Tore T. DeBella

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Tore T. DeBella is a partner in the firm's Intellectual Property Practice Group. Tore’s practice focuses on trademark clearance, portfolio management and enforcement, as well as information technology and data privacy/security strategy and compliance. Tore’s unique blended practice offers significant value to his clients, as he is able to counsel on both the “brand value” and “data” implications of various cutting-edge technological issues like social media, website policies and terms, keyword advertising and domain names.

View the full bio for Tore T. DeBella at the Faegre Drinker website.

Posts by Tore T. DeBella


For In-House Counsel: 12 Questions to Ask When the Business Team Wants to Launch a Sweepstakes or Contest (Tomorrow)

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We’ve seen this scenario (one too) many times before: the business/marketing team comes to the in-house legal team and wants to run a sweepstakes or contest to promote a brand or a new product line. Surprise! They are hoping to launch it as soon as possible – maybe even tomorrow. But in the request to the legal team for approval, details are sparse, and it isn’t clear exactly what the business team intends to do.

In case you’re faced with an “emergency” like the one described above, this blog post is intended to provide a quick tool kit for in-house lawyers to keep things on track by asking the following questions:

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Recap: 2023 ANA Annual Advertising and Marketing Law Conference

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If artificial intelligence is so great, why can’t it reliably predict the weather?

The weekend has just closed on another very rainy Floridian ANA Masters of Advertising Law Conference (Last year we had a hurricane, so this would qualify as an uninspiring upgrade). The Masters Conference is the largest advertising, marketing and promotion law conference in the nation, bringing together major brands, storied advertising agencies, and prominent regulators to discuss cutting-edge topics impacting the industry. Each year – not by design but by happenstance – a different theme is featured. This year, to no one’s surprise, the focus was on AI.

While not every session discussed AI in depth, most speakers devoted some time to the subject throughout the 3-day event.  Panelists confronted questions like: does algorithmic bias, increasingly employed in various industries, constitute an unfair trade practice?  How will regulators view advertising claims based on next gen tech?  What copyright traps exist for the unwary utilizing AI to generate advertising content?  Are US and international privacy laws evolving fast enough to keep up with new challenges posed by AI?  And while it had nearly zero to do with AI, the conference would have felt incomplete without a discussion of what drag queens can teach advertising lawyers about intellectual property protection.  Many learned more about Cardi B’s album covers during that session than they could have imagined in their wildest dreams.

There is no doubt that AI will affect the advertising and marketing landscape for years to come.  Like the metaverse (last year’s theme) and crypto assets (the year before that), these issues are not new.  But despite AI having been around for some time, the leaps forward that generative AI applications have made this year appear poised to significantly transform the landscape of advertising content creation and delivery.  President Biden’s October 30th Executive Order is one of the first major steps being taken to set limits on AI technologies while funneling their potential for good.  Among other things, that Order directs the U.S. Patent and Trademark Office and U.S. Copyright Office to issue a report on “potential executive actions relating to copyright and AI.”

We will of course be following this issue closely as the technology – and its implications for intellectual property and advertising issues – evolves.  But we will hold our concerns regarding AI singularity at bay until such time as we receive an accurate forecast for the next ANA Conference.  (It’s in Arizona, so we’re blithely optimistic.)

Until next year!

The FTC’s Updated Endorsement Guides: Do They Say More Than We Already Know?

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On June 29, the Federal Trade Commission (FTC) published its updated Guides Concerning the Use of Endorsements and Testimonials in Advertising (“Guides”), together with an FAQ document, FTC’s Endorsement Guides:  What People Are Asking (“FAQ”).  One day later, it announced its proposal for a new Trade Regulation Rule on the Use of Consumer Reviews and Testimonials (“Trade Regulation”).  In the spirt of the FTC’s FAQ, we figured we would post a brief one of our own, highlighting some of the big changes (and non-changes).

Can you please explain what’s going on in one paragraph or less?

As background, the Guides explain the FTC’s view on the propriety of endorsements and testimonials made by third parties on behalf of advertisers under Section 5 of the FTC Act, which prohibits unfair and deceptive trade practices.  The Guides were last updated in 2009.  This update therefore brings a refresh and clarifies the FTC’s view on various scenarios that have arisen since 2009 given changes in technology and marketing practices.  The Trade Regulation, by comparison, is focused on the narrow topic of fake consumer reviews, which are singled out because (a) they have been a particular focus of the FTC of late; and (b) the regulation would clearly entitle the FTC to seek civil penalties for violations (whereas its ability to do so under Section 5 of the FTC Act is somewhat murky).

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The Prior Registration Puzzle: Overcoming Registration Refusals Based on Intervening Third-Party Marks

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Many trademark attorneys practicing for an appreciable length of time have encountered the following scenario:

  1. Your client owns a registration for a mark (the “Anchor Registration”);
  2. Your client refrained from opposing registration of a similar third-party mark (the “Intervening Mark”) because it saw a low likelihood of confusion;
  3. Your client’s subsequently filed applications in the Trademark Office for the mark depicted in the Anchor Registration (or a virtually identical mark) were refused registration based on the Intervening Mark; and
  4. Attempts to obtain consent from, or coexist with, the Intervening Mark owner were unsuccessful for some reason.

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NFT Infringement: No Free Taking or New Fair Transformations?

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Earlier this month sports apparel giant Nike sued StockX LLC, a Michigan-based sneaker and streetwear resale marketplace, for offering to its customers non-fungible tokens (NFTs) depicting Nike’s sneakers.  The claims asserted in the February 3 complaint filed in federal court in the Southern District of New York include trademark infringement, trademark dilution and unfair competition, all stemming from inclusion of Nike’s trademarks (e.g. Nike, Air Jordan, Jumpman, the “Swoosh” Design) in the shoe images depicted in the NFTs provided by StockX.

This is not the first case of its kind.  In January, Hermes sued a digital artist for unauthorized reproductions of its well-known Birkin bag in a line of NFTs released by the artist called “Metabirkins.”  And before that, in November 2021, Miramax – the studio that produced the 1994 cult movie classic Pulp Fiction filed suit to enjoin Quentin Tarantino from releasing NFTs based off of his original handwritten script of the movie, including scenes from an early script that were cut from the final version.

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Someone Else’s Trademark in Your Way? Just Buy It.

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Sometimes the quickest way out of something is straight through it. This advice holds true in life, and in trademarks.

Those who deal with trademarks are familiar with obstacles to registration based on similar third-party marks. It’s frustrating, and especially so if you had conducted a clearance search beforehand in an effort to avoid such obstacles and see no reasonable basis for the Trademark Office’s refusal. Other times, the Trademark Office may approve your application for publication, but a third party will oppose registration during the opposition period. Or maybe you haven’t even applied for registration in the Trademark Office, but you receive a letter threatening legal action if you do not cease and desist from the use of your mark.

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Brandemic: How COVID-19 May Change the Who, What, and How of Your Company’s Brand Identity

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The global COVID-19 crisis has created dynamic shifts in how businesses source and sell goods and services.  Whether those shifts are temporary or will solidify into more permanent structures ushering in a “new normal” era of consumerism, remains to be seen.  As I write this, it is the weekend after Memorial Day 2020.  Just yesterday, my home state of Virginia commenced phase I of a graduated reopening of the state economy, while last weekend’s headlines focused on widespread defiance of stay-at-home orders and social distancing guidelines as the U.S. death toll climbed towards 100,000 (a milestone it has now passed).  It is clear that there are limits to our willingness to stay home, and that bodes well for the survival of some brick-and-mortar retailers.  But brick-and-mortar retail and business in general may look significantly different in a post-pandemic world.  The companies emerging stronger will likely be those that use this time to rethink who they are, what they do, and how they do it — and the ways in which they convey that message to consumers.

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BIG TRUSS: A Playoff Story of Opportunism at the Trademark Office

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As a trademark attorney, devoted Baltimore Ravens fan, and furtive TMZ reader, I couldn’t help but notice this story authored recently, describing how Mark Ingram’s aspirations of registering BIG TRUSS in the US Trademark Office are (potentially) being blocked by someone who applied to register the phrase first.

For those uninitiated, “Big Truss” is the pet name for Ravens quarterback Lamar Jackson, coined by Mark Ingram, Ravens running back.  Mark and Lamar’s well-documented bromance is one for the ages.  The phrase first captured public attention when Mark Ingram uttered it in a November 21, 2019 press conference, although the origins of “Truss” appear to date back much further, to a 1991 album by Public Enemy, as this fascinating Baltimore Sun article explains.  The BIG TRUSS application blocking Mr. Ingram’s attempts to register the phrase was filed on December 13, 2019 – 3 weeks after the aforementioned press conference, and candidly, a lifetime in the trademark world.

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High Court TM Profit Award Standard May Be Coming

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On June 28, the U.S. Supreme Court granted certiorari in Romag Fasteners Inc. v. Fossil Inc. et al., agreeing to weigh in on the question of whether plaintiffs in trademark infringement cases must demonstrate that defendants acted willfully in order for plaintiffs to receive a portion of defendants’ profits.

Whether willfulness is a prerequisite to an award of defendants’ profits in trademark infringement cases is a question that has deeply divided the U.S. circuit courts. Half of the circuits have answered the question in the affirmative.[1] The other half have answered the question in the negative.[2] These latter circuits that do not require a threshold showing of willfulness merely view willfulness as one of many factors considered in fashioning an equitable remedy.

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Tech Brings Authentication Challenges In Ad And IP Cases

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The ability of any individual, without access to sophisticated technology, to decipher the “authenticity” of any experience is diminishing daily. Moreover, this threat to the integrity of the law goes beyond digital impersonation and “deep fake” software driven by artificial intelligence. The famous Marx Brothers line, “Who ya gonna believe, me or your own eyes?” was once funny because it was ridiculous. Soon, it will be a description of our jobs and our lives.

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