Law Offices Of William E. Maguire

A Day In The Life of Baywatch®

INTRODUCTION

BAYWATCH the first run syndicated television series, has become what has been referred to as, "The Most Popular Television Series In the World." In the U.S., BAYWATCH consistently ranks in the top ten in the weekly Neilsen ratings among other syndicated programs. In many other countries, however, including but not limited to, England, Spain, Germany, Australia, and New Zealand, BAYWATCH is an entertainment phenomenon. This popularity has led to obvious ancillary marketing and merchandising potential. With the hiring of a top licensing agency recently, the offers and licenses have quadrupled almost overnight. This in turn necessitates proper trademark and licensing requirements and precautions.

This article will highlight some of the issues which are dealt with on a day by day basis in the prosecution, registration and defense of theBAYWATCH trademarks worldwide.
 

8:00 a.m. P.S.T.

The morning begins with a phone call from our London counsel with news of an advertisement by a major European brewery which has used both the BAYWATCH trademark and the likeness or resemblance of one of the series' female cast members. The advertisement is not authorized by the client nor has the actress consented to the appropriation of her likeness. The matter is resolved with written undertakings or assurances given by both the U.K. licensee for the brewery and the U.K. advertising agency which created the advertisement.
 

9:15 a.m. P.S.T.

The studio faxes a copy of a publication page from the Australian Trade Mark Official Gazette forwarded to the client by an enterprising Australian lawyer and prior to receipt of the client's watch notice re same. A "watch notice" can be purchased from one of several commercial trademark service firms to keep track of and provide notice in advance of identical or closely similar marks filed both in the United States and/or other countries. A previously unknown company (hereinafter, "third party") in Australia has applied for BAYWATCH in International Class 25 for clothing. The client's foreign distributor is contacted and advises us that the third party applicant is not licensed or authorized. A use investigation is ordered, followed by the filing of an Opposition. Negotiations with counsel for the third party proceed.
 

11:00 a.m. P.S.T.

The day's mail includes "watch notice" correspondence which indicates a third party has applied for BAYWATCH in International Class 41 in Colombia. The foreign distributor indicates that the applicant is, in fact, the authorized foreign broadcast licensee for BAYWATCH in Colombia. After several unsuccessful attempts to reach the broadcast licensee and with the procedural Opposition deadline rapidly approaching, the decision is made to contact our local Colombian trademark attorney. After a flurry of correspondence from both our local counsel in Colombia and the foreign distributor to the Colombian broadcast licensee, the licensee agrees to assign or transfer its application to the client. A Power of Attorney is legalized or authenticated (e.g., official government fees, seal and/or stamp obtained) and forwarded to the local associate and the matter is resolved.
 

12:00 p.m. P.S.T.

A domestic (U.S.) on-line trademark search of the mark, BAYWATCH, reveals a new third party application for the identical mark in International Class 3 for cosmetics, namely, sunblock lotion, hair lotion, namely shampoo and conditioner. A phone call to the client's licensing agency reveals that the applicant is not licensed or otherwise authorized. A cease and desist letter is prepared, including a sample express abandonment letter to be signed by the applicant and to be filed with the Assistant Commissioner for Trademarks. The cease and desist letter is sent to the applicant advising him that his application has been applied for fraudulently and that any use by him of the mark BAYWATCH is likely to cause confusion with the client's exclusive rights to this same mark. The applicant replies that he will agree to abandon his application and provides confirmation of his filing same with the Trademark Office.
 

1:00 p.m. P.S.T.

A facsimile arrives from the client's licensing agent with the updated Licensee List. The Licensee List reveals several classes of goods not previously included in trademark applications filed in several foreign jurisdictions. The client is informed that several more trademark applications must be filed to support new licensees. The business issue as to whether the license will pay for the cost of the trademark application(s) and its defense is discussed. The necessity for supporting the licensees with trademark applications is recognized as the client's obligation and this reality wins out over the alternative of not investing in trademark coverage.
 

2:00 p.m. P.S.T.

MATTEL INC., a major BAYWATCH toy licensee, including but not limited to, BAYWATCH BARBIE®, action figures, dolls and accessories, forwards correspondence objecting to the length of the trademark and copyright notice (e.g., BAYWATCH is a trademark and © 1994 The BAYWATCH Production Company. All Rights Reserved. BARBIE® is a registered trademark of Mattel, Inc.) previously forwarded by the client's licensing agency. The issue is discussed on the phone and an abbreviated copyright and trademark notice is agreed upon for packaging and on product.
 

2:30 p.m. P.S.T.

The afternoon mail includes correspondence from the client's in-house counsel who on a recent trip to Florida has seen a restaurant called
"BAY WATCH". Several "cease and desist" letters are sent with no result. Local counsel is contacted; an investigation is conducted to determine the extent of the Restaurant's "use" of BAYWATCH; a final cease and desist letter is sent with no result. A complaint is filed, the defendants are served, and the matter is resolved with the defendants agreeing to discontinue all use of the cleint's mark or any confusingly similar mark.
 

3:00 p.m. P.S.T.

The studio forwards by facsimile a copy of a postcard from Italy aparently sent by several fans of one of the series' lead male actors. The postcard is a photograph of five of the series' male and female stars. The postcard also uses the client's trademark, BAYWATCH. The only clue to the source of the postcard is the name of an unknown company perhaps in the Italian television industry. A call to the licensing agent and the foreign distributor reveals that the postcard is not authorized. Italian counsel is contacted and the price to conduct an investigation at the local associate's hourly rate is determined to be too high, together with the local associate's minimal prior experience with this client. The decision is made to use the German foreign distributor which has an Italian subsidiary. A color photocopy is forwarded to the Italian subsidiary and within a week it is determined that the postcard was a promotion in a local Italian television industry magazine. Result: the client's licensee is not threatened, the infringement has ceased and the magazine publisher has indicated no further duplicate or distribution will occur.
 

4:00 p.m. P.S.T.

A Worldwide Trademark Report of the mark BAYWATCH is analyzed and several new third party trademark applications in foreign jurisdictions are revealed. Venezuelan local counsel is contacted and a preliminary investigation is conducted as to the third party applications. The foreign distributor confirms that the third parties are not authorized. Oppositions are authorized to be filed and are pending.
 

5:00 p.m. P.S.T.

A Letter of Protest After Publication is prepared and filing instructions given to a local associate in Washington, D.C. for the filing of said Letter of Protest against an identical mark for (marine) batteries and for retail services for same. In the United States, a "Letter of Protest" can be filed with the Assistant Commissioner for Trademarks prior to and shortly after publication of a third party trademark application. Typically, the basis for such a Letter of Protest is likelihood of confusion with a prior registration or prior application. A "cease and desist" letter is already in the mail with a substantive response promised from counsel for the applicant. A settlement is reached with the applicant agreeing to withdraw both of its applications and to discontinue all sales.
 

CONCLUSION:

BAYWATCH®, just as any other successful entertainment property, must establish and defend its trademark rights throughout the world in order to support its licensees and to protect its proprietary interests against counterfeiters and infringers. Communication with the client, foreign associates, the licensing agent, distributors and litigation counsel is an absolute necessity. Diligence in the maintenance of a calendar for pending matters, attention to detail, and management of foreign associates and local counsel is also a priority. The establishment of a network of trusted and experienced foreign counsel will save the client time and money, in addition to reducing the stress otherwise incurred by lead trademark counsel in the management of a worldwide trademark and licensing program. While not intended to be all-inclusive, this article has attempted to outline some of the typical issues and the daily realities associated with a world famous entertainment property such as BAYWATCH®.

Click here to link to BaywatchTV.com

*William E. Maguire first began working on BAYWATCH in 1988 and has represented The BAYWATCH Production Company with respect to its trademark, copyright and licensing matters since 1991. He is currently in private practice in the Westwood area of Los Angeles. He has been a member of the California bar since 1981, has an LL.M. degree in Intellectual Property, and was previously Senior Counsel for Malibu Comics Entertainment, Inc., a subsidiary of Marvel Entertainment Group, Inc.

Law Offices of William E. Maguire
11500 W. Olympic Blvd., Suite 400, Los Angeles, California 90064-1525
(310) 470-2929 Fax: (310) 474-4710
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