point lost, because you have to redo it.  The other side of it is somebody’s ripping you off.  You have this wonderful product that people love and other people come out with the product and stick a similar or for that matter identical name label trade which is how your product looks in the market in order to or inadvertently, which does fool people into thinking that it’s coming from that same source.  And relatedly I just yesterday finished reading Don Quixote.  That was my summer project, reading Don Quixote, I’ve never read it before, 941 pages, and the last part of it, Cervantes, spends a lot of time mocking this other writer who after the first Don Quixote book came out wrote his own Don Quixote book and Cervantes is what is now the third Don Quixote book.  He spends huge amounts of time saying, “That’s not the real Don Quixote.  I’m the real Don Quixote, you’ve never met me.  Why are you talking?  Trademark works the same way. If somebody comes out with you, a product, with your name, people now think it came from you, and then you have to do things, and it gets more complicated.

(00:05:10)

We use it, because we have the Internet, which brings products from other countries right to your laptop or phone or whatever it may be.  Trademark, as we may get into later, is what I refer to as geospecific.  The fact that you have rights here doesn’t mean you have rights in Canada, China, Japan, wherever it may be.  So as you said, every company that markets a products or service under what we call a brand name is dealing in trademark.  I have stats which I have over here, from 2014, it’s the most recent date I have.  In terms of employment, total employment from trademark intensive jobs is roughly 17% of U.S. employment in 2014.  Probably higher now makes up a huge part of our GDP because we live in a society now that doesn’t really market stuff, we market image.  And trademark is your image.  It is associated with the goodwill.  It must be associated with goodwill that people have for your product.  So that if I like Coke and don’t like RC, I go to the store, I pick up something that says Coke on it.  I feel good about that product and that’s why I’m buying it.  So I have said to my classes, once you understand IP laws, especially trademark law, you never see the world the same way again, because you can see all the deals and all the legalities that are going on behind the scenes of these things.  And it’s not necessarily good for your mental well-being, but it is definitely something that you will see, and I do all the time when I go out into the world, when I see things on TV.  It is amazing how often intellectual property issues just popup in the news, because the things we deal with every day almost all have IP attached to them.

Meg Steenburgh:  I want to just touch on Meta real quick in terms of not only do they have to buy out the others with that name, but don’t they risk the possibility of having that name become generic because it’s part of the Metaverse?

Howard Leib:  Well, is it possible?  Sure.  The reason you’re even asking the question is because it’s not a very creative name.  It’s like “We’re in the Metaverse, so we’ll call ourselves Meta, okay.”  Could it be generic? Maybe.  I suspect that Meta is a big enough entity that it will be able to put out enough material that people will associate it with them.  Could it flip over and become generic eventually?  Sure.  There are a lot of things out there that we haven’t declared generic yet that I think are Kleenex, thermos, scotch tape, Xerox.  These are things that we don’t use to refer to a specific company in everyday usage, but still maintain their trademark status because they haven’t really been challenged.  At some point will Meta get challenged?  Could well be.  I would say, at this point more descriptive and I guess I should clarify for people listening.  There is what we call the Abercrombie scale of how marks work.  They start with generic, and we use that term without defining it.  Generic is a word that is the goods like water for water and apple for an apple, not for computer products or music, but for an apple, it’s generic, for music it’s not.  Different marks can have different statuses depending on the goods and services they’re connected with.  Next up is descriptive.  So wet would be descriptive of water.  It doesn’t define water, it’s not what water is, but it describes it.  And you can get trademark rights in a descriptive word only if you can show actually or constructively that people associated with your company, with you as being the source.  You can either do that through surveys and such or showing five years of exclusive use.  The statute allows for that as constructive proof of association.  Arbitrary is next.  Arbitrary is like apple for music.  Apple has a real meaning that doesn’t have any meaning connection with music, and then there’s fanciful, which is something that just doesn’t didn’t have any meaning to it.

(00:10:01)

Miracle as a trademark would be fanciful.  And as you move from generic to fanciful, your mark become stronger and stronger and stronger.  You can never get protection for a generic.  You can, as I said, sometimes get protection for a descriptive and Meta as describing the Metaverse or really describing that your goods exist in the Metaverse rather than being the Metaverse.  It’s probably more descriptive than generic.

Meghan Steenburgh:  Well, as you mentioned you see trademark now more a lot in the news and there was an interesting article just recently with that word THE, capital T, capital H, capital E, trademark.  Generic word in that sense what we just discussed but proponents of the mark argued that placing the word capital T, capital H, capital E, THE in all caps on articles of clothing should be protected because it points to the source of origin.  The Ohio State University, the trademark examiner initially said, no ornamental, failed to function as a trademark.  So, the university placed it if I’ve got this right, they placed the mark on the label so that it indicates the source.  What do you think of capital T, capital H, capital E being trademarked?

Howard Leib:  Well first, I actually have in front of me a copy of the label they put it on so you’re correct.  Break that down a little for people who haven’t taken my class.  First off, you use the word generic for the.  It’s not generic.  It’s a word.  It’s a common word, extraordinarily common word but that doesn’t mean it is not susceptible to being a trademark.  Remember trademark becomes a trademark when people see it as a source of goods.  The entire point from The Ohio State University is people associate the word the with them.  First off, I think it’s silly.  A large portion of trademark Twitter and yes, there is trademark Twitter just went completely crazy when this happened.  Some going how could you do this and the others laugh.  Let’s break it down.  First off, Ohio State does not own the word the.  They have trademark rights in the word in connection with certain goods and services.  They originally filed it to show — and when you file a trademark you have to show the Trademark Office how you’re using it.  You have to give them what we call a specimen of use that shows the mark and use.  What they first gave them with it, it was a t-shirt with the word the emblazoned across the chest of the shirt.  That was what the Trademark Office said was ornamental meaning people don’t believe that that’s a trademark.  They just think it’s a design there.  There’s a case that came out oh, about two or three weeks ago, from I think either the Ninth or the Second Circuit that said that some university, I forget which one, could not claim trademark rights because people didn’t care about the source.

Now there’s a new case of the name.  They just cared about the name of the team and they were buying it to show their support for the team, not because they cared about the source.  There is another case I believe from the Second Circuit completely contrary to that one, just totally the other way because and they don’t tell you this in law school, cases come out differently, why different court, different judge, different day.  So, even though you have the same facts, people see things differently that’s why there are a lot of non-unanimous rulings on the Supreme Court and you get different rulings.  It’s not because somebody wore a green shirt or yellow shirt or whatever it may be.  So, we now have a split in the circuits about whether or not it makes a difference why consumers are buying.  Ohio State is saying the is simply something they have used all along.  They filed it originally and we’ve been using it for a long time.  When the Trademark Office said no, no, no, no, no, that’s just a design.  That doesn’t show source of origin.  What Ohio State did, The Ohio State, did was change the basis on which they filed.  You can file a trademark application either on the basis that you are using something or on the basis that you intend to use something.  And so the Ohio State University said, “okay, we’ll change it over to” we intend to use this mark.  And then what they did was they created shirts because they can do this that use the word the, not just emblazoned across the chest but as the label in the back like where your neck goes and it says V-Team Shop Exclusive and with the V with a TM next to it.  Again, I’m staring at it and on that basis, they then were able to say, okay now we’re using it and the Trademark Office said okay, that’s fine.  There had been a dispute with one of the designers Mark, I’m blanking his last name who was also trying to claim trademark rights in the word the but they work that one out and now The Ohio State has the rights to the mark the for sure to touch.

(00:15:15)

However, it is a very limited protection.  If you put, I don’t know, The Little Red Schoolhouse on your T-shirt as the source of your goods, that’s not going to be seen is infringing even though it embodies the entirety of their mark, it is such a common word that they’re not going to keep you from doing that.  The Little Red Schoolhouse is not going to have to become Little Red Schoolhouse.  It can still be the as long as the does not become the focus of the trademark.  So yeah, it’s silly, but they got a lot of press for it and probably a lot of alumni board shirts and that was the whole goal.  So there you go and the real reason for they’re doing it is to keep other companies not from using the as part of a larger mark but for marketing their own The shirts.  People would associate with The Ohio State University.

Meghan Steenburgh:  How did trademarks translate in the virtual world in terms of for example virtual items fashion where — for where and used on Avatars include the names Gucci, Nike, Louis Vuitton.  I bet you know better than I.  It goes — the list goes on.  In many cases, the companies themselves did not create these virtual products outside companies did and they argue under art and freedom of expression, it’s protected under the first amendment.  How is this happening and is it right?

Howard Leib:  Well, in terms of how does it stand?  We don’t know.  There are cases out there.  There’s the MetaBirkins case right now where somebody has created these working like NFTs Non-Functionable Tokens.  The problem is every question could be an entire class by itself here.

Meghan Steenburgh:  That’s right.

Howard Leib:  Because now we can go into NFTs and what are they and why they’re told, but okay right, that’s just my view.  That’s not a legal decision.  In Metabirkins, some artists has created NFTs that looked like Birkins, the handbag and they’re being sued.  They are defending that it is, you know, relates that it’s an art project.  There is a concept in trademark law based on the Rogers decision, Ginger Rogers, if any of the law students listening to this know who Ginger Rogers is and reminded how old I am every time I use a cultural reference to my students.  And that the court basically said that you can use another person’s mark in your artistic work as long as it is an artistic work and entitled to first amendment protection as opposed to purely a commercial work, that it is not done to deceive and that it has some relationship back to the original and that relationship can be really tenuous.  It doesn’t have to be all about.  It can just be there.  This is the Rogers test.  That is partially the basis on which many Metabirkins is defending.  The court bought it as a concept saying that it applies in this case and now they’re going to go through the factuals of whether or not there’s intention to deceive and all the rest of that.

The short answer to your question is way too late for me to give you a short answer, but the short answer to your question is how do they work the same way they work anywhere else.  Remember trademarks are about trying to make sure consumers are not confused.  Consumer confusion is at the root of trademark infringement.  That’s ultimately what you need to show that consumers are being confused as to the source of goods.  That rule holds true for the Metaverse.  It’s just a different forum for it.  We’ve been through this before with computers, which is essentially virtual and domain names which are also virtual.  We have only recently, meaning within the last oh, I don’t know five years, got the ruling from the Supreme Court on domain names and trademarks and how those can interreact.  So we used to think that a generic word going back to that with a .com or .edu or whatever it might be was just a generic term and couldn’t be a trademark.  There was a bad slip almost, whereas in the bookings.com case recently, the Supreme Court said, “Oh no, as long as you can show that people associate booking.com with a specific source, that’s a trademark.  That’s fine.”  Supreme Court is often wrong when it comes to trademarks.  They know very little about it but I’m not on the Supreme Court through some oversight that I’ve never understood and they are, so they get to set out what the law is and I don’t.

(00:20:02)

So we are figuring out right now because cases are popping up, there’s about a half a dozen of them out there involving mostly NFTs where people are using other people’s IP as part of their NFT like the Metabirkin’s case and there are others and saying, “Oh no, we can do this.  It’s a different medium and it’s fair use. We’re not using up your market.”  And people going, “But we could be doing that too and you could be licensing it from us.”  Then we get into the issue of does every use have to be licensed.  Actually working on those slides right now for next term.  The issues come up as to the more often you say things have to be licensed, the more often consumers believe that everything they see is a license, which means they are now confused as opposed to consumers believing that you can have other uses that aren’t licensed.  It is a very interesting societal as well as legal question.

Meghan Steenburgh: We are speaking with Howard Leib. We will be right back.

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Meghan Steenburgh:  We are back now with Howard Leib, Professor of Law and Practicing Attorney specializing in Intellectual Property and Entertainment Law.  Let’s head over to Mickey Mouse now.  As you said, every one of these questions could be an entire course but lobbyists from Disney successfully change copyright laws over the years to keep Mickey Mouse out of the public domain of the original Mickey, and that ends in 2024.  Now, there are talks of taking that which is copyrighted and securing trademarks.  I definitely see it from Disney’s perspective in the sense that an outsider’s use of Mickey Mouse is a scary thought, yet this is the law, it’s part of the Constitution.  Disney repeatedly changed the law to its benefit.  Should it gain trademark protection?  Is this another loophole to be manipulated?

Howard Leib:  Well, let me modify one thing.  They already have trademarks for the original Mickey.  They are filed.  They’re out there and a whole variety of categories.  If you go and search the Mickey Mouse visual trademarks, you can watch Mickey change over the decades as Mickey has.  Yes, the copyrights on the original Mickey, the Steamboat Willie Mickey will fall into the public domain January 1, 2024.  For decades, not only Disney but mostly Disney, I saw recently that the Rodgers & Hammerstein Estate, I think it was — no, the Gershwin estate had also been very active in this. Pumped money into lobbying Congress to extend the life of copyright so as to keep everybody else’s grubby little mitts off of Mickey Mouse.  But this time around, they didn’t do that.  The last time they did it when they change the term of copyright to life of the creator plus 70 years and for corporate items 90 years, people started getting really upset.  There were a whole bunch of law professors who filed an action saying this no longer meets the Constitutional requirement of protection for a limited time.  Supreme Court said, “Hey, it’s not forever, so it’s limited, so it works.”  Supreme Court’s wrong, but what are you going to do? But they didn’t do that this time.  The earliest Mickey Mouse will fall into the public domain.  The question then is what can you do with it?  This intersection of trademark and copyright that you referred to is a fascinating area because I mean, you could just put out T-shirts that have the original Mickey on them and sell them, and that wouldn’t violate anything because your copyright is gone.  But how do you market it?  First off, if the image is a trademark, then, yes, you have a trademark there and can you say original Mickey Mouse or 1934 Mickey Mouse or whatever it may be?  This will get litigated more heavily than it has been, but the best law we have right now is a case called the Dastar case in which there were these World War II videos that had fallen into the public domain.  It was a documentary about World War II, and it fell into the public domain and other company came and took it and put it out under a different name and the original owner sued saying, “Hey, you’re saying this is your work when it’s our work and you’re using another name.”  The court basically said, “Look, it’s public domain copyright.  You can’t keep it off the market for trademark purposes because that would create this quasi copyright protection that could go on forever.”

(00:25:02)

An important point to note, we haven’t said it, copyright lasts a specified number of years, why?  Because Section 1 Article 1, paragraph 8 says it has to be for a limited time.  Trademark as long as you keep using the mark, can go on forever.  As long as you keep using the mark and your federal registration can also go on forever as long as you keep renewing it every 10 years.  So, if trademark could keep these items off the market, you would now have created a permanent copyright.  The courts have, on the rare occasion, since has come up said, “That’s a no-no.  We don’t want permanent copyright.”  There’s a reason the Constitution says limited time.  People are going to have to thread this needle carefully.  I was mentioning this to you during the break, the original Winnie the Pooh.  The first book, Winnie the Pooh fell into the public domain last January 1st.  So, that book in itself can be put out.  Disney, however, owns trademarks and copyrights, but trademarks in this case, to Winnie the Pooh.  Just the phrase, Winnie the Pooh.  Does that mean you can’t put the book out?  No, you will be able to get that book through Google Books or whatever for 99 cents because it’s public domain or whatever they’re charging now.  I think and I don’t think I’m wrong about this that I can make use of the artwork in that book for a variety of other purposes as long as I am clear in how I label it that it’s mine, my work, not Disney’s, that it is the original Winnie the Pooh or the 1932 Winnie the Pooh or whatever it may be.  I think that’s the year it went in, because again, that doesn’t cause consumer confusion.  Disclaimers are really useful for avoiding consumer confusion.  A lot of companies don’t like to use them because they’re trying to confuse the consumer, but if you’re not, “This is not a Disney product.”  If you put that on there, it’s hard to say you’re confusing the consumer, that won’t stop Disney, one of the most litigious companies in America, from going after people.  And again, a lot of the entities are going to go after going to be small entities that do not have the money to litigate with Disney and they will fall as a practical matter that does not need Disney as right as a matter of law, though they will certainly hold it up to say that they are.

Meghan Steenburgh:  You touched upon this earlier and in a world dominated by computers and the internet, of course, how does one hold and build a brand globally with a trademark?

Howard Leib:  With great determination.  When you register a trademark, any company, any country that is part of the Madrid Treaty, you can use your registration there or even your application there as a basis to apply in all the other countries.  There’s a lot of them.  Most countries on earth are signatories to this treaty.  Not all, but most, and certainly, most of the big ones.  But as I said earlier, trademark is geospecific.  If I have a trademark registration here in the US, since I do for a few things, that gives me no rights in Canada, China, Japan, South America, which I know is many countries, the other countries in Europe, any of those places, but I can use my registration here and bootstrap off of that to file my registrations.  I have clients who have, one client in particular I’m thinking of, producer of a television program, which they syndicate to other countries.  So, we file our registrations there as well.  Now, that sounds like a great thing and it is but that’s only step one because that gives you rights but rights are worthless if you don’t or can’t police them.  It is very difficult, expensive, and time-consuming to police your trademarks in other jurisdictions, in other territories.  Some territories are harder than others.  China is very difficult because you have to sue there.  You can’t sue here.  Their system is weighted through the Chinese National, very intentionally so.  But you only have the rights that the country you’re in gives you.  Also, if there is another mark there that was in existence before you started using yours, you can run a foul with that.  I have a client right now who has a mark here, we’ve registered it through several different goods and services, and somebody from Germany showed up and filed a registration and we basically sent a letter saying, “Hey, you can’t do that.  We’re here.  We’re doing this.  We think your goods interfere with ours.”

(00:30:01)

They what I really believe is a little snit.  Someone’s(ph) saying, “Well, okay, but I have rights here in the European Union and so, you can’t use your mark there.”  I’m not sure they’re right about that and I also just as a practical matter because people forget that the law is a practical concern, not a theoretical or academic one.  We live in the real world with real clients, with real problems, with real facts.  I don’t think that this person who has the resources to come after us even if we are doing something there, we have a book that’s being released in Europe.  And I don’t think that interferes with her mark but we’ll see what happens.  Each of these individuals have rights in their home territories that they are now trying to expand and the other ones trying to keep them from expanding in those territories.  And one of the realities of the practice of laws, clients don’t have — most clients — don’t have infinite money to address these things.  The client I just mentioned is taking a month to decide how much resources she wants to put into this.  And I think that’s a perfectly reasonable thing for her to do.  If you are representing Viacom, I litigated against Viacom somewhat recently and lost, but they have all the resources in the world to throw at something and I have me; David and Goliath lives.  But if you’re representing somebody like that, you can do anything, anywhere and they register all over the place and even they forget to register things, which is why we ended up where we were.  Trademark law is fascinating, because I find in every situation there’s always this little catch, this little thing that you wouldn’t have thought of going in that you find that just flips everything around and in 90% of the time, you find something like that and it just makes it fun.

Meg Steenburgh:  But what happens when the company say, invest in a country like Russia; war breaks out, the companies choose to leave, I believe McDonald’s and Starbucks.  What happens to the trademark in a situation like that?

Howard Leib:  Yes.  McDonald’s became Uncle Vanya’s.  They all got renamed.  Well, this is not a new situation.  When this happened, people were up in arms and helping Russia do this.  Many countries in the world, including us, have a history of taking away trademarks from companies that come from countries they view themselves at war with.  During World War I, we took away trademarks from the German company, Bayer, which is why aspirin is a generic now.  It was a trademark of Bayers, so was cocaine, but don’t tell anybody.  Because they were a national of Germany and we were at war with Germany, we stripped them of their trademarks.  As I’ve said, now, I think three times, trademarks are geospecific.  You only have the rights the country you are in grants you.  And trademark law is different in different countries.  Some countries, the first to file the application gets the rights.  In the US and some other countries, the first two use gets the rights.  You don’t get to say, “Well, my country says it’s the first two use.”  You get the rights that country gives you.  If Russia chooses to strip off the trademark rights, it is not a natural right of humanity to have trademarks.  It is a legislative right granted by a legislature or whoever puts the laws together in your country, and they can do that.

Now, there are downsides of doing that because other companies will be slower to invest in Russia right now, and perhaps for a while to come and the belief that they can build a market and license these people and low and behold, suddenly McDonald’s is Uncle Vanya’s, which I have read his like really, really, really terrible.  People really can’t stand the Uncle Vanya’s burger, whatever they’re calling it.  But they’re all the same stores.  They all have the same machines.  Most of them have the same workers.  They just change the logo around and if you look at the Uncle Vanya’s logo, and I urge your listeners to do a very fast Google and check it, you can see that they’ve kind of taken the McDonald’s arches and turned them on their side and incorporated it into the Russian alphabet usage that would make up Uncle Vanya’s.  When this is all over, will these go back to being McDonalds?  Yeah.  I expect they will.  It’ll be a while, but Russia wants McDonald’s in there.  They don’t want Uncle Vanya’s.  This is like thumbing their nose and saying, “Look what we can do” in the hopes that it would put pressure on the U.S. and our allies through McDonald’s and other companies to pull back but that hasn’t worked out.  They have hurt themselves more than anybody else.

Meg Steenburgh:  I want to pivot to TikTok real quick.  Again, another thing in the news, trademarks are popping up in many countries for a streaming service.

(00:35:02)

And the mark appears to be TikTok Music.  Why is a trademark needed when TikTok already possesses trademark to the word TikTok on its own?

Howard Leib:  Well, the simple answer is, it’s probably not.  It will depend on what they have the mark registered for and depending on the country, the registration may be very important because again, it’s registration in many countries that triggers rights.  But to the extent that I would tell them to register both because they’re using TikTok Music as a single entity trademark and they’re also using TikTok as a single entity.  Again, the same client I was talking about with the TV show, he has the basic name for the TV show, but we have a bunch of registrations out there for that name with other things attached to it because they’re different goods and services.  And so, if the TV show is just the basic name, I don’t want to give specifics here, if you really want to know, go search in the trademark database and see what I’ve registered.  Just find it very quickly and I can’t stop your listeners from doing that, nor do I expect anybody to.  Then, we’ve registered it for yes, music, radio and other things as well, because those are the goods and services and it can be cleaner if you have the resources to do all this to register the full name, as well as the root name.  Now, when you register TikTok Music, the trademark office is going to make you disclaim music.  Meaning you don’t get exclusive rights to the word music because everybody needs to use that.  But you get rights to the phrase TikTok Music as well as when you register TikTok, you just get TikTok.  Could the company get away without doing it?  They absolutely could.  Because TikTok itself is incorporated into TikTok Music as you say, and somebody puts out TikTok Music, it would not be a hard lead to say, “You can’t do that, we are already doing that.”  But it’s cleaner and it also helps keep people off the mark.

Meg Steenburgh:  How much does the USPTO actually police a behemoth like this?  Because if you look up TikTok in the same parent company, they have covered every possible good and service you can imagine; electric shoe polishers, dog grooming services, cigarette machines, peanut butter, air mattresses, they’ve gone through almost all of them and claimed intend to use under those goods and services.  How much is this police?

Howard Leib:  Funny you should ask.  The answer is they don’t police at all.  Zero.  When you file an application, you file what are called different international classes of goods.  So, Class 25, the needs category, is clothing; and you can and I have put together a very extensive list of clothing; shirts, pants, t-shirts, sweatshirts, sweatshirts for men, sweatshirts for women, sweatshirts for babies, socks, all of it and it’s a very long list.  But in order to show, remember, I said earlier, you have to show proof of use.  You only have to show one shirt using it and then they approve your application for that whole class.  And that’s where we sat for a really long time.  I mean, like forever until this year wherein things changed, and the trademark office has instituted two new procedures that allow people either during the registration process or after the registration process a sort of streamlined method of challenging specific goods and services within that list of services saying either they’re not being used or they’ve never been used.  The second being the more common.  This is not been used a lot, it’s just gone into effect literally I think within the last month or two.  So, we don’t have a lot of experience and practice most.  But this will allow people to say, “Hey, they don’t have the rights to baby t-shirts.  They’ve never made a baby t-shirt.”  And then that gets stricken out of the registration.  What will be the practical effect of this?  I’m not sure.  Because when you get a registration, it’s not only for the very specific goods you’ve identified but also for what’s referred to as the natural scope of expansion.  And I certainly think if you’re making t-shirts for men and women then expanding into babies would be a natural place to go.  So, you may not have the registration for it but that doesn’t mean somebody else’s unclear to use it either.  As I said, trademark is fascinating.  You have to do all this different stuff because registering is one thing, using is another.  And remember, you do not get your trademark rights in this country from applying for a trademark.  You get it from use.  So, that is the point you have to look at things from.

Meg Steenburgh:  There’s great cross over between trademarks and so many areas of the law, including Entertainment Law.

(00:40:02)

I cannot let you go without touching upon Entertainment Law, an area in which you still practice.  How did you break into it?  What kinds of legal issues do you see?

Howard Leib:  Okay, two different questions how do I break into it?  Like most people, I kind of fell into it.  It’s something I always wanted to do, I will not spend the 15 minutes with your listeners charting the entire course of my legal career more than too much and your ratings would go down.  But I was working at a patent trademark copyright firm doing primarily trademark and copyright and some litigation aspects of patent.  I’m not a patent attorney, it’s a separate specialty.  For a variety of reasons, I was ready to move on.  And so, I did what I advise other people to do, I reached out to my law school.  The deputy director of the basement office was somebody who had been in my section first year and I reached out and I said, “Nancy, I’m looking, move.  What do you want to do?”  Well, ideally entertainment but I like IP and all that too, so whatever.  A week later, the dean of the school who I knew I had directed him in the law school show and had taken all his courses and we had remained friendly, came down to the placement office and said, “I’ve got this Entertainment Law job.  Who do we know who’s looking?”  And my former classmate said,” Well, how it is?”  And a week later I was an entertainment lawyer, what I refer to as the Big Time, Big Deal Music Firm.  We were the number two music firm in the country, that’s where I worked with the likes of Whitney Houston and Kiss and many of the major companies you mentioned, some of them since I’ve gone out on my own.  Still represent Bobby McFerrin did a lot of work with Rhino after I went out, but I fell into it.  Luck is usually involved, however, you have to be ready when luck comes knocking.  So to your question about what kind of law?

Well, there are some basic areas that are fundamental to entertainment.  Contract Law, Intellectual Property Law, those would be the two most basic.  I deal with those every single day.  Litigation, I think there’s nobody better to put a contract together than somebody who knows how to take one apart and that’s what you do in litigation.  Then there are all kinds of entertainment specialties rather.  There is litigation entertainment.  There’s entertainment immigration.  There’s entertainment business law and general practice which I have a background in as well is a fantastic background if you’re going to work with individuals.  You’re going to work only with corporations.  Corporate law is a great thing to have in your quiver.  I didn’t have that much corporate law, but I had some but I had been a general practice lawyer for a while and I have often referred to Entertainment Law as general law for a specialized clientele.  So my Entertainment Law clients have adoptions and need wills and get divorced and buy houses.  One of my favorite examples of the weird stuff that shows up is Paul Stanley of Kiss walking into my office and wanting to get out of jury duty and being very upset that there was no rock star exception for jury duty.  I explained that even the governor had to sit jury duty.  But your clients will contact you all the time with things that aren’t about their record deal or their next movie or whatever.  Because they are people too, and so they have people problems, and you could send those off to other lawyers to deal with but then you’ll lose the fee.  And I don’t believe in referral fees, I think they are against the model rules and just slimy.  So I neither give nor get them.

So I want to keep things and as where I can.  Also just on a purely business basis, you don’t want to send your clients to somebody they might like better than you.  That would be terrible.  That’s horrendous business.  So I tend to do those things as well.  Fortunately, as I say, I have a background, I have done everything I have mentioned already, from adoptions and divorces to wills and all that.  But there are really only two ways to get back to the earlier question of how you become an entertainment lawyer?  You either fall into it or you create yourself, and you create yourself by going out and finding entertainment clients.  Tell my music law students especially, go down to the venues, talk to the artists, give them cards.  Most of them won’t need a lawyer now, but some of them will eventually, and they have friends who will.  You’re an entertainment lawyer when you’re doing entertainment law.  There’s no certificate, there’s no degree, there’s no licensing test.  I know lots and lots of people call themselves entertainment lawyers who are not who have done an entertainment law thing, and that’s how most entertainment law is done, by general practitioners or people with other specialties who’ve done one or two things as favors to friends of friends or relatives.  That doesn’t make them entertainment lawyers, but they are practicing entertainment law in the same way when I do a real estate deal, it doesn’t make me a real estate lawyer.  I’m not.

(00:45:03)

The hardest thing I do is explain entertainment industry norms to none entertainment lawyers.  And I know when I’m doing a real estate deal, they feel the same way about me.  It’s not that I’m brilliant, it’s just that I’ve experienced.  If you want to be in this industry and nobody’s yelling, “Hey, we’ve got this job” because entertainment law jobs are almost never advertised.  They don’t have to be.  There is too many people who want them.  Then you have to create yourself, which can be done.  It’s not easy, but it can be done.  It’s easier in music than in most areas because there’s music everywhere and a plethora of it, and so many people who want to create music and they all need lawyers at some point, or at least they hope they do.  So that’s how you get into it, and that’s what I do.

Meg Steenburgh:  There’s a lot of great advice embedded in that, but I do want to give you one more opportunity for, generally speaking, holistically for the law students and young lawyers either specific to IP or entertainment law or broader than that.  What’s a piece of advice that you can pass along?

Howard Leib:  I’m going to go a little broader.  I teach my classes, whether it’s music law or entertainment law or trademark laws because I teach all of those at different schools.  I teach them on a very practical basis.  There are clients out there with real world problems and they don’t care about case citations.  They don’t care about Bluebook form.  They don’t care about IRAC essays.  They want answers, and what I would advise anybody listening to this, is seek out courses and especially clinics that give you internships, that give you real world experience.  I love my law school fellow teachers, I do.  There is an old saying “Those that can, do, those that can’t teach” adjuncts like me, we do both.  We teach and we do, and it’s not true because I know a lot of very brilliant academicians who I would be happy to practice with, but most of them don’t practice.  Most of them are academicians because that is where their interests lay.  But your clients don’t want an academician, they want a practitioner.  Law school does not teach you how to practice law.  That’s not a fault, that’s a design.  They want to teach you how to use the classic phrase, “Think like a lawyer.”  I say that somewhat mockingly, but I don’t mean it because I think like a lawyer every day.  It is the most essential skill.  Thinking is not something you can put on your timesheet.  You can’t write down your 45 minutes thinking but it is the most important time as lawyers we spend because things don’t just pop up whole.  You have to think about them.  You have to analyze them.  You have to figure out what your client’s goals are and how do you achieve them?  It’s not about pyrrhic victories, if I have a client winds up spending $300,000 to win $10,000, that’s a loss, that is not a win.  Think practically about the law.  Find courses, find clinics, find internships that will help you look at the law as a practical not theoretical entity.  Unless you’re planning on teaching for the rest of your career or being a judge or a judicial clerk, you’re going to have to deal with those pesky things we call clients.  They don’t care about how many cases you can cite them.  They care about getting what they’re interested in, which may or may not include winning.  Sometimes walking away is the best thing you can advise somebody.

Meg Steenburgh:  Professor Howard Leib, thank you for joining us.

Howard Leib:  My pleasure.  Thanks for having me, Meg.

Meg Steenburgh:  And thank you for listening.  I hope you enjoyed this podcast.  This is my final episode as your host.  Demario Thornton is a rising 3L at Southern University Law Center and ready to take you on this journey over the next year.  I hope you will join him.  And as always, I’d like to invite you to subscribe to the ABA Law Student Podcast on Apple Podcasts.  You can also reach us on Facebook at ABA for Law Students and on Twitter at Aba LSD.  That’s it for now.  I’m Meg Steenburgh.  Thank you for listening.

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