Lipton, Weinberger & Husick

History, though sometimes a dry and dusty exercise, may occasionally teach important lessons in trademark law, and in common sense (a quality often found lacking in trademark attorneys).  Case in point: the dispute between Warner Bros. movie studio and the Marx Brothers, over the film “A Night in Casablanca”.

Our story opens in 1947.  Groucho and his famous siblings are preparing to make “A Night in Casablanca”.  Wanting to generate publicity for the upcoming film, the Marx Brothers spread a story that Warner Bros. objected to the use of the term “Casablanca” through a few columnists.  Someone at Warner Bros. took the bait, and wrote a letter to Groucho in typical lawyerly fashion.  Groucho Marx chose to respond himself, rather than allowing his attorneys to speak for him (not a course that we at LWH usually recommend to our clients, none of whom are Groucho Marx.)*

Dear Warner Brothers:

Apparently there is more than one way of conquering a city and holding it as your own. For example, up to the time that we contemplated making this picture, I had no idea that the city of Casablanca belonged exclusively to Warner Brothers. However, it was only a few days after our announcement appeared that we received your long, ominous legal document warning us not to use the name Casablanca.

It seems that in 1471, Ferdinand Balboa Warner, your great-great-grandfather, while looking for a shortcut to the city of Burbank, had stumbled on the shores of Africa and, raising his alpenstock (which he later turned in for a hundred shares of the common), named it Casablanca.

I just don’t understand your attitude. Even if you plan on re-releasing your picture, I am sure that the average movie fan could learn in time to distinguish between Ingrid Bergman and Harpo. I don’t know whether I could, but I certainly would like to try.

You claim you own Casablanca and that no one else can use that name without your permission. What about “Warner Brothers”? Do you own that, too? You probably have the right to use the name Warner, but what about Brothers? Professionally, we were brothers long before you were. We were touring the sticks as The Marx Brothers when Vitaphone was still a gleam in the inventor’s eye, and even before us there had been other brothers — the Smith Brothers; the Brothers Karamazov; Dan Brothers, an outfielder with Detroit; and “Brother, Can You Spare a Dime?” (This was originally “Brothers, Can You Spare a Dime?” but this was spreading a dime pretty thin, so they threw out one brother, gave all the money to the other one and whittled it down to, “Brother, Can You Spare a Dime?”)

Now Jack, how about you? Do you maintain that yours is an original name? Well, it’s not. It was used long before you were born. Offhand, I can think of two Jacks — there was Jack of “Jack and the Beanstalk,” and Jack the Ripper, who cut quite a figure in his day.

As for you, Harry, you probably sign your checks, sure in the belief that you are the first Harry of all time and that all other Harrys are imposters. I can think of two Harrys that preceeded you. There was Lighthouse Harry of Revolutionary fame and a Harry Appelbaum who lived on the corner of 93rd Street and Lexington Avenue. Unfortunately, Appelbaum wasn’t too well known. The last I heard of him, he was selling neckties at Weber and Heilbroner.

Now about the Burbank studio. I believe this is what you brothers call your place. Old man Burbank is gone. Perhaps you remember him. He was a great man in a garden. His wife often said Luther had ten green thumbs. What a witty woman she must have been! Burbank was the wizard who crossed all those fruits and vegetables until he had the poor plants in such a confused and jittery condition that they could never decide whether to enter the dining room on the meat platter or the dessert dish.

This is pure conjecture, of course, but who knows — perhaps Burbank’s survivors aren’t too happy with the fact that a plant that grinds out pictures on a quota settled in their town, appropriated Burbank’s name and uses it as a front for their films. It is even possible that the Burbank family is prouder of the potato produced by the old man than they are of the fact that from your studio emerged “Casablanca” or even “Gold Diggers of 1931.”

This all seems to add up to a pretty bitter tirade, but I assure you it’s not meant to. I love Warners. Some of my best friends are Warner Brothers. It is even possible that I am doing you an injustice and that you, yourselves, know nothing at all about this dog-in-the-Wanger attitude. It wouldn’t surprise me at all to discover that the heads of your legal department are unaware of this absurd dispute, for I am acquainted with many of them and they are fine fellows with curly black hair, double-breasted suits and a love of their fellow man that out-Saroyans Saroyan.

I have a hunch that this attempt to prevent us from using the title is the brainchild of some ferret-faced shyster, serving a brief apprenticeship in your legal department. I know the type well — hot out of law school, hungry for success and too ambitious to follow the natural laws of promotion. This bar sinister probably needled your attorneys, most of whom are fine fellows with curly black hair, double-breasted suits, etc., into attempting to enjoin us. Well, he won’t get away with it! We’ll fight him to the highest court! No pasty-faced legal adventurer is going to cause bad blood between the Warners and the Marxes. We are all brothers under the skin and we’ll remain friends till the last reel of “A Night in Casablanca” goes tumbling over the spool.

Sincerely,

Groucho Marx

Not satisfied, the Warner’s attorneys requested a plot summary of the upcoming film from Groucho, who obliged…

Dear Warners:

There isn’t much I can tell you about the story. In it I play a Doctor of Divinity who ministers to the natives and, as a sideline, hawks can openers and pea jackets to the savages along the Gold Coast of Africa.

When I first meet Chico, he is working in a saloon, selling sponges to barflies who are unable to carry their liquor. Harpo is an Arabian caddie who lives in a small Grecian urn on the outskirts of the city.

As the picture opens, Porridge, a mealy-mouthed native girl, is sharpening some arrows for the hunt. Paul Hangover, our hero, is constantly lighting two cigarettes simultaneously. He apparently is unaware of the cigarette shortage.

There are many scenes of splendor and fierce antagonisms, and Color, an Abyssinian messenger boy, runs Riot. Riot, in case you have never been there, is a small night club on the edge of town.

There’s a lot more I could tell you, but I don’t want to spoil it for you. All of this has been okayed by the Hays Office, Good Housekeeping and the survivors of the Haymarket Riots; and if the times are ripe, this picture can be the opening gun in a new worldwide disaster.

Cordially,

Groucho Marx

It seems that this confused the attorneys even more, so they again wrote, asking for more details.  Grouch again responded…

Dear Brothers:

Since I last wrote you, I regret to say there have been some changes in the plot of our new picture, “A Night in Casablanca.” In the new version I play Bordello, the sweetheart of Humphrey Bogart. Harpo and Chico are itinerant rug peddlers who are weary of laying rugs and enter a monastery just for a lark. This is a good joke on them, as there hasn’t been a lark in the place for fifteen years.

Across from this monastery, hard by a jetty, is a waterfront hotel, chockfull of apple-cheeked damsels, most of whom have been barred by the Hays Office for soliciting. In the fifth reel, Gladstone makes a speech that sets the House of Commons in a uproar and the King promptly asks for his resignation. Harpo marries a hotel detective; Chico operates an ostrich farm. Humphrey Bogart’s girl, Bordello, spends her last years in a Bacall house.

This, as you can see, is a very skimpy outline. The only thing that can save us from extinction is a continuation of the film shortage.

Fondly,

Groucho Marx

According to the story, the attorneys never again wrote to Groucho, there was no law suit, the movie was made (and in our opinion, it was not one of their best) and Groucho wrote to a friend, “At any rate, the publicity has been wonderful on it, and it was a happy idea.  I wish that they would sue, but as it is, we’ve had reams in the paper.”

In a strangely ironic twist, Warner Bros. now owns the distribution rights to “A Night in Casablanca”.  There is also no truth to the rumor that Groucho met a dispossessed and long-lost brother of Jack Warner named Louis Warner on a transatlantic crossing in 1938, and told him, “Louis, I think that this is the beginning of a beautiful friendship.”

* The letters were donated by Groucho Marx to the Library of Congress, and reprinted in his 1967 book, “The Groucho Letters”.

– Lawrence A Husick, Esq.

Dear Doc:

Dear Rip:

You betcha (as Sarah Palin has been heard to proclaim)… copyright is one of the legal “arrows” in your “quiver” and you should promptly nock and draw your bow.  Then, as the Marines say, it’s as simple as Ready, Fire, Aim!  But first you must take some preliminary steps before making those thieving miscreants wish that they had never darkened your door.

As you may know, copyright registration provides certain legal rights, most importantly the right to sue in federal court, and the possibility of recovering attorney’s fees from the infringer.  So you will want to register your copyrights even though all works of authorship are automatically copyrighted when they are “fixed in a tangible medium of expression.”

Under United States Copyright Law (17 U.S.C. §§101 et seq.), circuit boards and similar products may be simultaneously protected by several copyrights.  The source code and the finished object code for your software products are the first things you should register.  If the code is actually engineered into a chip, there is also a type of registration called a “Mask Work Registration” that protects the artwork for the chip itself.  Another thing often overlooked is that the printed circuit board (PCB) design itself is separately registrable.  Pirates often just copy the board itself.  Because the top and bottom layers of the board are directly visible to a judge and jury, it is usually easy to demonstrate copying, making a case just about “open and shut”.  Don’t forget the schematic (and netlist if you use PCB design systems,) because these are copied by pirates, and the same kind of simple visual comparisons are easily shown to judges and juries.

The simple truth is that for companies making electronic devices that may be copied by others, having a system of copyright registration that covers every aspect of the product and is performed automatically whenever the product is revised or updated may be among the most effective means of keeping unfair competitors and disloyal employees honest, or at least, off balance and on the defensive.  The attorneys at LW&H have plenty of experience in these matters…give them a call.

– Lawrence A. Husick, Esq.

Dear Doc:

A friend of mine (if ya know what I mean) uses peer-to-peer (P2P) file sharing software.  She downloads cool things from the Internet, but then sorta-kinda-almost instantly erases them from her computer.  Is this okay?

Signed,

MovieFan

Dear Fan:

Ahem…If I were your friend, I would stop doing that stuff.  NOW!  You see, those “cool things” are mostly protected by Copyright.  While there are some movies and music that are not protected because they were made early enough that the registration has expired (think 1920s silent films) or whose owners failed to renew the copyright registration many years ago, it is really difficult to know which “cool things” are now in the “public domain” and which are still under registration.  Making a mistake about that kind of thing can ruin your day.

Copyright owners and rights organizations now use pretty sophisticated computer programs to sniff around for unauthorized copying on the Internet, and they can track down users of P2P software programs right to the actual computer running the software, the time, date and Internet address used.  Also, internet service providers are cooperating with rights owners in sending legal notices to P2P users.

One thing that you may not know is that when you use P2P software, you are not only downloading a copy of the files you see, but also your computer is being used to store and upload lots of other files that you may not see or even know are there.  There have been cases where P2P users have been accused of distribution of child pornography because certain files were flowing from the Internet to their P2P software, being stored on their hard drives, and then re-transmitted to other P2P users – all without the knowledge of the person who used the P2P software in the first place.

So…think very hard.  iTunes? NetFlix? HuluPlus?  Or…you could make the Doc’s day by continuing your outlaw ways, and getting one of those letters.  If you do, however, the attorneys at LW&H deal with this kind of thing.  Give them a call.

– Lawrence A. Husick, Esq.