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Wow, nothing on the Blog about U.S. companies pirating Vietnamese trademarks for months, and now this one via Business Times Asia, after the one on Friday. Incidentally, the aside in the article makes a mistake. BASMATI is not a non-US trademark pirated by the US as it is not a trademark (nor is it an appellation of origin). It is a seed varietal (albeit a valuable one).
Another U.S Gubernatorial campaign (via Washington Post), another instance of one side registering a domain name consisting of the opponent's name, another political website that is less than forthright about its source.
This occurred to me as I read of the various governmental resources being devoted to (1) promotion of digital television (which is properly the job of the market); and (2) hearings on P2P spoofing and hacking.
Instead, the resources would be better spent discussing a $200 tax credit for families and businesses that obtain broadband Internet access.
10 million more broadband users would help the economy.
Have a good weekend.
Many U.S. trademark owners have successfully relied on Article 6bis of the Paris Convention in order to protect their famous trademark from piracy abroad. The U.S., in my view, sometimes grants a narrower scope of protection than other countries in situations where it is obvious the U.S. applicant has adopted a non-US company's trademark (see Person's v. Christman, 900 F.2d 1565 (Fed. Cir. 1990).
This Asia Times article alleges that a U.S. company has filed a piractical U.S. trademark application consisting of the logo of PetroVietnam, a large Vietnamese oil company. More coverage here. Interestingly, the U.S. applicant alleges use of the logo here since 1991.
The article indicates that there is a bi-lateral agreement beween the U.S. and Vietnam covering the protection of IP. If we see litigation, this also looks like an opportunity to re-visit the U.S. scope of 6bis.
Certain acts become torts only when committed by a certain class of people with a certain intent. Anyone, it seems, can make a fun of a trademark – but competitors can’t. The Muppets can make fun of SPAM by naming a wild boar character Spa’am. MTD, purveyor of Yard-Man Lawnmowers, however, cannot show competitor John Deere’s deer logo running scared (at least not under NY’s anti-dilution statute in 1994 (although it would seem to me that MTD could have said in its ads “We make John Deere run scared”).
Here’s a comment on a trademark that goes beyond poking fun and represents a direct attack on the trademark. I suspect that the brand manager of CAMEL cigarettes did not want to see the huge illustration in the business section of today’s NY Times (free online subscription worthwhile to see illustration): a parody of the CAMEL package with the word CADAVER instead of CAMEL and a dead dog instead of a camel. This version is being distributed on stickers to schoolchildren by PETA (People for the Ethical Treatment of Animals) to protest experimentation on animals. The stickers (which also parody
If the tobacco companies think that the parody raises legal issues, they will confront a common problem – the louder they protest, the wider the distribution of the parody.
Most ironic line in article: quote from tobacco company executive: “PETA is acting irresponsibly handling out tobacco logos to children.”
Most original defense of animal experimentation, presented by different tobacco company executive: “I have to believe, if animals ruled the world, they’d do the same thing.”
Strangest sideshow: Mothers Against Drunk Driving are protesting PETA’s GOT BEER? Campaign targeted at college students, arguing that beer is more healthful than milk. PETA’s response here.
Tired old joke: Labs are beginning to experiment on lawyers, rather than rats, because there are a limited number of rats, the researchers were getting attached to the rats, and there were some things the rats wouldn’t do.
The successor-in-interest to the BLACK PANTHER PARTY, the 60's activitst group, is threatening legal action against an organization calling itself THE NEW BLACK PANTHERS.
UDRPLaw article on Go Daddy's Domain By Proxy service, which allows the domain name registrant to keep his, her or its identity secret. Great for limiting spam, that much harder to police the web.
The inability to easily reconcile the domain name registrant's privacy concerns with the public policy interest against anonymity in commerce, is, in my view, one more argument against unrestricted TLDs. Commercial and residential zoning are often incompatible.
Allegedly, Florida Gov. Jeb Bush wrote a letter to the Commissioner of the PTO arguing the case of constituent and donor, Bacardi, in the HAVANA CLUB matter. I feel that even if he has better connections, I have more relevant experience, and you should still consider me for your trademark representation. And I can certainly bring in a letter for under $50,000.
Via Tuffy Stone, this article on the Disney Winnie the Pooh litigation, suggests that there are scenarios under which Disney loses its rights to Pooh. Additionally, Disney apparently destroyed documents it was ordered to preserve (and was sanctioned). More here.
Register.com, ICANN registrar, is closing its domain name re-seller Afternic, after paying $48 million for it two years ago. In the ICANN Watch post-mortem, a post signed by Anonymous argued that there is a place in the world for people who register domain names for $9, and then warehouse them:
"The domain name system needs speculators to bring special domains to relevant industries. Don't expect the owner of Acme Hardware Company to have the time to hunt through domain auction sites to find a good generic domain for his/her hardware business. He/she is too busy running Acme Hardware!"
The thing is that, unlike a speculator, if Acme Hardware's advertising agency thought up a good generic domain name to promote Acme Hardware's business, it wouldn't buy the name first to ransom it to Acme.
I think domain name speculation is a tax on e-business and it wouldn't be a bad thing if it petered out. However, this is old news, and in the words of another poster in that thread:
". . . I've had this argument with you, or some other Anonymous . . ."
This is reportedly an email from Hilary Rosen of the RIAA to executives at Yahoo, Real Networks, AOL, and Universal Studios. It asks their assistance in combatting piracy on P2P networks. Ms. Rosen indicates that new legitimate subscription offerings are imminent (that's good news). One paragraph caught my attention:
"We need to discuss:
1. Spoofing and/or interdiction methods for existing peer to peers - (perhaps by adding promotional messages about the launch of various new systems)"
I don't know precisely what methods are beig referred to. Copyright holders should police their rights to the limits of the law, and advertising on these networks makes fantastic sense. However, aspects of spoofing troubles me for various reasons. And the image of the college student who thought he or she was getting the latest CD for free and instead gets a discount coupon for a subscription service - that's just funny.
Registrant obtained the domain name JUSTDOIT.NET and re-directed it to its own website. Nike brought a UDRP. Two of the three panelists held that Nike didn’t make its case.
In my view the error of the majority is that while it concedes that complainant showed it has a strong unique mark and thereby created a presumption of bad faith, and if respondent appears and fails to rebut the presumption, that that is insufficient to establish bad faith. Instead, we are told that the record is inconclusive. The complainant has established a presumption of bad faith, and the panel is “troubled” by registrant’s arguments and “suspicious” of its allegations, nevertheless the record doesn’t seem to show bad faith.
The panel needs to get in touch with its feelings.
Peeble Beach golf course fails to stop PEEBLE BEACH single malt whiskey, in Scotland. Possibly different outcome when they attempt to import into the U.S. Via herald.co.uk.
Robin Williams has a really funny bit about the invention of golf. If I were to provide the link which I found using Google, I might be deemed to be committing contributory infringement.
Purebred Co., a small high-end pet food company, won a $2.9 million verdict against Heinz, on the grounds that Heinz' NATURE'S RECIPE PUREBRED FORMULA infringed its PUREBRED mark. $1.5m in lost income, $1.4 in punitives. Via Insidedenver.com.
When clearing a new brand or evaluating a multi-country trademark dispute, it is useful to get a quick snapshot of whether a mark is registered in key jurisdictions around the world. For a long time the cheapest “quick and dirty” searches cost several hundred dollars from the outside search firms (and usually took several business days to receive).
When several countries began putting their national trademark registries online, I commissioned Nathan Hoover (nhoover@nyc.rr.com), developer extraordinaire, to create a trademark metasearch, a program which queries the various databases and returns the results in several minutes (the Hungarian trademark database even returned depictions of design marks).
I am now happy to roll-out Metasearch 2.0. It has been migrated to the .NET platform, and is a lot faster than the first version. We have also added the WIPO database of international registrations. The search now incorporates the trademark registries of:
United States
Canada
WIPO
CTM
United Kingdom
Hungary
Finland
Additional countries are being added in the coming weeks.
While not a substitute for retaining local counsel to advise on the availability of a mark or legal status of a registration in any jurisdiction, the Metasearch is a good first step in evaluating a trademark. By opening several browser windows at once, you can mitigate the limits of dead-hit searching by simultaneously searching variants of a mark quickly (i.e., FOO BAR and FOOBAR). The results are displayed in an easy to read spreadsheet format.
Try out the search (if you use POKEMON as a search term, you get a picture of Pikachu from Hungary). Click on “metasearch” on the left sidebar. I hope you find the search helpful.
p.s. Because the search is based on the .NET platform, it can be delivered as a web service to your firm’s web site or intranet. We are also developing a plug-in which would allow search results to populate your own spreadsheet or database. Please contact me at marty@schwimmerlegal.com for details.
My blogging software allows me to see what Google searches were used to find this site. To the person who came here by entering "Can I Use A Cell Phone I Found?," I would say "Only to report an emergency while you are returning it."
The NY Times and the Wall Street Journal reports today that Phillip Morris has filed 8 lawsuits in NY and
Cheapmarlboro.com and europecigarettes.com appear to do business in
Although the Internet, in theory, could exacerbate the problem of grey goods if a distributor can promote goods outside its normal market more easily, I would say we have not seen an overwhelming flood of reported decisions dealing with this fact pattern, perhaps because as a practical matter, shipping costs and tariffs can eat away at the cost differentials which encourage grey good importation in the first place. Be that as it may, I don’t think we have an accurate idea of how much grey good traffic has been created by the Web. I think that after reading about the Phillip Morris filings today, various GCs, in anticipation of being asked by their CEOs, are sending their trademark counsel emails today saying “Pls rev. Issue for us?”
Important decision from the Ninth Circuit re initial interest confusion in the long-running EPIX.COM saga. Thoughtful commentary to follow ;-)
Previous stuff on initial interest confusion here.
I think one of the most complex questions I could be asked by a client is whether its potential trademark litigation was covered under the Advertising Injury clause of its commercial general liability policy. The problem is that, for reasons unknown to me, these policies continue to define the scope of 'advertising injury' and exclusions from such coverage, in standard language using terms foreign to the Lanham Act. The resulting ambiguity allows the insurance companies to put forward an interpretation of advertising injury coverage which reminds me of the Monty Python skit where Mr. Devious tells the Vicar: "It states quite clearly that no claim you make will be paid."
Hyman v. Nationwide, a recent Eleventh Circuit opinion, is now the first case to read when tackling the advertising injury question. The insured had been found liable for trade dress infringement. It sought indemnity under its standard CGL policy which covered advertising injury, defined as injury arising out of, among other things, misappropriation of advertising ideas or style of doing business. The circuit court does a nice artistic job of holding that that trade dress infringement is sort of like the misappropriation of advertising ideas or style of doing business. I like it when policy holders who pay premiums for years and years, get covered.
However, instead of circuit court judges saying that advertising ideas are somehow protectable when one of the first thing you taught to chant in copyright class is that ideas are not protectable, I would rather have clearer policies. It is not fun advising your client that your estimate of its litigation expenses may be off by a couple of hundred thousand because you can't advise with certainty whether insurance will cover. It's too late at that point to suggest trademark infringement insurance.
Before you accuse of a hidden agenda in encouraging trademark litigation insurance, you should know that the one time a client of mine was sued and had appropriate coverage, the insurance company took over the case and sent it to an "approved provider," who, in my professional opinion, was not so great.
This Dept. of Commerce press release is pretty remarkable in its candor regarding its disappointment with ICANN, while simultaneously renewing its agreement with ICANN for a year (alternatives would have been transitioning control of the DNS to ICANN, or firing it and starting from scratch. Neither alternative was plausible).
There's something here for everyone who hates ICANN - a warning that ICANN should stick to technical management, and an aside that it should avoid being the government of the Internet. That is properly the job for [fill in your answer here].
UPDATE: Given that the title is getting quoted by icann.blog, I want to wimp out and add that I don't hate ICANN. I think it has the textbook no-win situation because, in part, it operates in an environment where everyone is self-professed expert, but because this is a novel area, no one's expertise is all that helpful. It seems to me that DoC's comments will actually make ICANN's job even harder.
U.S. Budwesier vs. Czech Budvar saga continues, this time in New Zealand.
Wired's interview with Prof. Lessig. October 9 he argues Eldred before the Supremes.
Via pbs.org, a profile of BayTSP, which helps the copyright industry find illegal file-sharing and perhaps helps the FBI findAl-Qaida's steganography.
The Wall Street Journal reports today that Nasdaq has changed its name from the initial cap Nasdaq to NASDAQ "for the sake of consistency with our logo and our brand identity." Brand consultant as caps lock button. The brand identity is suffering - the term NASDAQED is being used in the media as a synonym for "fall off a cliff."
Not trademark but of interest: A Canadian farmer was sued by Monsanto for using herbicide-resistant canola patented by Monsanto. His (unsuccessful) defense was that the Monsanto seeds blew into his field. Via Slashdot.
For those of you handling UDRP cases involving the names of stadiums, UDRPLAW.NET has compiled a list of all of them.
Here is a press release and depiction of the new certification logo by which record copanies will indicate that the CD contains anti-copying technology.
Rosie has resigned from ROSIE. This AdAge article indicates that G+J (publisher of the soon to be named something else magazine), has lined up new names for what once was called McCALLS magazine. Always ready to provide esoteric trademark ramifications of tawdry public spectacles, the Blog provided this preview way back on August 9.
Taftquack update: An Ohio judge has allowed continued use of the Taftquack duck by the Hagan for Governor campaign (which duck was objected to by the AFLAC duck - see background). This AP article quotes an AFLAC lawyer as arguing that Ohio voters will mistakenly think that AFLAC has endorsed the Hagan campaign. In view of the increased traffic this suit has created for the taftquack.com site, there is the same affect as if AFLAC endorsed Hagan.
There is no indication whether the United Poultry Concern filed an amicus brief against AFLAC.
Via IDG: An adult media company wishes to purchase the NAPSTER trademark and domain name to establish an adult P2P network.
Advance copies of CDs distributed by record companies to reviewers sometimes become the source of pirated copies. To combat this, Epic Records is distributing portable CD players with the CD inside and the player glued shut. I guess this is a somewhat less sophisticated instance of what Prof. Lessig refers to as the architecture of control. Via BNA Internet Law News.
Contemplate this website. Review this story via abcnews.com. Ponder how political candidates' names function in part as trademarks. Meditate upon initial interest confusion. Wonder whether the public is well-served by the current state of affairs where candidates promote themselves with methods borrowed from pornographers and extortionists.
Someone who may or may not be named Alfredo Versace and who may or may not be Gianni Versace's cousin, has certainly violated the preliminary injunction from selling merchadise which infringes Gianni Versace's trademarks (law.com). See previous discussion of the "sacred right to use one's own name."
From the September 16 Wall Street Journal, page R13 (online subscription only): "Are Bots Legal." A good introduction to the various issues arising from the use of automated search robots including the eBay v. Bidder's Edge case in which eBay successfully argued that Bidder's Edge's Bots, which captured 100,000 eBay pages a day, were committing a form of electronic trespass. According to the article, a case to watch is the Second Circuit appeal of Register.com's injunction against Verio from using Bots to data mine Register.com's whois database.
In contrast to the general linking controversy, where an implied license to link can be inferred under certain circumstances, it was alleged that in both cases, defendants' Bots had ignored plaintiffs' robot exclusion protocol. What would Isaac Asimov say?
Unlocking the Sky by Seth Shulman is the story of Glenn Curtiss, aviation pioneer, and his battles with the Wright Brothers. The Wright Brothers had received a broad patent on wing stabilization for which they sought such a broad scope of protection that it was said if you jumped and flapped your arms, you infringed their patent. This narrative does not portray the Wright Brothers in quite the same light as this history on the Curtiss Wright homepage (yes, the dispute was ultimately resolved by settlement). Not to put too fine a point on it, the story about invention and the monetization of invention strikes home.
Although the firm which drafted the original patent is not identified in the book, the patent firm of Fish and Neave takes credit for representing the Wright Brothers, to the extent that the Kitty Hawk plane is in Fish and Neave's logo.
This blurb from today's NY Times (online by subscription only):
"Certainly it's hit Ralph Lauren, and I feel it's hit Tommy
to an extent. Kate Spade is pulling back a little and
Calvin has pulled back the CK's on a lot of things." - Kal Ruttenstein of Bloomingdale's, on the decline in designer logos.
The "decline in designer logos" discussed in the article refers more to the decreased use of logos themselves as design elements on the goods, and less to a cultural shift caused by rich people reading Naomi Klein's No Logo.
This via Rick on re-branding Britain.
Coincidental to the blurb on Yakult below, I just learned of the Ninth Circuit's recent case discussing fame, Thane v. Trek, in this case, the fame of the TREK mark used for mountain bikes. To clarify my comments below, fame is and should be interpreted differently when determining whether there is infringement, or dilution, or whether there is an element of bad faith on the part of defendant. In this case, where the court is asking whether defendant's use dilutes plaintiff's mark, it (properly in my view) adopts a high standard of fame, namely whether the name is known to general public. Under this standard, a mark which commands 98% of a niche market will not be deemed to be famous.
Via NameProtect, an article from The Guardian re FIFA's attempts to prevent "ambush marketing," by which advertisers refer to events such as the World Cup, where the organizers of such events have sold "endorsement" rights. In this case, VISA referred to the World Cup and in FIFA's view, implied an endorsement by FIFA.
This article describes an injunction obtained by Yakult (the famous Japanese maker of a Yogurt drink and owner of the Yakult Swallows) received against a competitor named Yakudo. The injunction applies to Hong Kong, which is a separate jursidction from the PRC (for now). The article goes on to discuss the larger prize - China (where Yakudo appears to have canceled Yakult's registrations based on non-sue). Yakult's dilemma touches on the thorniest question regarding the protection of famous marks - what does famous mean? Specifically - famous to who and famous where? Countries may use similar language in their trademark statutes in granting protection to famous trademarks, but their courts may define fame in a number of different ways such as famous in that country, or internationally famous, or famous to a relevant sub-set. A typical fact pattern occurs where the local consumers are unaware of what has become successful in another country, but the local merchant group makes a business of knowing exactly that, and it has a vested interest in foreclosing foreign competition. In that situation, a famous mark protection may serve more as an unfair competition statute. However, if the country narrowly defines 'famous' as whether the mark is known only to the local consumer class, the foreclosure gambit can succeed.
Fred Mostert's book, by the way, is the place to start when contemplating the protection of famous marks
China has stopped re-directing requests to Google although, according to this article from siliconvalley.com, China doesn't acknowledge that it ever did in the fist place).
I thought I was going to write about 9/11 today but that has turned out not to be the case. This morning I received an email from a colleague with the subject “Al Fross.” Al has had cancer for four years now, so I knew my colleague was writing to tell me Al had died.
I went on to train with him for ten years. Every day produced something worth remembering forever, souvenirs from a career. Most importantly, Al was a role model – he always took the high road. His long successful career refutes any notion that ethical compromise is necessary to make it as a lawyer.
This time involving falwell.com (via news.com).
Ben Edelman of Harvard (see prior references) has been tracking the Chinese government's attempts to block access to Google. The latest turn in this saga is that the PRC government, it appears, is re-directing traffic intended for Google to other search engines. Ben has produced a report with screen shots which I undertand to be results of attempts to access Google from within the PRC. The address bar displays the URL of Google's home page but the page returned is clearly that of another company's search engine.
I do not know if Google owns Chinese trademark registrations but China is certainly supposed to grant protection to famous marks. Google should easily fall within that rubric for these purposes. In a situation like this, I would normally say to a client: "Seems worthwhile to retain PRC counsel to confirm that this is infringement."
If the PRC wishes to argue that it has the right to block Google for internal security reasons, that is an argument not worth getting into (at least for those of us not in Congress or the State Department).
However, this apparent government-sponsored passing off and this mis-appropriation of the intellectual property of Google has no apparent justification under security or other grounds. The most populous nation on Earth seems like just another knock-off artist. The re-direction represents a flaunting of China's contempt for the treaties it has entered (and makes me regret noting China's progress in trademark protection earlier this month).
How to respond? Let's start with a discussion of whether ICANN should still hold its upcoming meeting in October in Shanghai.
UPDATE: This from an article via idg.net:
"It is in violation of the universal approach, changing the DNS system. When you type in a URL, from anywhere in the world, you expect to get to that address," said Bruce Tonkin, chief technology officer at Melbourne IT and chair of the Names Council of the Domain Name Supporting Organization at the Internet Corporation for Assigned Names and Numbers.
For Chinese users and Google alike, there may be little available recourse, however. "China has not signed any agreement [not to tinker with the DNS system inside China]. No government has. There is no legislation, no mechanism to stop them," Tonkin said."
Well, yes, and no. If you take the view that the U.S. is in a detente with the PRC, then the mechanism is contract (in this case, international treaties such as TRIPS) and respect for that contract. And you waive a breach through silence.
AFLAC is of the view that a white duck quacking functions as its trademark. While annoying, the AFLAC duck is a big success and does good works. Via AP, we learn that AFLAC has protested the use of a white duck quacking on a website at www.taftquack.com promoting the candidate opposing Governor Taft of Ohio.
Here is an animation featuring Osama Bin Laden and the AFLAC duck
Here is a letter to AFLAC from an animal rights group named the United Poultry Concern protesting AFLAC's treatment of ducks in its commercials. I think that this letter is legitimate, but I can't tell for sure.
Here is a link to my Sept. 6 blurb with links to relevant cases on the use of trademarks in political speech.
p.s. I would provide links to aflac.com, but the homepage keeps crashing my browser today.
Via Copyfight, an interpretation of the term "mirror-site."
Update: and then, seconds later, I see a Google version of the same joke, via Doc Searls.
The latest affirmation from the Federal Circuit that single titles of books do not function as trademarks. Even though a party sold a million copies of THE CROSSWORD COMPANION to Walmart in 1993, 1993 would only serve as its date of first trademark use of the term if it published another book in a series named THE CROSSWORD COMPANION within a reasonable time (which the party did not). Via Finnegan Henderson's website.
This from the Clarion Ledger of Missippi regarding Ole Miss' attempts to police its trademarks.
In going through the backlog created by the move to suburbia, I found this news.com article on 'paid' search engines modifying the labeling of their search results, under FTC pressure. See here for background.
Via cnn.com, a minor league baseball franchise, the Calgary Cannons (a Marlins affiliate), is moving to New Mexico, where it will be re-named the Albuquerque Isotopes, in honor of Homer Simpson's favorite team, the Springfield Isotopes, which, in Episode 15, Year 12 of The Simpsons, was moved by its owner, Duff Beer, from Springfield to Albuquerque.
In 1996, Fox, which owns both the Simpsons property and a competitor of the Marlins named the Los Angeles Dogers, successfully enjoined the sale of Duff Beer in Australia, under Australian passing off law.
The Trademark Blog has previosuly discussed appellations of origin. Here is another example - this article describes how glassmakers in Murrano in Italy must take steps to protect their island's name as a source of glassware.
This is Ebay.
This is eGray, a site which comments on Californa Governor Gray Davis and California politics.
This is Dr. Seuss Enterprises v. Penguin, the "Cat Is Not In The Hat" decision, in which the author mimicked Dr. Seuss' literary and artistic style to comment on the O.J. Simpson case. Defendantwas NOT entitled to the parody defense because it did not parody or comment upon Dr. Seuss, but merely appropriated the intellectual property of Dr. Seuss' estate, to comment upon something else.
This is a commercial in which Ralph Nader mimics MasterCard's "Priceless" advertising campaign in his race for President in 2000. This is a law.com account of the denial of Mastercard's motion for a TRO against Nader, in which the judge accepts the argument that the ad was a parody of Mastercard (as well as a comment on campaign financing.)
The LA Times reports that Ebay has protested eGray's use of the Ebay name and graphics (subscription site, so no links).
Initial Interest Confusion doctrine is an important concept and I had hopes when I saw that Posner, J. was sitting on a panel hearing such a case. Unfortunately, he didn't write the decision and all we received was a somewhat simplistic endorsement of a controversial doctrine.
Equitrac competes with Promatek's COPITRAK product. At the urging of its web designer, who wasn't a careful speller, Equitrac put the term COPITRACK (sic) in its metatags. Saving us a few paragraphs of discussion, the parties stipulated that Equitrac had intended to spell its competitor's product name correctly. After receving a demand letter, Equitrac removed the offending metatag. However, Promatek still pursued and received a preliminary injunction under which Equitrac had to disclaim any connection with Promatek.
Equitrac appealed the order, arguing, apparently with a straight face, that the ordered disclaimer, identifying the competitor's website, would encourage people to go to that website
Apart from the chutzpah of that argument (chutzpah being an old Native American word for gall), the decision is noteworthy for the Seventh Circuit's endorsement of Initial Interest Confusion doctrine in the metatag context. A definition of initial interest confusion is the unauthorized duplication of the mark allowing the defendant to encounter the consumer, but where confusion is dispeled prior to purchase. I call you up, say I'm from Reputable Company A, sweet talk you, and at some point, acknowledge that I am really from Company B. Kind of like a mis-named website which has a disclaimer. The dishonest "foot in the door" diverts traffic from the trademark owner and is thus actionable.
As the judge in Promatek puts it:
Cusotmers believing they are entering the first store rather than the second are still likely to mill around before they leave.
Now, initial interest confusion is an incredibly important concept in policing trademarks on the Internet. Many attempts to "game" Internet navigational systems (domain names, search engines and keyword systems) rely on diverting the searcher from his or her most likely intended destination. This is something I realized six years ago when I typed in amazom.com rather than amazon.com and got an ad for Barnes and Nobles.
In my view, people like the web designer who told Equitrac to put the name of its competitor in its metatags, and typosquatters, and pornographers who buy expired domain names, impliedly agree withthe Seventh Circuit - people are likely to mill around before they leave.
But how good is this analogy? The more difficult aspect of applying initial interest confusion doctrine to the Internet is analogizing "customers" and "entering the first store" to users who access a web site. A UK judge in case involving AVNET took the position that the public are not idiots, and were at least capable of reading abstracts on search engine results. Thus they could discern search engine hits for sites in which they had no interest.
On the other hand, the judges in the MOVIEBUFF case had a dimmer view of Internet users as befuddled motorists as the Court analogized deceptive metatags to highway signs that induce you to leave the Interstate at the wrong exit, with offers of another's gas, food and lodging, and stay off to buy something.
Personally, I think that some motorists are idiots and some are like those savvy veterans of the Long Island Expressway, who have been taught them to Expect Delays and use Alternate Routes.
So I cannot agree that the use of another's trademark in a metatag should be some sort of per se violation. I agree with the commentator on the INTA listserv who argues that any deception reproduction of another's trademark is likely actionable (that's almost tautological), but, as the Seventh Circuit acknowledges, Equitrac is allowed to advertise that it can service Promatek's customers and can make comparison claims. Why is using the competitor's name in a metatag different? I have my own theories, but I wanted Judge Posner to go first.
The question as to whether Apple Footwear's Apple design is confusingly similar to Guandong Apples' Apple design may not involve novel issues of trademark law, but this article via China Daily indicates that this is the first preliminary injunction issued under the Peoples' Republic of China's revised Trademark law, makes the case of great import. It can be argued that, let's say ten years ago, the absence of reliable, expedient, consistent mechanisms for enforcement of trademark law, PRC trademark registrations were not worth very much.
Via Icann Blog, a decision where registrant inadvertently failed to renew, a domain name company snapped the name up, and registrant successfully sued to get it back.
Blogging was disrupted as Schwimmerlegal moved its entire legal staff to Mt. Pleasant, NY (right next to Armonk). A tip of the hat to Benjamin and Ed and the guys at Value Electronics (see valueelectronics.com) for installing the satellite dish that brings this blog to you. We now resume regular programming.