Presented to AAF Inland Empire by Jim Astrachan, principal of Astrachan Gunst Thomas Rubin, adjunct professor of law at the University of Maryland School of Law, author, columnist, national speaker on advertising law.

1. A PROFESSIONAL CORPORATION
ATTORNEYS AT LAW
baltimore • chestertown • washington, dc
James B. Astrachan, Esq.
410.783.3520
jastrachan@agtlawyers.com
www.agtlawyers.com

2. presents
Law School in One Hour
or
Ads That Shouldn’t
Have Run

9. Identity Misappropriation
A person controls the use of his or her
persona for commercial purposes. An
unauthorized use infringes.
Names, photos, drawings, nicknames,
sound-a-likes, look-a-likes, roles.

11. Creation of Character
Lugosi v. Universal
Pictures, 25 Cal. 3d
813 (1979).
McFarland v. Miller,
1992 WL 4967
(D.N.J. 1992).
NO
YES
MAYBE
Groucho Marx Productions, Inc. v. Day
& Night Co., Inc., 523 F. Supp. 485
(D.C.N.Y. 1981).

12. Motschenbacher v. RJ Reynolds
Tobacco Co., 498 F. 2d 821 (9th
Cir. 1974).
Hirsch v. S.C. Johnson & Sons,
90 Wis. 2d 379 (1979).
Obscure Identities
YES
YES

13. Cohen v.
Herbal
Concepts,
Inc., 473
N.Y.S.2d 426
(1984).
How much
identification
is needed?

14. White v. Samusung Electronics America, Inc., 971 F.2d 1395 (9th Cir. 1992).
Can a robot violate Vanna’s right of publicity?

17. Onassis v.
Christian Dior
- New York,
Inc., 472
N.Y.S.2d 254
(1984).
The look-
alike.

18. Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992).
The sound-alike

19. Copyright Theft
The owner of the copyright has the
exclusive right to:
 Reproduce
 Distribute
 Prepare derivative works
Anyone else doing so without consent is
an infringer.

23. Most people don’t know that there are angels whose
only job is to make sure you don’t get too comfortable
and fall asleep and miss your life
Brian Andreas v. Volkeswagen of America, Inc.,
336 F 3d 789 (8th Cir. 2003)
Angels of Mercy by Brian Andreas
I think I just had a wake-up call, and it was disguised as
a car, and it was screaming at me not to get too
comfortable and fall asleep and miss my life.
Audi “Wakeup Call” Commercial

24. • $965,000 awarded to Brian Andreas
– $115,000 against VW and McKinney & Silver,
representing the licensing fee a buyer probably
would have paid a willing seller
– $570,000 in “disgorgement damages” against VW
– $280,000 in disgorgement damages against
McKinney & Silver
Brian Andreas v. Volkeswagen of America, Inc.,
336 F 3d 789 (8th Cir. 2003)

25. Elsmere Music, Inc. v. National Broadcasting Company, Inc., 482
F.Supp. 741 (S.D.N.Y. 1980).

26. Trademark Infringement
Use of another’s mark in a way likely to
cause confusion as to connection,
affiliation, association or origin,
sponsorship or approval is infringement.
Or, that dilutes by blurring or tarnishment.

27. Hershey v. Art Van Furniture, Inc., No. 08-14463, 2008 U.S. Dist. LEXIS
87509 (E.D. Mich. Oct. 24, 2008).

28. Romm Art Creations Ltd.
v. Simcha Intern., Inc.,
786 F.Supp. 1126
(E.D.N.Y. 1992).

29. Deere & Co. v. MTD Products, Inc., 41 F.3d 39 (2d. Cir. 1994).

30. Trademark Fair Use
Not all uses of another’s mark infringe.

32. Looks Like a
Pump, Feels
Like a
Sneaker®
United States
Shoe Corp. v.
Brown Group,
Inc., 740 F.Supp.
196 (S.D.N.Y.
1990).

33. “25% Lower in Calories than
Werther’s Original Candy”
August Storck K.G. v. Nabisco, Inc., 59 F.3d 616 (7th Cir. 1995),
citing 16 C.F.R. § 14.15 (1).

35. Anheuser-Busch, Inc. v. VIP Prods., LLC, No. 4:08cv0358 TCM, 2008 U.S.
Dist. LEXIS 82258 (E.D. Mo. Oct. 16, 2008).
Is it a Parody?

36. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252
(4th Cir. 2007).

37. Jordache Enters. v. Hogg Wyld, Ltd., 625 F. Supp. 48 (D.N.M. 1985)

38. Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing, Inc.,
886 F 2d 490 (2d Cir. 1989).

39. Bad Taste
It may not be actionable, but it can sure hurt.

41. Obscenity?

46. Misrepresentation /
False Advertising
In commercial advertising,
misrepresentation of the nature,
characteristics, qualities or geographic
origin of the advertiser’s or its competitor's
product.
 Express
 Implied

47. IT IS ORDERED that respondent shall not represent, in
any manner, expressly or by implication, that:
A. eating a bowl of Kellogg’s® Frosted Mini-Wheats®
cereal for breakfast is clinically shown to improve
children’s attentiveness by nearly 20%, or by any other
specific percentage; or
B. eating a bowl of Kellogg’s® Frosted Mini-Wheats®
cereal for breakfast is clinically shown to improve
children’s attentiveness by nearly 20%, or by any other
specific percentage, compared to children who ate no
breakfast, unless, at the time it is made, the
representation is true and non-misleading.

48. • Leading to abandonment, loss of priority use
• Not leading to abandonment
Evolution of a Design Mark:
• Tacking on
– Claiming priority in a mark based on first-use date of a
similar, but technically distinct mark
• Continuing commercial impression

49. Evolution of a Design Mark:

53. One Industries v. Jim O’Neal Distributing, Inc.
92 U.S.P.Q.2D (BNA) 1065
O’Neal:
One
Industries:

54. Dreyfus Fund Inc. v. Royal Bank of Canada
213 U.S.P.Q. (BNA) 872 (Nov. 6, 1981)

55. FTC Guidelines
 Endorsements must be truthful and not misleading;
 If the advertiser doesn’t have proof that the
endorser’s experience represents what consumers will
achieve by using the product, the ad must clearly and
conspicuously disclose the generally expected results
in the depicted circumstances; and
 If there’s a connection between the endorser and the
marketer of the product that would affect how people
evaluate the endorsement, it should be disclosed.
The revised Guides – issued after public and consumer
research – reflect three basic truth-in-advertising
principles:

56. http://www.proactiv.com/celebrity/julianne-hough.php

57. http://howigrowtaller.com/?hop=chrischew

59. http://www.nutrisystem.com/jsps_hmr/success_stories/index.jsp?weightLoss=20

60. http://springwall.com/Chiropractic.html

61. http://www.c28.com/streetteam/

66. Sandra Bullock offers Ellen a gift from “Café Du
Monde” on the Ellen Show.

67. Final Exam

68. Jim Astrachan is a principal in Baltimore’s Astrachan Gunst Thomas
Rubin, P.C., a member of the Maryland, D.C. and Pennsylvania bars,
and a national speaker on mass communications and intellectual
property topics. Jim and his partner Donna Thomas are the authors
of the 6-volume legal treatise The Law of Advertising and Mass
Communications, published by LexisNexis Matthew Bender. He is a
long time adjunct professor of law at the University of Maryland
School of Law (Trademark and Unfair Competition) and the University
of Baltimore School of Law (Copyright and, formerly, IP and Mass
Communications). Jim is a former legal columnist for ADWEEK
Magazine and his IP-related Legal ADvice column is a fixture at The
Daily Record and its sister publications, where it has appeared
monthly for 14 years. He is a Life Fellow of the American Bar
Foundation and the Maryland Bar Foundation, and has a J.D. from
the University of Baltimore Law School and an L.L.M. (Taxation) from
Georgetown University Law Center.
Jim Astrachan

69. baltimore ● chestertown ● washington, d.c.
Jim Astrachan
410.783.3520
jastrachan@agtlawyers.com
Authors, The Law of Advertising
and Mass Communications
Published by
www.agtlawyers.com