Intellectual Property Attorney

Digging for Intellectual Property Treasure – The CURSE OF OAK ISLAND®

The History Channel’s hit television program, THE CURSE OF OAK ISLAND®, follows the adventures of brothers Rick and Marty Lagina who, along with their business partners, are engaged in a quest to solve the Oak Island Mystery. Each episode follows the “fellowship of the dig” as they search for buried treasure on Oak Island off the coast of Nova Scotia. While the Laginas and their partners are searching for buried treasure, the History Channel has been finding ratings “gold” – with the show reaching the number one spot for many of the network’s key demographics. Indeed, the franchise has been so successful that the History Channel even launched a spinoff program entitled “The Curse of Civil War Gold.”

As with any media franchise, the commercial success of the underlying television program brings a number of ancillary business opportunities such as merchandizing – opportunities which necessitate strong intellectual property protection. The success of THE CURSE OF OAK ISLAND® provides a good illustration of such opportunities / intellectual property topics; including: (a) incremental merchandizing; (b) the pitfalls of potential third party rights; and (c) talent-retained trademark rights. Each of these topics are explored below.

A. Incremental Merchandizing:

Initially, A&E Television Networks, LLC (the parent company for the History Channel) sought to protect the OAK ISLAND brand by registering “THE CURSE OF OAK ISLAND” (Reg. No. 4611456) in connection with:

(i) certain digital media / downloadable content in Class 9; and

(ii) certain entertainment services in Class 41 – most notably the television series itself.

This registration was filed on August 29, 2013.

More recently, A&E has sought to develop additional revenue streams by merchandizing the OAK ISLAND brand. Thus far, A&E’s merchandise includes everything from bottle openers, coffee mugs and pint glasses to various clothing, Christmas tree ornaments and cellphone cases.

This increased variety of goods is reflected by two new U.S. trademark applications for THE CURSE OF OAK ISLAND mark covering various goods / services in International Trademark Classes 9 and 41 (Application Serial No. 87551613) and trademark Classes 16, 18, 21 and 25 (Application Serial No. 88085394).

This incremental approach to licensing and merchandizing is common in most industries and presents a “catch 22” for rights holders.

On the one hand, rights holders are never completely certain whether a media project such as a book, film or television show will be commercially successful until the project launches. Until then, rights holders often choose to put their limited funds into production and marketing rather than paying for intellectual property protection such as filing intent-to-use trademark applications covering reasonably foreseeable future goods / services. As an aside, while the United States requires actual use of a trademark before a Federal registration will be granted, an intent-to-use trademark application can be thought of as a “place holder” – allowing an applicant to file an application and reserve a potential mark for up to three years so long as the applicant has a good faith intention to use the mark in the future.

On the other hand, failing to proactively secure intellectual property rights “early and often” though the use of tools such as intent-to-use trademark applications can “open the door” to intervening third party rights. Sometimes, such third parties are “innocent” – merely choosing the same or a similar brand for other goods / services. Other times, such third parties are nefarious – deliberately squatting on goods / services which a rights holder has failed to proactively protect.

For example, a studio might protect a soon-to-be released franchise by filing intent-to-use trademark applications for a number of potential goods / services such as t-shirts (which the U.S. PTO categorizes in Class 25) and coffee mugs (which the U.S. PTO categorizes in Class 21). However, a squatter might then seek to file an application for the same or a highly similar mark for goods / services which the U.S. PTO categorizes in a different trademark Class (e.g., “tote bags” in Class 18). Even where rights holders have a legitimate basis for attacking such squatter applications, it is often less expensive to simply “buy out” the squatter rather than paying for legal fees – a reality that squatters understand and exploit.

This is an especially prevalent issue in emerging markets, where trademark squatters routinely file trademark applications in a variety of Classes when a person starts to become famous or a successful media franchise launches in another country.

The “key” to successfully balancing these issues is to develop a carefully thought out merchandizing plan. Which countries will be your most critical markets? What type of products are a natural “fit” for your brand? How do you see your brand growing in the next five years under the “best case,” “worst case” and “middle of the road” scenarios? By working with a skilled intellectual property lawyer, rights holders can work to craft a comprehensive strategy which balances the short-term costs involved in securing intellectual property protection against the long-term potential costs of failing to do so.

B. Potential Third Party Rights:

A basic search of the U.S. PTO’s Trademark Electronic Search System for the words “oak island” reveals, inter alia, the following live registrations / pending applications which are worth exploring:

Serial Number Reg. Number Mark
87512639 5515235 EKÖN
87691411 5507529 OAK ISLAND BEDDING CO.
87397994 5493377 STUDIO OAK ISLAND
87390076 5328346 OAK ISLAND
87385069 5327955 OAK ISLAND CREATIVE
86975289 4611456 THE CURSE OF OAK ISLAND
85958954 4598427 OAK ISLAND GOLD
85958911 4598426 OAK ISLAND RED
85958667 4598424 OAK ISLAND WHITE

Several of these third party registrations could cause “issues” for A&E should the network wish to expand its THE CURSE OF OAK ISLAND® brand into other merchandizing categories.

For example, an individual named Mike Jenkins owns a registration for “OAK ISLAND BEDDING CO.” (Reg. No. 5507529) covering “pillows, namely, body pillows and bolster pillows” in Class 20 and “bed blankets, towels, hand towels, duvets, comforters” in Class 24. Importantly, this registration disclaimed the words “BEDDING CO.” – indicating that the primary rights lie in the words “OAK ISLAND.” Such a registration could present an impediment if A&E ever wished to expand the THE CURSE OF OAK ISLAND® brand into bedding. Similarly, an entity called Kirgos LLC owns a registration for EKÖN (Reg. No. 5515235) which translates to “the oak island” covering tea and coffee in Class 30. Notwithstanding that “oak island” is in another language, such a registration could also present issues should A&E ever try to expand its brand into Class 30.

Creating a comprehensive brand enforcement guide (which takes into account the underlying merchandizing plan) can be a helpful tool for a company in distinguishing between which third parties are worth fighting (e.g., those entering into “important” licensing categories) and which are not (e.g., those entering into “non-important” licensing categories).

C. Talent-Retained Rights:

In many television programs, the cast assigns all trademark rights in program-related brands to the producers / network. Unfortunately, this means lost licensing / merchandising opportunities for many talented actors and actresses.

Here, however, it appears that at least some of the cast negotiated a better deal.

While the underlying contractual arrangements revolving around the show are unknown to the author, a search of the U.S. PTO’s public Trademark Electronic Search System shows that several brands incorporating the words “OAK ISLAND” are not owned by A&E.

As many diehard fans of the series know, one of the chief protagonists, Marty Lagina, owns the VILLA MARI® winery in Traverse City, Michigan. Indeed, Mr. Lagina can often be seen on THE CURSE OF OAK ISLAND® show wearing shirts branded with the VILLA MARI® logo while some of the show’s “bonus material” includes video tours of the VILLA MARI® winery. Always aware of good business opportunities, Mr. Lagina even sells such VILLA MARI® branded merchandize through his winery’s website.

Villa Mari, LLC currently owns three U.S. trademark registrations incorporating the words “OAK ISLAND” for wine, to wit:

(i) OAK ISLAND WHITE filed on June 13, 2013 (U.S. Reg. No. 4598424);

(ii) OAK ISLAND RED filed on June 13, 2013 (U.S. Reg. No. 4598426); and

(iii) OAK ISLAND GOLD filed on June 13, 2013 (U.S. Reg. No. 4598427).

In other words, Villa Mari’s three registrations predate the filing / first use date of the oldest THE CURSE OF OAK ISLAND® registration owned by A&E.

This illustrates the importance to talent of considering branding / trademark ownership issues before entering into a production agreement.

For many aspiring actors, the exposure gained by a “big break” is priceless – even if such a “big break” comes with a loss of potential brand rights.

However, for talent that is more “established” (either by virtue of prior frame or – in the case of Mr. Lagina – by virtue of economic success and the exclusivity of owning Oak Island itself), branding / trademark ownership issues are critically important. Indeed, having prior filed trademarks can be an important “bargaining chip” when working with networks, studios and production companies.

When used effectively, such strategies provide numerous opportunities for synergistic brand growth. For example, the success of the THE CURSE OF OAK ISLAND® television program benefits Mr. Lagina’s winery as it sells its three OAK ISLAND branded wines noted above. Moreover, as noted above, Mr. Lagina often wears VILLA MARI® branded clothing while appearing in the program – providing free, cross-over marketing. Reciprocally, each visitor to Mr. Lagina’s winery is introduced to information about the THE CURSE OF OAK ISLAND® television program while feeling personally engaged.

Finally, it is also worth noting that Villa Mari, LLC even took the prudent step of securing trademark registrations in Canada for its three OAK ISLAND brand wines, to wit:

(i) OAK ISLAND WHITE filed on November 4, 2014 (Canadian Reg. No. TMA984384);

(ii) OAK ISLAND RED filed on November 4, 2014 (Canadian Reg. No. TMA984385); and

(iii) OAK ISLAND GOLD filed on November 4, 2014 (Canadian Reg. No. TMA984387).

Since trademark rights are territorial, rights holders need to consider which country(ies) might eventually become commercially significant (again, this is part of a comprehensive marketing plan). In Villa Mari’s case, given the winery’s proximity to Canada and the fact that Oak Island is located in Canada, the choice to protect the OAK ISLAND brand in Canada seems very logical. Curiously, a search of the Canadian Trademarks Database appears to show that A&E has not sought protection over the THE CURSE OF OAK ISLAND® brand in Canada – notwithstanding that Oak Island is becoming an increasingly important tourist revenue generator in Nova Scotia.

Grimes LLC has developed a reputation as a world leader in successfully helping clients build, protect and monetize intellectual property – including in the merchandizing and film industries. If your company wants to explore how to employ incremental merchandizing, avoid potential intervening rights or retain rights for talent, please call us for a free consultation.

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