Don’t Call Us “Twit” SM


By §*

            Yosemite’s Ahwahnee Hotel is no more.  Curry Village, gone.  Badger Pass does not exist.

            On March 1, 2016, these iconic names were shelved, as new management came on board.  Now, you would check in at the “Majestic Yosemite Hotel” for top of the line lodging.  “Half Dome Village” replaced Curry Village and that passé Badger Pass metamorphosed into the catchy “Yosemite Ski & Snowboard Area.”  Generations of California families and beyond are aghast.  But at least “Yosemite” remains.  It’s not “That Park with the Great Big Rock.”

            And fear not:  This desecretion may be temporary.

            What happened?   The company running hospitality and recreation services for 23 years, Delaware North Company (DNC), lost its contract with the National Park Service.  Along the way, DNC filed trademark applications and obtained registrations for the above names in connection with their lodging, restaurant, merchandising and skiing services.  Not that this was a no brainer:  Their contract with the Park Service did not provide for such registrations, and they got no express permission from the Park Service.  Also, DNC did not own any of these facilities, and of course the names are historic.  However, it did operate business enterprises and sell goods under those marks, which triggered the claim to trademark rights in a variety of classes (hospitality, clothing, cups, those teeny spoons, etc.).

            Came the twilight of their relationship, and the Park Service set its sights on another concessionaire (Aramark).  DNC advised the Park Service that, under the contract, a required buyout of DNC’s intangible property by Aramark included the trademark rights.  DNC unabashedly valued its trademark rights at $51 million.  The Park Service blanched, stating the value was more like $3.5 million. 

            Next came the legal maneuvers.  DNC filed suit in the Federal Court of Claims against the Park Service, alleging breach of contract for failing to require Aramark to pay $51 million to DNC.  The complaint states the Park Service refused to do so.  It further warned that use of its intellectual property would constitute trademark infringement. The Park Service struck back.  On February 26, it filed a Petition to Cancel all of DNC’s registrations in the US Patent and Trademark Office (USPTO).  The Park argued that DNC was no longer using the marks, and thus had abandoned its rights.  Also, to minimize its liability risk, it implemented the above name changes, until the dispute could be resolved.  The DNC parried with a motion to stop the USPTO proceeding, in light of the Court of Claims dispute.

            Of course, any casual observer would decry the legalistic claims of DNC, arguing that such historic names should not be disturbed or appropriated.  The Sierra Club, for one, has asked DNC to drop the suit.  But apart from that, some other interesting questions arise.  What about the $51 million vs. $3.5 million valuations?  Valuation of trademarks is tricky; there are few or no comparable prices to provide benchmarks.  Business appraisers may battle that one out.  Also, the Park Service seeks to cancel the registrations for DNC’s current non-use.  Generally, that is a question of abandonment, which focuses on the length of time of non-use and intent to resume use.  Here the non-use was very short.  Could DNC attach the marks to its casino operation in the Catskills, for example, renaming its ten-room motel “The Ahwahnee,” and its blackjack tables, “Badger Pass”?  Other than that, it’s hard to figure out what viable commercialization DNC can make with the marks now.  Thus, a settlement figure for the buyout seems likely.

            So, there you are, for now.  Don’t be surprised if the old names return.  After all, it’s only money.  Your money, that is.

*See article “§ -- The Lawyer Formerly Known as ‘Payne’”, below.


(May, 2016)

SUPREME COURT ASKED TO TAKE TRADEMARK CASE ON RACIALLY DISPARAGING MARK.  The Patent and Trademark Office has petitioned the Supreme Court to accept a First Amendment case involving registration of a trademark which is allegedly disparaging.  Section 1052(a) of the Lanham Act prohibits registration of “matter which may disparage” persons or “bring them into contempt.”  However, the Court of Appeals for the Federal Circuit ruled that this provision violated the First Amendment, in connection with an Asian-American rock band which sought to register their mark “The Slants.”   See commentary.

SUPREME COURT HEARS ARGUMENTS ON PATENT ENHANCED DAMAGES.  The Supreme Court is also considering the standard for enhanced damages.  In the 2007 Seagate case, the Federal Circuit Court of Appeals established a “rigid” standard for willful infringement and potential trebling of damages.  The standard allowed enhanced damages if the infringer “acted despite an objectively high likelihood” that it was infringing a valid patent, if, as a second prong, the infringer knew/should have known that it was infringing.   See commentary

FEDERAL TRADE SECRETS STATUTE ENACTED.  The House and Senate have passed the first federal trade secrets act.  Long the province of various state-originated rights, for the first time a federal statutory claim is possible.  Proponents claim this Act will streamline multi-state disputes.  However, California trade secret litigants benefit from well-developed case law, even for parties from more than one state.  One doctrine eliminated – which did not exist in California – is the inevitable disclosure doctrine.   See commentary



BOB PAYNE TO SPEAK ON TRADEMARK REMEDIES IN STRAFFORD WEBINAR, MAY 11.  Bob Payne will team up with attorney Bradley Walz in a Strafford Publications webinar on “Trademark Infringement Remedies:  Overcoming the Challenges of Inconsistent Court Treatments to Protect IP Rights.”

PAYNE TO SPEAK AT STATE BAR 3-DAY SOLO AND SMALL FIRM SUMMIT.   Robert Payne will make a presentation on “Spotting Hidden Intellectual Property in Your Practice” at the State Bar’s Summit in Newport Beach, on June 18.  Not all intellectual property comes with a label stamped on it. Business litigators, estate planners, employment lawyers,  corporate counsel and family lawyers will all benefit from learning how to spot intellectual property assets and issues that lie just beneath the surface.

BOB NAMED A “SUPER LAWYER” FOR NORTHERN CALIFORNIA FOR 7TH YEAR.  Robert Payne was named a Northern California “Super Lawyer” for a seventh year.  According to its website, Super Lawyers is an independent rating service of outstanding lawyers in 70 practice areas who have attained a high degree of peer recognition and professional achievement.  Payne has also been a Martindale-Hubbell av-rated (top rating) attorney for twenty-five years.

* * * *


By §

(September, 2015)

Among my under 250,000 subscribers, alert readers have resonated with my § name.* Naturally, its pronunciation leads into some of the best scenes from the cultish TV series “Arrested Development.”

Most intellectual property litigators learn their craft through years of toil in lawsuit trenches. But for me, all the lessons of decades of IP litigation are there to de-germ, right from the scripts of this insightful series. As it may come back for a fifth season, it’s time to review.

“You’re always going to get some hop-ons.” The responsible son, Michael, drives around town in a car with a rear stair extending over the cab. It constantly attracts errant free-riders. As does valuable IP. Copy cats are infringers – of patents, trademarks, trade secrets and copyrights.   Imitation is the severest form of effrontery. It never ends; there will always be hop-ons to your IP stair car.

I think something laid eggs on me.” Lawyer Barry Zuckerkorn (Henry Winkler) always seemed to care most about his own petty skin and other problems, if not his billable hours. You can avoid this in hiring your lawyer, with your opening question. Don’t hesitate to ask, “As of now, are you rash free?” Don’t worry. I get this question all the time. It’s well-known code in lawyerland for: “Will you be there for me?” So, go ahead. Trust me.

“All right?!?” C’mon! The Literal Doctor advised the Bluth family at the hospital that Buster would be “all right.” Bemused by their visible relief, he clarified that Buster had lost his left hand to a marauding seal and was now “all” right. Now, misleading through “truth” is a high art form, like claiming to have under 250,000 subscribers. It’s best left to us professionals.

And you can say goodbye to these [flashing], because it’s the last time!” Long-time secretary of Michael’s father would confront Michael, ending each exchange by flashing her breasts “for the last time.” Again and again. It’s just like opposing counsel making a “final” offer of settlement. “Take it, or we walk,” they always say. Yeah, yeah. It’s never true. Except when it isn’t never true.

“Has anyone in this family ever seen a chicken??”  Michael’s family plagued him with clucking “chicken” taunts for lacking nerve. But they didn’t act or sound like any chicken you’d recognize. Moral: don’t get a cut-rate lawyer. She may not have seen a patent chicken like yours. Maybe she never knew – would self-blued Tobias say “she never knewed”? -- one. Maybe she has only fed trademark tree sparrows or read about cybersquatting rock pigeons. Experienced IP litigators have both raised and carved up the whole chicken, from gizzard to talon. We speak chicken.  

A combined analyst and therapist.   This joke, you either remember, or you’ll have to comb through all 68 episodes to find for yourself. Let’s just say an experienced litigator both skillfully questions the opponent’s arguments and counsels clients sagely – serving as an effective “questellor,” if you will.  

“There’s always money in the banana stand.” For years I thought this was the father’s reassurance that he had an offshore bank account in some former Soviet republic. In Central America probably. We intellectual property lawyers know that IP rights in trademarks, trade secrets and patents are incredibly valuable. But they can go up in flames if the owners don’t want to protect them against hoppers.

“And that’s why you always leave a note.” George, Sr.’s one-armed ex-employee would feign horrible accidents to teach the young Bluth kids not so “important” life lessons, like leaving notes when the milk runs low. Law school was like that. Come to think about it, so was traffic school. (Pop quiz for fanatics – what was the employee’s name?)

“I’ve made a huge mistake.” Well, that’s something G.O.B. always wound up saying, but you’ll never hear that from me. I watched all four seasons.

 *See article “§ -- The Lawyer Formerly Known as ‘Payne’” , below.




by §

 (June 2015)

Having written and edited IP humor over 18 years, I take pride in launching this new IP humor and news blog.  (Some of you may remember receiving the lgp@law newsletter over the years, which I published when I was a partner at the Monterey IP law firm of LaRiviere, Grubman & Payne.)  This resurrection calls for a profound personal transformation as well.  Following the inspiring example of the former Artist, Formerly Known as Prince, I have shed my former name. From now on, I shall only go by “§.”  

Not all will accept my decision, I know.  Clients, judges will just have to adapt.  A potential client calls, requesting Robert Payne? I slam down the phone.  Judge asking, “What do you have to say to that, Mr. Payne?” I turn my back, with a dismissive hand flourish.  It’s important to be firm. However else will they learn?

And, yes, I know , it is utterly unpronounceable.  A mere trifle.  The best I can suggest is you put body as well as voice into it.  Turn your head upward and to the right, shoot your right index finger up to the sky and shrilly cry out in falsetto voice, “Ca-Ca′!”  If you’ve ever watched Gob (“Jobe”) mock Michael in the Arrested Development TV series, you know what I’m saying.  

About “Ca-Ca′!”:  The emphasis is on the second “ca′.”  I must be quite strict on this point.  Either way, though, I must say, it never fails to get complete attention in court.  I suggest you practice in front of the mirror before your next call with me.

One thing I’ve prepared for is victory in court.  Before, it was the traditional, gracious hand shake with opposing counsel.  No more.  Zorro has nothing on me.  True, I can’t very well slash clothes with a ball point pen (personal space and all).  So, I’ll just have to cast a smug glance at my opponent and “air scribble” my “§”.   Sure, a casual observer might assume I’m suffering from an acute nervous disorder, if I don’t act with clear intention.  So I will have to scribble with panache.

After all, I have a §erious reputation to protect.   



Robert Payne has written IP humor for 18 years. He also wrote a humor column for the local newspaper, just for fun.  Here are some samples. Hope you enjoy!

Save Our Planet

The Dude Abides

Rock, Paper, Scissors, Lizard, Spock

Why Did IBM Skip the Loo?



§ TO WIT is a blog about IP humor and about IP “news you can use.”  What does “To Wit” mean?  In formal, legal language, it means “namely,” to clarify and specify. “The indictment charged that Jones knowingly possessed a firearm, to wit: a .38 caliber revolver.” But for us, it’s a salute, well, "to wit." (Pop Quiz:  Did we use “To Wit” as a double entendre, a triple entendre or quadruple entendre? Answer: Who cares?)  

But we’re more than just fun and games.  We also will post articles on IP issues of interest to smaller businesses — for business owners and their general counsel.  The articles will be written in plain English and short.  Very short.  Rather than rewrite what others have said, we'll generally link to a longer article or original source for those who want to know more.  


Contact us at payne@bobpayne.com or (408) 981-4293.