You and God Be The Judge
Jerry Falwell is suing this site at jerryfalwell.com. At issue is whether he is a false prophet or not.
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Jerry Falwell is suing this site at jerryfalwell.com. At issue is whether he is a false prophet or not.
Here is an article about branding, specifically about naming magazines. There is a quote from Gruner + Jahr about picking ROSIE for a magazine. See my previous blurb on ROSIE. I had made the point that when a joint venture picks a name, it has to envision the joint venture not working out, and therefore should choose a name that could still be used by either joint venturer or a third party. OK, I said my piece.
New Zealand has passed a new trademark law (NZ govt. website here). This article indicates that there will be an explicit clause providing for the de-registration of a trademark found to have become generic, which does not quite warrant the headline "Famous Marks No LongerSafe." Originally via NameProtect.
It's a winter wonderland here at the Trademark Lodge. The snow knocked out my satellite connection for a while. Fortunately I had a cable modem installed yesterday as a back-up. The whole family went sledding this morning, something not possible if I was still at the Manhattan mother firm.
A first-person account of trademark piracy in Vietnam, via Dervala. I am not sure in what sense the title "Intellectual Property Is Theft" is intended.
Here's a copy of a complaint filed in the Southern District of NY by the Glenn Miller Productions against Avirex, which allegedly used Glenn Miller's name and likeness without authorization. Via AmLaw).
If my legal assistant didn't get the Boomtown Rats reference then there's no way she gets the reference in this title. Glenn Miller discograhpy here.
ZDNet article and Forbes article on the NY Mercantile Exchange suing the Intercontinental Exchange (ICE) for copyright infringement on the grounds that NYMEX' settlement prices of futures contracts were copyrightable.
Two thoughts: first, I would love to see the complaint because I am interested in how a settlement price, which I assume is created by the contractual agreement of buyer and seller who are not employees of the Exchange, is a work of authorship of the Exchange (the compilation of such prices will be another story). Disclaimer - the articles on the suit are short and it is hard to ascertain precisely what ICE allegedly copied.
Second - at some point a Court is going to say that there is a public policy that for markets to function efficiently, we can't grant far-sweeping rights in pricing data.
More on the FatWallet DMCA takedown here via Chilling Effects and via Copyfight. One point I haven't seen is the possibility that an unreleased circular is protectable as confidential information. Also, one red herring in the blawg world is the cards case. An expert (such as a collector) estimating what the prices of collectables are in an illiquid market can be said to be exercising expertise in a way that Walmart pricing socks is not. So I don't see price guide cases as controlling here.
I would be happy to discuss your rights with you re this.
This UDRP decision regarding KevinGarnett.com (Kevin Garnett is an extremely successful basketball player) is one of the more lucid discussions of rights in a personal name. Mr. Garnett utilized his name in ventures off the court (a store named One on One With Kevin Garnett for example), so the panel did not have to come up with a complex “personal services as common law use” theory.
Apparently the owners of the copyright in the U.S. TV show from the 50's, "This Is Your Life," believe that the Indian show "Jeena Isi Ka Naam Hai" (forgive my pronunciation), violates its rights. The program is still licensed in various countries. Via expressindia.com.
Today's demand letter on "Reading Other People's Mail" is the one the attorneys for former-Rolling Stone Bill Wyman sent the Atlanta Journal Constitution, employer of a music writer named Bill Wyman. This story was widely circulated as one of thse "trademark lawyers going too far" stories, especially given the punchline - the journalist was born Bill Wyman in 1961, the Stones' Wyman changed his name to Wyman in 1963, so the journalist has birth priority, if not trademark priority.
Someone reading a music column by someone named Bill Wyman may indeed think that the former Stone has fallen on hard times and become a journalist. Whether the request that the journalist put in a disclaimer (perhaps "Not That Bill Wyman" as he suggested) should have come in a nice phone call rather than a lawyer's letter is another issue.
The matter is reportedly settled.
Milberg Weiss is the leading plaintiff's law firm in shareholder suits. It is finding that other firms are copying its court papers, then under-bidding it for business. It is now putting copyright notices on its papers and filing for copyright registration. Now it is sending out demand letters to those law firms, according to this law.com article.
The article is a good discussion of the issues, however there is a red herring. The quoted professor who "laughed" at Milberg's claim, citing NBA v. Motorola, 105 F.3d 841, is technically correct when he said that NBA, which sued Motorola for providing play-by-play reports if NBA games via pager, didn't have much of a copyright claim, but that's because it was primarily an unfair competition claim under the "hot news" doctrine (and inapposite here). (My old firm represented the NBA in that one. I didn't participate in the representation but I had to listen to my colleagues who did).
Lawyers (and other progfessionals) seeking to use copyright to protect their work product should check out "Copyright in Financial Documents," by Chris Morcom, Roger Zissu and Frederick Mostert, in the July 1994 issue of Journal of International Banking Law. If you threw away your back issues, email me.
Defendant Coalition for Arizona opposed the expansion of tribal gambling casinos in Arizona thorugh a "Joe Arizona" advertising campaign." It used Plaintiff's ENERGIZER BUNNY in advertising without authorization. It's common to allege both infringement and dilution as alternative pleadings, however strict text book definitions of the two torts suggest that they aren't likely to simultaneously occur, because the public is either confused as to origin or it isn't. However, in this complaint, plaintiff alleges instances of actual confusion as to Eveready's endorsement of the anti-casino campaign, while a traditional dilution claim seems appropriate as well. Could be both infringing and diluting.
Via AmLaw, a complaint in which a free-lance writer sues a newspaper for including her articles in an online database. She alleges direct, contributory and vicarious copyright infringement. No permalink, so as time goes by, you're on your own.
Respondent's brief in the Nike v. Kasky (commercial free speech) case, via the Goldstein Howe firm (a Supreme Court boutique).
The National Review says enough is enough re copyright term extensions.
I went to the Law Blog conference at Yale today. Instapundit and several others were blogging as the conference progressed, and began commenting on their blogs about each other's blogging in real-time. At some point live blogging during conferences begins to resemble passing notes in class.
I wonder if the typo in this headline from the Vanouver Sun will be corrected by the time you read it.
Here is a UDRP decision in which the panel found complainant guilty of Reverse Domain-Name Highjacking and attempting to use the UDRP as "crowbar to pry away the domain name" WINDSOR.COM There appears to have been some falsified evidence as well. There are no sanctions for this so the only recourse is for us to think bad thoughts about the complainant and its law firm.
UPDATE: A certain ICANN blogger thinks the appropriate sanction is a google bomb.
NYTimes, Wired and others are jumping on this story of how Wal-Mart and other retailers have forced websites such as Fatwallet.com from publishing those retailers' pricing (apparently obtained from up-coming post-Thanksgiving sales circulars). The retailers are arguing that the sales circular represents a protectable compilation of facts. The retailers also utilized the DMCA in order to get speedy compliance. The information has been removed. I would have loved to have seen the original circular and the offending website because this sure is novel.
Harvard B-School Professor Michael Porter, in his article, "Strategy and the Internet," (HBR, March 2001), notes un-ironically that the problem with the Internet is that it provides consumers with too much information as to products and pricing (the theory being that widely disseminated pricing information leads to commodization and a "race to the bottom" as to pricing). Well, this is part of the reaction.
UPDATES: Here is Fatwallet's reaction and a good compilation of links from Copyfight.
A colleague forwarded me this item about Half Price Books suing Barnes & Noble over BN's use of the term HALF PRICE BOOKS, with the subject heading "How Dumb Is This?" I was prepared to write back and say "Somewhat dumb" but then I read the article which said that Half Price Books is a pretty large chain. I did a trademark search and sure enough, Half Price owns a registration for HALF PRICE BOOKS, RECORDS, MAGAZINES claiming thirty years of use. While a bookseller could use the term HALF PRICE to fairly describe its prices, given that HALF PRICE is descriptive and not a generic term for books (as opposed to, for example, USED BOOKS or REMAINDERED BOOKS), if Half Price can establish secondary meaning, and if a third party is uisng the term as a trademark, then there is a colorable claim.
p.s. If a client has been using a mark like HALF PRICE BOOKS for thirty years, then I don't fault it for protecting the name. On the other hand, clients are best advised to use names that have some initial scintilla of distinctiveness (<- ironic understatement indicator light on).
Afilias, registry operator of .INFO, has announced the registration of its millionth .info domain name. Afilias claims that 27% of its domain names are used, and it using a narrow interpretation of use, as it is not counting "under construction" sites, for example. State of the Domain's quarterly report (if you don't subscribe, do) did its own usage survey and actually duplicated the 27% number. The idea that there are 270,000 .INFO websites out there with more than "This domain for sale" signs (or re-directs to .com sites) contradicts my own experience, and it also contradicts the experience of Ross at Tucows (an owner of Afilias), who found it blog-worthy to note on October 20 of this year that he had encountered his first .INFO website not run by a domain name company. It could be that a significant portion of the .INFO registrations are used for non-English or porn usages (or non-English porn usages). Maybe if someone published the list of the 100 most-visited .INFO sites . . .
I think that the usage issue is one of the consdierations important in deciding whether to go ahead with new gTLDs (which ball, I am afraid, is again in play). My view is that unrestricted gTLDs are bad domain names, bad navigational aids, and bad branding devices, and are desired primarily by speculators and companies seeking contractual monopolies. And if the .INFO names are used, it doesn't change the picture all that much. If there are 100 small companies with the same name, and two of them get "guessable" gTLDs, then the DNS is not working for them. Maybe gTLDs like .AERO and .MUSEUM are useful but the jury is still out.
And so, taking a page from Cato the Elder's book, I conclude this blurb with the thought:
No more unrestricted gTLDs.
Registrant didn't show up and still prevailed in a UDRP brought by ASDA against the domain name ASDASUCKS.NET. The rationale of the decision is that, when discussing the first prong of the 3 prong test, the panelist, Tony Willoughby (whom I hold in high regard), held simply that ASDASUCKS is not confusingly similar to ASDA.
This not-shocking assertion contradicts several "sucks" cases which acknowledged that EXAMPLE and EXAMPLESUCKS could not possibly be confusingly similar. However those panelists, confronted with "dirty" registrant who had registered multiple "sucks" domain names and were obviously shaking down complainants, deliberately bent the definition of "confusingly similar" in order to find against the "bad" registrant.
While I am not disturbed by the outcome in this case, I am troubled by the implication of the following language in the decision:
“What is meant by "confusingly similar"? In the view of the Panel, if the word "confusingly" is to be given any meaning, the expression cannot equate to "similar". The Panel construes "confusingly similar" in this context to mean that the Domain Name, by reason of its similarity with the Complainant’s trade mark, is likely to lead to a substantial (i.e. not insignificant) level of confusion among Internet users.
What sort of confusion? A confusion in the minds of Internet users that the Domain Name is or may very well be a domain name belonging to the Complainant or licensed by the Complainant. This is consistent with the meaning of the term "confusingly similar" in the trade mark context (which is appropriate in that the Policy is expressly designed to protect the legitimate interests of the trade mark owners) and the Panel can think of no other type of confusion that could be said to apply.”
Maybe the (IMHO) not-so-great language of "confusingly similar" needs to equate to similar for now (and that's how I tihnk it is interpreted for the most part). If confusingly similar does in fact mean confusingly similar, then that suggests that every UDRP should include an analysis of the Polaroid factors (or the appropriate equivalent test of confusion) because even identical marks may not be confusingly similar. And we know that the UDRP is not the place for a lengthy multi-factor analysis.
Maybe the “confusingly similar” language of the UDRP needs to be amended to “identical or visually, phonetically or connotatively similar.”
I would also like to throw in another plug here for an appellate process for the UDRP.
The only .gs website I have seen - www.blo.gs.
A heart-warming tale of good in time for the holiday season, via Ernie the Attorney. Ernie's blog, btw, is a nice place to read about both general interest law stories and legal things technical.
A NY Times article about tax breaks for corporations donating patents to non-profit institutions. Could this work for copyrights and trademarks? Via a new good-looking IP blog, the Berkeley Intellectual Property Weblog.
I am the guy you met in Scottsdale and this is the website I told you to check out.
Catching up on trademark news from last week, the November 13 New York Times reports that UBS has retired the WARBURG and PAINEWEBBER brands (Thank you PaineWebber, now get out). Thursday's Wall Street Journal has an interesting profile on SUAVE shampoo, referring to its conscious effort to refer to competitors' trademarks and trade-dress (including colors of bottles). For example, my household has a bottle of SUAVE Professionals Humectant, which states conspicuously on its label that it "Nourishes hair as well as NEXXUS Therappe." Finally, I ran across the Perfume Detective in Yonkers, New York. They will help you locate discontinued perfumery brands (a service useful to both ardent fans and trademark litigators).
Here is an article from Sourceforge regarding the status of the LINUX trademark. What is doesn't make clear enough is that Linus Torvarlds, author of the LINUX operating system, owns a registered trademark 1916230 for LINUX, and all other things being eqaul, third parties cannot own trademarks incorproating that term for goods and services realted to operating systems. Do a metasearch of the term LINUX to see how many applications will be rejected.
If the remote blogging connection doesn't work, then I'll speak to you next week. The metasearch and domain dossier should work in the meantime.
Thanks to Bret at icann.blog for a link to First-person notes to oral arguments in the Victor's Little Secret case before the Supreme Court (which provide links to briefs in the case). While absolutely worth reading, the note-taker didn't really frame the case properly - he says the case will turn on the quantum of evidence in the record - not really. This is about standard of proof, not level of proof, which is different. Should the standard in a dilution case be proof of liklihood of dilution as opposed to proof of actual dilution. However the paucity of proof of economic harm to the trademark owner may be just what convinces the court that proof of actual dilution should be the standard.
Professor Lessig shines the spotlight on lawyers for the Metropolitan Opera, for shutting a fansite named Metmaniac.com. The issue, however, doesn't seem as clear-cut as the professor makes it sound. Prof. Lessig does provide a link to a cached copy of the site, which indicates that it was faciliating the swapping of tapes of broadcasts. At some point swapping tapes with friends becomes a business in infringing works.
A good press agent helps Kate Spade get the word out. This is the second profile in two weeks the NY Times has run on Barbara Kolsun, general counsel of Kate Spade, and former head of the International Anticouterfeiting Coalition. Interesting comment is her assertion that recently there were 900 auction sites selling fake Kate Spade purses. Also of interest was the comment that she had obtained assistance from the Simon Properties (which owns 140 malls nationwide), in cracking down on mall kiosks selling infringing goods.
Bad week for Marvel Comics. First, in the Second Circuit, Captain America creator Joseph Simon had his suit reinstated against Marvel, regarding the grant of the rights to Captain America. This decision involves questions of equitable estoppel and termination of grants under the 1909 Copyright Act. Next, Stan Lee sued Marvel, asking for a share of the profits from the Spiderman movie, and from the upcoming Daredevil movie (starring Ben AFLAC).
Soemone searched for BEN AFLAC, annoying duck, Darevdevil star, and husband of J.Lo, owner of the Glow by J.Lo brand, and trademark suit defendant.
Since we upgraded the international trademark metasearch in the end of September, 2200 searches have been run. Since we rolled out the improved domain dossier yesterday, 260 searches were run.
The new and improved DOMAIN DOSSIER (permalink on the left side of the
Trademark Blog home page) is four domain name tools in one.
First, enter a string and it provides a Whois for all five major TLDs (comnetorgbizinfo).
Second, it provides a link to an active website for that name, if one exists.
Thirdly, it tells you whether there is configured email for that name. This is important, because many trademark owners when investigating a domain name, don't see a website and conclude that a name is being warehoused. The name may in fact be in use for email.
Fourth, as a bonus, it porovides the top 5 Google hits for that string.
Give it a test-run. Famous trademarks provide an interesting tet, as do commonly used sexual expressions. It's querying several sources at once, so the search takes about a minute.
I would call this tool the Swiss Army Whois but I would get demand letters from Wenger, Victorinox and the Swiss Army itself. For now we're calling it the Domain Dossier.
I was introduced by a colleague to a company named Genuone, which specializes in brand protection technology. They ran a demo for me of something I hadn't seen before. Their software uses spidering technology to go out and look for websites which misuse brands. This could be a powerful way for companies to really get a good "onlne brand picture." Their various tools can look at things like how trademarks are being used in top-level domains, in web content, and in the online distribution channel.
What caught my eye was a demo of the pricing module they ran for me, which used a pharmaceutical product. The results included specific pricing, dosage, and product fulfillment (no prescription, online medical consultation, etc) information. The program calculated things like the average price of the product on the web, and highlighted significant deviation. The point is that substantial under-pricing could be an indicator of grey- or black-market product. It seems that this would be of interest not only as an IP-protection tool but as a market-intelligence gathering tool
Check out VERTU, a subsidiary of NOKIA, selling a $21,000 phone. I agree with Wired's assessment, that this is an attempt at the first luxury brand in telecommunications. We will see more luxury versions of electronic items which are accessories - PDAs and to a lesser extent, laptops. I don't think we will see luxury desktop PCs soon (because CEOs are in a reduced psotion to ask for $100,000 status symbols).
Via law.com, trademark counsel for the Global Top 50 companies. Baker & Botts in front with 7. Fish and Richardson and Fulbright tied for second at 5. I represent 1. At my present rate of client acquisition, I hope to lead the list in 2005.
CBS alleges that "I'm a Celebrity, Get Me Out of Here" infringes its rights in "Survivor" and has sued ABC. Here's a BBC article referring to the UK version of "I'm a Celebrity . . . " as a 'Survivor spin-off.' (both reality shows are based on UK versions). Bob Geldof (of Boomtown Rats fame) owns the rights to 'Survivor' and began threatening legal action a while back. My legal assistant probably doesn't know who the Boomtown Rats were.
Kidnapping target and former Spice Girl Victoria Beckham, aka Posh Spice, has reportedly protested UK football team Peterborough United's use of the trademark POSH and THE POSH. Peterborough claims it has been known as the Posh since the 1920's. Ms. Beckham is married to Man Utd's David Beckham. More trademark stories tangentially related to soccer here and here.
CSI: Crime Scene Investigation, is one of the best shows on TV, along with West Wing, Sopranos, Curb Your Enthusiasm, Good Eats, Samurai Jack and Law and Order: SUV.
In the October 10 episode of CSI, the real estate agent who let the murderer into the house to kill the rich guy whose son was sleeping with his young second wife, was seen holding a sign with a red, white and blue insignia and the word ‘realtor.’ The real estate agent was suspected of videotaping the young wife while naked (the wife, not the real estate agent) but it turned out to be a cardboard cut-out of the real estate agent and the murderer was really hired by, well, this is about trademarks so it doesn’t
Here's one place to start for some cites to cases about what you can do with a third party’s trademark in a non-competitive situation.
To the person who came to this site by using "Day of the Week Panties" as a Google search term, I simply don't know why your search engine returned this site as a hit and I'm sorry if I wasted your time. But as long as you're here, can I interest you in perhaps a trademark application?
Note to the confused: Userland software allows me to see what Google terms were used to refer people to this site.
Snarkhunting.com (named after a Lewis Carroll poem, "The Hunting of the Snark").
NY Times article on the practice of some legitimate companies (such as Microsoft) advertising their wares on P2P networks such as KaZaA, seeking to turn hackers into customers, in the article's words
Anti-rhetoric rant: someone who is opposed to P2P networks is upset by this attempt to legitimize P2P networks and states:
"At a time when the public is especially hungry for good corporate citizens," said Carey Sherman, a lawyer for the Recording Industry Association of America, "it's surprising that any legitimate interest would consider giving financial support to a pirate service like KaZaA that illegally traffics in the copyrighted works of others."
Well, maybe advertising on KaZaA (but see here) is a bad idea but I think that P2P networks are a good thing (when not used by the forces of evil) and let's not link them in some illogical way to the likes of Ebbers, Kozlowski and Fastow.
At my present hourly rate, I would have to bill 4.6 million hours annually to surpass Clifford Chance's annual revenue of $1.6 billion, according to law.com's Global 100. The next three law firms by revenue are Skadden, Freshfields and Baker.
More on trademark issues in Malta (see here for previous Maltese references), this, a dispute about ownership of the FUEGO mark, via NameProtect.com.
Nathan writes in to show us this picture of Tonya Hot Sauce ("not for the weak kneed"), marketed apparently without Ms. Harding's consent.
If you're going to attend INTA in Scottsdale, drop me a line.