The Trademark Blog

John Batelle's Search Blog is reporting that Google's Motion to Dismiss certain claims by American Blind in its litigation regarding Google's sale of keywords has been denied.

Background here.

Put in perspective, part of the significance of the American Blind case is that the mark AMERICAN BLIND (and some of the other American Blind trademarks owned by plaintiff) is not as distinctive or unique as for example, the mark GEICO.  If Google has liability for this sort of keyword, then its policing costs will be increased and its potnetial inventory of salable keywords will go down.

Having said that, bear in mind that this was a motion to dismiss.  The court is only allowing the plaintiff the opportunity to prove its case.

Deeper background: NY Times article noting that Google's lawsuits are beginning to ad up.  Well, what is the exposure?  We're not aware of private settlements of course but the pending cases are American Blind, Geico, LVMH, Viaticum, AFP, Preispiraten - am I leaving any out?  Ok, legal fees, use $300k per, so we're not over $2 million yet.  There's reportedly another 15 cases being brought in France. Damages? No final judgments yet.  I think Viaticum has been awarded about $100k but that will probably be appealed.  I assume that AFP is asking for the highest amount at $17 million.

Google has $3 billion in annual sales, so it will be likely to foot the bill for now.

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The INTA lists serv was nostalgic or something this week and I wasn't blogging in 2000, so I may as well as bring up the BODACIOUS-TATAS.COM decision  in which the UDRP arbitrator, and perhaps, the complainant, the Indian firm TATA, were seemingly unaware of the connotation of the term BODACIOUS TATAS.

Narcissistic Complainant press release suggesting that the Bodacious Tatas site had intended to free ride on the image of the famous TATAS mark here.

List of breast euphemisms here.

The term 'bodacious' was, we are told, coined in the comic strip "Barney Google and Snuffy Smith" (Snuffys wife Loweezy pictured here), which strip is available for syndication from the good folk at King Features.

Posted by Marty at 02:56 PM | Permalink

This lengthy post and comment thread via Waxy.org discusses efforts an entity named Wordpress that allegedly uses its high Google page-rank to alter Google results for 'high cost advertising words.' 

Posted by Marty at 11:49 PM | Permalink

Foreign manufacturer allows (controlled) U.S. distributor to register trademark in its own name.  Manufacturer sells control in distributor.  These stores rarely have happy endings.  Ultimately, foreign manufacturer is able to overcome distributor's incontestable registration by showing prior nationwide common law use.

Practice point: Don't let distributors register your trademark in its name.  Alternate point:  when you sell control in your distributor, remember to get your trademark assigned back to you.

Watec v. Liu, 03-55823 (9th Circuit,  March 30, 2005).

Posted by Marty at 09:59 PM | Permalink

May an assignee who holds an accrued claim for copyright infringement, but who has no legal or beneficial interest in the copyright itself, institute an action for infrongement? 

No.

Silvers v. Sony, CV-00-06386-SVW (9th Circuit, March 25, 2005)

Posted by Marty at 09:25 PM | Permalink

The power of Nimmer, via Prof. Susan Crawford.  Prior Nimmer discussion here.

Posted by Marty at 08:22 PM | Permalink

First person accounts of Grokster arguments from Timothy K. Armstrong and SCOTUS Blog.

Posted by Marty at 11:03 PM | Permalink

It's said that the Supreme Court follows the election returns. But do they follow the bloggers? Maybe if bloggers affected election returns.

Grokster coverage via Boing Boing, Induce Act Blog and, well, maybe I should just provide links to the sites that aren't covering Grokster.

Photo of bloggers in front of Supreme Court today by Cyrus Farviar.

Posted by Marty at 07:50 PM | Permalink

The State Bar of California Standing Committee on Professional Responsibility and Conduct has issued an Advisory Opinion on Misleading Law Firm Names.

In one hypo, the Committee advises that the name WORKERS' COMPENSATION RELIEF CENTER may be misleading because it may suggests that it is either affiliated with the government or that it may be a public or non-profit legal services entity.  Prominent express disclaimers would be required.

So, for example, FEDERAL IP RIGHTS CENTER, LLC, might be problematic in California, absent prominent express disclaimers that it was a private for-profit law firm.

Posted by Marty at 04:31 PM | Permalink

OK, it's no longer trade secret information: With the help of the good people at Corante, a bunch of us (Bag and Baggage, Inter Alia, Ernie the Attorney and Dennis Kennedy, have started a new blog entitled Between Lawyers, which will be about lawyering.

We've started two threads so far, on corporate blogging policies and legal podcasting.  We hope to have various threads including:

1.  What is a virtual law firm - whether cyberspace proximity can override physical proximity as a defining attribute of a 'law firm'

2.  The billable hour - how should a lawyer get paid as technology challenges the traditional attorney time model.

3.  Open source lawyering - how can lawyers who are not part of the same firm use the Internet to collaborate on legal projects?

4.  Productivity - Are all technology-induced productivity gains nullified by wasting time web surfing?

Between Lawyers will be susceptible to the Network Effect in that the more people who contribute, through comments and guest-blogging (see your host), the more useful the site will be.  So we're counting on you.

BTW, the name is from Wayne's World.

p.s. It's great to be part of another RSS offerring on Bloglines.

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Background here.

Posted by Marty at 07:36 PM | Permalink

It's an almost Spring-like weekend here in beautiful Westchester and I ask you: Would the Trademark Dilution Revision Act change the outcome of the Barbie Girl ("Both sides are advised to chill") case?  Why, why not, good, bad?  I ask because the 'non-commercial' clause on which Barbie Girl hinges, is being changed.

Posted by Marty at 07:32 PM | Permalink

A  number of readers came here today after putting TRADE DRESS as a search term into Google.  I suspect it was because Instapundit ran a piece today entitled "Trade Dress Matters" in which he says that he was intending to purchase the Norelco Rechargeable Shaver (pictured) and instead, because he was in a hurry, purchased what he described as a lookalike knock-off. 

Trade Dress refers to the overall appearance of a product or a feature such as "size, shape, color or color combinations, texture, graphics or even certain sales techniques." John H. Harland Co. v. Clarke Checks, Inc., 771 F.2d 966, 980 (11th Cir. 1983), cited with approval in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 112 S.Ct. 2753 (1992).   Functional aspects of trade dress are not protectable.

I zipped the photo over to my colleague, trade dress raconteur Glenn Mitchell, co-author of INTA's books on trade dress who writes back:

Posted by Marty at 10:05 PM | Permalink

Yahoo announces Creative Commons search engine, allowing search for material available for non-commercial use.

Posted by Marty at 07:03 PM | Permalink

Wired article on Apple v. Blogger trade secret disclosure issue arguing that focus is not whether a blogger is a journalist but instead the tension between trade secret and journalists' shield doctrines.

Posted by Marty at 06:48 PM | Permalink

Here is an article consisting of a first-hand account how a news site removed AFP from its site in order to still be included in the Google News index (background here).  Irony: When I view this article in IE (but not in Firefox), the contextual ads from Google obscure the first two parapgraphs. Hat tip Eric.

Posted by Marty at 06:42 PM | Permalink

WIPO has released " WIPO Overview of WIPO Panel Views of Selected UDRP Cases."  Your questions regarding the UDRP:

1. First UDRP Element

1.1 Does ownership of a registered trademark to which the domain name is confusingly similar automatically satisfy the requirements under paragraph 4(a)(i) of the UDRP?
1.2 Is the content of a web site relevant in determining confusing similarity?
1.3 Is a domain name consisting of a trademark and a negative term confusingly similar to the complainant’s trademark? (“sucks cases”)
1.4 Does the complainant have UDRP-relevant trademark rights in a mark that was registered/acquired unregistered trademark rights after the disputed domain name was registered?
1.5 Can a complainant show rights in a geographical term or identifier?
1.6 Can a complainant show rights in a personal name?
1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?
1.8 Does a trademark licensee or a related company to a trademark holder have rights in a trademark under the UDRP?

2. Second UDRP Element

2.1 Is the complainant required to prove that the respondent lacks rights or legitimate interests in the disputed domain name?
2.2 Does a respondent automatically have a legitimate interest in a domain name comprised of a generic word(s)?
2.3 Can a reseller have a right or a legitimate interest in the disputed domain name?
2.4 Does a respondent using the domain name for a criticism site generate rights and legitimate interests?
2.5 Can a fan site constitute a right or legitimate interest in the disputed domain name?

3. Third UDRP Element

3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?
3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder? (Passive holding)
3.3 What constitutes a pattern of conduct of preventing a trade or service mark owner from reflecting the mark in a corresponding domain name?
3.4 Can constructive notice form a basis for finding registration and/or use in bad faith?
3.5 What is the role of a disclaimer on the web page of a disputed domain name?
3.6 Can statements made in settlement discussions be relevant to showing bad faith?
3.7 Does the renewal of the registration of a domain name amount to a registration for the purposes of determining whether domain name was registered in bad faith?

4. Procedural Questions

4.1 What deference should be owed to past UDRP decisions dealing with similar factual matters and legal issues?
4.2 Can a panel accept an unsolicited supplemental filing?
4.3 What is the proper language of the proceeding?
4.4 Under what circumstance should a refiled case be accepted by a panel?
4.5 Can a panel perform independent research when reaching the decision?
4.6 Does the failure of the respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?

Answered here.

Posted by Marty at 05:02 PM | Permalink

Detroit Free Press article regarding Nissan, source of the INFINITI Q45, suing Audi over its use of  Q5 and Q7.  The artcile quotes me about the 'family of marks' argument, where if a trademark owner can show that a common prefix or suffix in a series of marks has source-indicating power, than it could prevent use of that prefix or suffix by a third party.  Examples being Mc (McDonalds, McCheese, McNuggets), i (iPod, iTunes, iMac) and -man (Walkman, Discman).

UPDATE:  CNN.COM picked up the story, anonymously quoting me as a patent lawyer.  I'm not a patent lawyer but I would be happy to refer you to a colleague who is.

UPDATE:  Professor Goldman has been sending me a series of harrassing emails this morning arguing that Apple does not have protectable rights in the 'i' prefix.  As H.L. Mencken had printed on his business cards, 'you may well be right.'  Nevertheless, I wouldn't clear an i-prefix mark for products that compete with those of Apple's i prefix products.

Posted by Marty at 04:55 PM | Permalink

"Automated Ads Serve Up Nonsense" from today's Wall Street Journal.  If you type SEWAGE into Google, an EBay keyword ad will offer you 'great deals on sewage."  That power-seller of sewage pumps is going to get a lot of click-throughs today so he'll probably remove the ad before you read this.  I'm not quite sure this proves much about contextual advertising.  A better oddity occurred when a news site ran a story about a body found in a suitcase and Google served up ad for luggage.  Hat tip Kevin.

Update: Boing Boing found missing weapons of mass destruction on eBay.

Posted by Marty at 04:42 PM | Permalink

The early bird deadline for registering for the INTA Annual Meeting is this Friday.

So what should we do this year?  In Atlanta a bunch of us went to Fat Matt's for blues and ribs.  If you're familiar with the seamy underbelly of San Diego, please send details.

Posted by Marty at 11:59 PM | Permalink

Delta Haze Corporation claim of copyright ownership in photographs here:

Court decision confirming paternity of Claud Johnson (and containing some amusing testimony re: Robert Johnson and Claud's mother's coitus) here.

Lyrics to "Love in Vain" here.

Posted by Marty at 11:13 PM | Permalink

In response to the TEMEQUILA post below, someone wrote "If they can sell U.S. grown BASMATI rice, why can't they sell U.S. grown TEQUILA?"  Well, first I'll say that the ability to refer to rice grown in the U.S. as BASMATI is likely not a done deal but in any event, the situations are not analogous.  BASMATI refers to the variety of rice that is found in various parts of Pakistan and India, and not to a geographic region.  With TEQUILA, blue agave is the type of plant from which the distillate is obtained, and TEQUILA refers to the original region in the Jalisco state of Mexico where particular blue agave is found (although the region covered by the appellation has been expanded to include a larger area than the Tequila region).

The U.S. distiller is allowed to indicate that its product is derived from blue agave.  Incidentally, the U.S. distiller doesn't appear to contest its inability to use TEQUILA, rather the issue will be whether TEMEQUILA blue agave misleadingly suggests that it comes from the Tequila region.

Incidentally, TEXMATI rice is not Basmati rice, but a cross of Basmati and other long-grain rices.  It uses 'aromatic rice' as a descriptor. Source- Wikipedia of BASMATI.

Posted by Marty at 07:29 PM | Permalink

Free WSJ article comparing different publishers' views on third-party distributors such as Google News and Topix (an aggregator that was jsut sold to a group of newspaper publishers including Gannett, Knight-Ridder and the Tribune Company).

Posted by Marty at 04:51 PM | Permalink

Blue Agave is a spiky plant found in semi-arid places in the U.S. southwest and Mexico.  Liquor consisting of spirits of which at least 51% are derived from Blue Agave found in the Jalisco state and several neighboring states in Mexico, may bear the TEQUILA appellation of origin.  PRotection of the TEQUILA appellation is included in the NAFTA agreement.

J.B. Wagoner is a distiller located in Temecula, California and created an agave distillate that he initially branded as TEMEQUILA.

Now, the Mexican Tequila Regulatory Council has protested that TEMEQUILA is confusingly similar to TEQUILA.

LA Times coverage here.

Tequila Regulatory Council website here.

Background info including NAFTA links, on Tequila here.

Background on Wagoner entitled "American-Made Tequila Takes A Shot" (the kind of title that keeps native growers up at night).

I was unable to find an image of Pee Wee Herman doing the Tequila dance which would have gone here.

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The fact that someone filed a trademark application for the term PODCAST covering something that sounds like podcasting services made its way through the blogosphere this past week.  Not content to not worry, John Welch at TTABlog has put together a how-to write a Letter of Protest to the Trademark Office, which is appropriate when a third party has information that it wishes to bring to the attention of the Examining Attorney (like maybe PODCAST is a generic term).

In the meanwhile, if you were to receive a demand letter from someone asserting their exclusive rights in the term PODCAST, then you should retain a reputable trademark lawyer ;-)

p.s. To emphasize John's point, the filing a U.S. trademark application does not create rights - it reserves rights that must be perfected (in part) by examination by the Trademark Office.

p.p.s. Someone managed to register INTERNET during the mid-90's and that caused a huge traffic jam.  I don't think the Trademark Office would let that happen again.

Posted by Marty at 03:09 PM | Permalink

The complaint in AFP v. Google is posted here.  Thank you Marquette.  Initial observations - there are 3 copyright claims, one for the headlines, one for the photos and one for the story leads.  There is also an allegation that Google removed 'copyright management information' (see para 73).  There is no 'hot news misappropriation' claim.

A few random observations: this is an interesting case to bring in the age of RSS.  AFP's competitors, such as Reuters and Marketwatch, make their headlines available through RSS.  AFP's cause with respect to leads alleges that the lead is the heart of the story (and therefore copying the lead constitues a substantial taking).  Do any major wire services make full text or blurbs available through RSS (I note that Reuters' feed is a truncated first sentence)?  A headline link on Google news can actually increase traffic for the content creator.  Does reading the lead remove the need to go to the original?

This is also interesting as to whether 'technological' self-help will come into play.  I've read conflicting accounts as to whether AFP could have prevented indexing of its headlines.  Also, Google has been quoted as saying that publishers can opt out (I could not find info on how to opt out on the Google News FAQs. 

Same question that got asked re Google Auto-Link: On whom should the burden of opting out be?

Posted by Marty at 11:56 PM | Permalink

plus you have to retain our law firm and pay for $2500 in legal services.  SF Chronicle article on the use of prominent product names as lead-in for 'free giveways' which are not free giveaways.

Posted by Marty at 06:19 PM | Permalink

IT Conversations first edition of SOUND POLICY hosted by Denise Howell (of Bag and Baggage and the project-we're-about-to-announce fame), on everyone's favorite tool bar function, GOOGLE AUTO-LINK.  Participants (pictured above) were novelist and IP policy advocate Cory Doctorow, RSS evangelist Robert Scoble, and me.

Remember, you do not need a pod to listen to a podcast.

Posted by Marty at 06:06 PM | Permalink

New IP blog: Intellectual Property and Social Justice from UC Davis.

Posted by Marty at 05:35 PM | Permalink

Slate on 'newsmashing,' the ability to annotate webpages, a technology which has been around a while but, argues the author, can gain new currency because of blogs.

UPDATE:  Tech Law Advisor post featuring links discussing the Slate article.

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NY Times:  Bard Neely released a video entitled "Wizard People, Dear Reader" which consisted of the muted video of "Harry Potter and the Sorceror's Stone" and his satirical soundtrack.  Warner Brothers protested.

You can recreate Mr. Neely's version by playing your own copy of the movie with Mr. Neely's soundtrack, at illegal-art.org.

Posted by Marty at 12:02 AM | Permalink

Not the pile-on effect from the French keyword case, but Agence France Presse sues Google over copyright.  Via Reuters.

UPDATE: Prof. Goldman's initial impression of the case.

Posted by Marty at 12:06 AM | Permalink

NPR on Beatallica (Metallica-infused Beatle covers).

Sculpture entitled "Stairway to Freebird."

Discussion of The Grey Album, which mixes the White Album and the Black Album.

Posted by Marty at 11:11 PM | Permalink

Sort of odd story regarding Mickey Mantle estate suing bat manufacturer.

Seinfeld episode entitled The Seven.

Posted by Marty at 11:05 PM | Permalink

Copyfight is provoking me, in a friendly way, to comment on the proposed dilution revision bill.  EFF is soliciting opposition to the bill. I honestly have been too wrapped up with client work to comment meaningfully.

My initial reaction to EFF's hypo regarding UPS suing Brown's Record Store may be off the mark,.  UPS's rights are in the color brown as applied to clothes and to vehicles, but its word marks are THE AMAZING COLOR BROWN and WHAT CAN BROWN DO FOR YOU (I based this on a review of UPS' trademark list on its website), neither of which would give much traction here.  I'm therefore  a little skeptical that UPS could or would go after BROWN'S RECORD STORE (or DR BROWN'S CEL RAY TONIC).

But UPS can plausibly say that a brown delivery truck signifies UPS as source. 

So what should be the result if:

1. FedEx painted its trucks 'UPS Brown' but left FEDEX on them.

2. FlyByNight Courier used UPS Brown trucks.

3. Your pizza place used UPS Brown trucks.

4. Your gay lover dressed up as a UPS delivery man for halloween.

Posted by Marty at 10:14 PM | Permalink

The situation for Google in France gets a little worse.  An appellate court in this decision rules against Google for selling keywords.  One EEC colleague speculates that Google may have a hard time receiving any joy from the European Court of Justice and that its hopes will rest on the French Supreme Court.   The translated decision is a little unclear to me as to whether the Court believes that Google should have known that the keywords were infringing or whether Google took too long to remove the names after it was placed on actual notice.

Posted by Marty at 06:50 PM | Permalink

The IP situation in the law is, how do I put it, screwed up.  The U.S. taxpayer finances the creation of the case law, but there is no unfettered free public access to comprehensive indexed databases of decisional law (the access to US COA decisions being a much-appreciated first step).

As for commentary on the law, law review writers (some of them salaried professors of public or nfp institutions) are not paid, but that doesn't mean (1) that their works are freely accessible; and (2) that somebody doesn't profit from their writing.

Professor Lessig is no longer ok with that.

Posted by Marty at 05:41 PM | Permalink

"Now Why Didn't I Think Of That?" by Sander Gelsing, a Canadian patent and trademark lawyer. 

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Hypo 1.  Acme Lock-Up, a private for-profit security and incarceration provider to municipalities, releases an advertisement that states "Fewer prisoners are killed or seriously injured in our facilities, than in those of our competitors."  This statement is false and Acme knew it was false when making it (the "False Claim").

Hypo 2.  Same facts as Hypo 1 except the False Claim is made by an Acme officer to a reporter from LazyEyewitnessNews TV ("LENS TV").  The reporter is too lazy to corroborate it and LENS TV  runs the footage of the officer making the False Claim without commenting on it.

Hypo 3 Same facts as Hypo 2 except LENS TV knows of the falsity of the claim.

Hypo 4.  Same facts as Hypo 3 except the reporter makes the False Claim him or herself on air as an unattributed statement of fact.

Hypo 5.  Acme prepares a news report on private incarceration services for the purpose of affecting public opinion on the topic.  The report includes the False Claim.  Acme creates an entity styled as an independent news service to distribute the 'report.'  LENS TV receives the report from the news service and runs it as news.

Hypo 6.  Hypos 1 through 5, except instead of a private actor, it's the U.S. Government.

Discuss possible causes of action under the Lanham Act and state statutes against Acme/USG and/or Lens, and who may have standing to bring them.

Posted by Marty at 04:06 PM | Permalink

Copyfight clarifies claims made regarding the Marvel v. NCsoft CITY OF HEROES litigation (unclarified background here).

Posted by Marty at 03:39 PM | Permalink

Man works on high-power line.  Man's cell phone rings.  Cell phone explodes, injuring man.  Man sues Nokia.  Nokia says that its batteries don't explode, but counterfeit cellphone batteries do.  Via The Register.

Posted by Marty at 03:36 PM | Permalink

Transcript and Webcast of House hearing on Trademark Dilution Revision Act available here.

Excerpt from testimony of Anne Gundelfinger (of Intel), president of INTA, discussing dilution by blurring:

Let us take Intel¡¯s PENTIUM mark as an example. (I use PENTIUM as an example not to promote it here as a famous mark, but rather because I do not presume to borrow another company¡¯s mark for this example.) Assume that PENTIUM, one of Intel¡¯s premium brands for microprocessors, is a mark that is ¡°widely recognized by the general consuming public of the United States.¡± Intel is in the computer industry, and the PENTIUM brand has brand attributes that include cutting-edge technology, premium performance, and integrity. If a third party were to adopt the PENTIUM mark for real estate brokerage services or sportswear, not only would the singular association between Intel and its PENTIUM brand be lost over time, but its brand attributes would be blurred and dampened by the brand attributes of the decidedly un-high-tech brokerage services and/or sportswear þu consumers would learn over time to distinguish between the different PETNIUM brands, their sources, and their brand attributes. In short, dilution would be highly likely, even if the impairment to the PENTIUM mark takes years to manifest. As noted earlier, the point is to stop the impairment before the damage is done. 

Posted by Marty at 08:06 PM | Permalink

Trademark Dilution Revision Act (H.R. 683)

AMENDMENT IN THE NATURE OF A SUBSTITUTE TO H.R. 683, AS REPORTED BY THE SUBCOMMITTEE ON COURTS, THE INTERNET, AND INTELLECTUAL PROPERTY

Strike all after the enacting clause and insert the following:

SECTION 1. SHORT TITLE.

(a) SHORT TITLE.--This Act may be cited as the "Trademark Dilution Revision Act of 2005".

(b) REFERENCES.--Any reference in this Act to the Trademark Act of 1946 shall be a reference to the Act entitled "An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes", approved July 5, 1946 (15 U.S.C. 1051 et seq.).

SEC. 2. DILUTION BY BLURRING; DILUTION BY TARNISHMENT.

Section 43 of the Trademark Act of 1946 (15 U.S.C. 1125) is amended--

(1) by striking subsection (c) and inserting the following:

"(c) DILUTION BY BLURRING; DILUTION BY TARNISHMENT.--

"(1) INJUNCTIVE RELIEF.--Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.


"(2) DEFINITIONS.--(A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:



"(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.


"(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.


"(iii) The extent of actual recognition of the mark.


"(B) For purposes of paragraph (1), 'dilution by blurring' is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:


"(i) The degree of similarity between the mark or trade name and the famous mark.


"(ii) The degree of inherent or acquired distinctiveness of the famous mark.


"(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.


"(iv) The degree of recognition of the famous mark.


"(v) Whether the user of the mark or trade name intended to create an association with the famous mark.


"(vi) Any actual association between the mark or trade name and the famous mark.


"(C) For purposes of paragraph (1), 'dilution by tarnishment' is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.


"(3) EXCLUSIONS.--The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:



"(A) Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.


"(B) Fair use of a famous mark by another person, other than as a designation of source for the person's goods or services, including for purposes of identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.


"(C) All forms of news reporting and news commentary.


"(4) ADDITIONAL REMEDIES.--In an action brought under this subsection, the owner of the famous mark shall be entitled only to injunctive relief as set forth in section 34, except that, if--


"(A) the person against whom the injunction is sought did not use in commerce, prior to the date of the enactment of the Trademark Dilution Revision Act of 2005, the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment, and


"(B) in a claim arising under this subsection--


"(i) by reason of dilution by blurring, the person against whom the injunction is sought willfully intended to trade on the recognition of the famous mark, or


"(ii) by reason of dilution by tarnishment, the person against whom the injunction is sought willfully intended to harm the reputation of the famous mark,


the owner of the famous mark shall also be entitled to the remedies set forth in sections 35(a) and 36, subject to the discretion of the court and the principles of equity.


"(5) OWNERSHIP OF VALID REGISTRATION A COMPLETE BAR TO ACTION.--The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register under this Act shall be a complete bar to an action against that person, with respect to that mark, that is brought by another person under the common law or a statute of a State and that seeks to prevent dilution by blurring or dilution by tarnishment, or that asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement."; and


(2) in subsection (d)(1)(B)(i)(IX), by striking "(c)(1) of section 43" and inserting "(e)".

SEC. 3. CONFORMING AMENDMENTS.

(a) MARKS REGISTRABLE ON THE PRINCIPAL REGISTER.--Section 2(f) of the Trademark Act of 1946 (15 U.S.C. 1052(f)) is amended--

(1) by striking the last two sentences; and


(2) adding at the end the following: "A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), may be refused registration only pursuant to a proceeding brought under section 13. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), may be canceled pursuant to a proceeding brought under either section 14 or section 24.''

(b) OPPOSITION.--Section 13(a) of the Trademark Act of 1946 (15 U.S.C. 1063(a)) is amended in the first sentence by striking "as a result of dilution" and inserting "the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment".

(c) CANCELLATION. Section 14 of the Trademark Act of 1946 (15 U.S.C. 1064) is amended, in the matter preceding paragraph (1)--

(1) by striking ", including as a result of dilution under section 43(c),"; and


(2) inserting "(A) for which the constructive use date is after the date on which the petitioner's mark became famous and which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), or (B) on grounds other than dilution by blurring or dilution by tarnishment" after "February 20, 1905".

(d) MARKS FOR THE SUPPLEMENTAL REGISTER.--The second sentence of section 24 of the Trademark Act of 1946 (15 U.S.C. 1092) is amended to read as follows: "Whenever any person believes that such person is or will be damaged by the registration of a mark on the supplemental register--

"(1) for which the effective filing date is after the date on which such person's mark became famous and which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), or


"(2) on grounds other than dilution by blurring or dilution by tarnishment, such person may at any time, upon payment of the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director to cancel such registration.".

(e) DEFINITIONS.--Section 45 of the Trademark Act of 1946 (15 U.S.C. 1127) is amended by striking the definition relating to "dilution".

Posted by Marty at 07:55 PM | Permalink

Invent Blog on what to do about eBay usernames that incorporate trademarks.

Posted by Marty at 06:10 PM | Permalink

A domain name homograph spoof involves the use of a domain name that visually resembles another, presumably well-trafficked, domain name, such as paypa1.com for paypal.com.

The vulnerability exists with the use of only one alphabet but the potential for misuse multiplies with the use of Internationalzied Domain Names (IDNs).

As this VNUNet article reports:

Steve Dyer, director of UKIF told Compueractive there were real concerns about misuse of this by criminals. "The Russian 'A' looks just the same as the English 'A' although it means something different. A criminal could register a domain name using a mixture of ASCII and Unicode that is indistinguishable to the ordinary surfer from the genuine site.

"To prove a point, the website PayPal was created using a mixture of the European and Russian alphabet. People were directed to a fake site and phishers can steal personal details. This site was handed over to PayPal but shows how dangerous this could become", he said.

The proof of concept attack was well-publicized, leading some to suggest that software such as browsers should reduce their support for IDNs until these issues are resolved.

CENTR, the Council for European TLDs, has characterized such calls as over-reactions.

Additionally, ICANN has released a "Statement on IDN Homograph Attacks."  It points out that (1) the problem existed before ICANN existed;, (2) that the 'global Internet community' is working on the problem, and (3) that ICANN was opening a 'global comment forum' on the issue.

Both CENTR and ICANN emphasize the point that homographing spoofing existed before IDNs.  However there is a new facet with cross-character set IDNs of the type discussed in the VNU article that didn't exist prior to IDNs. 

I will phrase this as a question because I don't have the tech background to make this an assertion:

If I'm dealing with one character set, there is a finite number of domain names such as paypa1 that look like paypal, which means I can probably track down the whois info.

If there are N character sets that contains a character that looks like a 'p' and N2 character sets that contain a character that looks like an 'a', and so on, then wouldn't there be N x N2 . . . . . x N6 permutations that create a name that look like paypal?

Doesn't that make the name virtually untraceable through whois?

Is that how these IDNs work?

A list of links with plenty of background and discussion via LexText here.

Posted by Marty at 06:04 PM | Permalink

Today, the Brian Leher show on WNYC began podcasting.  The subject of the first show was, uh, podcasting.  The guest, Paul Boutin, of Wired, gave an introduction to RSS and Podcasting (and there was some discussion as to how Apple might feel about the name PODCAST).

Speaking of which, look at this:

Posted by Marty at 04:57 PM | Permalink

Annual link to my MARCH MADNESS post.

Posted by Marty at 04:50 PM | Permalink

According to this release, the judge in the CITY OF HEROES litigation (background here) has dismissed certained trademark claims brought by Marvel against the provider of a multi-player online role-playing game that allowed users to create superhero 'avatars.'  He also took Marvel to task for certain 'false and sham' exhibits and allegations (see here).  Hat tip to Kurt.

Bonus free-association: prior Blog post on ownership of the term SUPERHERO.

Posted by Marty at 08:22 PM | Permalink

John Berryhill on Domain Name Valuation (originally posted to the INTA list):

There is no shortage of self-styled "domain name appraisers" which use formulas relating to length, common word frequency, etc., but if "lawyer.com" is worth $4M, is "goodlawyer.com" worth more or less than that?

Sedo.com and Afternic.com are probably the top two domain marketplace sites, which also provide appraisal services.

There is a somewhat widespread scam currently going around in which a domain registrant receives a random purchase inquiry.  When the domain registrant responds to the inquiry, the putative purchaser states that they will pay the amount provided by an objective appraisal, and the "purchaser" states that they only trust any of three or four services.  One of those services, coincidentally, is priced well below the other ones.  So, the domain registrant obtains the appraisal, sends it to the "purchaser", and the "purchaser" is never heard from again.  The point of the scam is to induce domain registrants into buying useless appraisals.

One objective measure of domain name value is in terms of the traffic it generates, so long as the traffic is not attributable to a proprietary context (e.g. traffic for "shell" seeking shells is good; traffic for "shell" seeking an oil company is bad).

The clearest measure of domain name value is in terms of the traffic it generates.  In a recently reported transaction, a portfolio of domain names generating 17 million unique visitors/month was purchased for $164M.  Based on click-through revenue, that transaction reportedly valued each domain name on average at about 8X current annual revenue.

Posted by Marty at 03:18 AM | Permalink

The EEJD Blog - "Where Law and Technology Meet"

Law Tech Review from Barry Bayer.

InternetCases.com from Evan Brown.

Posted by Marty at 03:16 AM | Permalink

Apparently the blogosphere woke up yesterday about the bankruptcy bill.

The last ditch effort to derail the bill has begun.

Instapundit quotes one bankruptcy attorney:

"For instance, if a client lies to me about assets and they are later discovered by the trustee or a creditor, I am personally on the hook. There are many other provisions in the bill designed to either keep people from filing or make it so that bankruptcy attorneys look for other avenues. Something is wrong when the majority of bankruptcy attorneys and trustees think it is a bad idea . . .

 

Posted by Marty at 08:19 PM | Permalink

Walter Mossberg, tech columnist of the WSJ, on Google Auto-Link:

I've had long conversations about this with senior Google officials, and they say they are actively considering changing the way the AutoLink feature works so it might not actually alter the Web pages themselves. They note that the feature is a work in progress. But the Google officials also insist their first principle is user convenience.

A compromise is easy to imagine. Instead of adding links to a page, Google could limit the feature to the drop-down list of information it already creates. Or Google could require the user to highlight the address or ID number in order to get the added information. Or it could allow the user to click on an address or ID number while holding down a key. Or it could invite Web site owners to voluntarily enable their pages to accept AutoLink links.

Posted by Marty at 05:36 PM | Permalink

Law.com article on IP issues in Sports including the koan: who owns a player's statistics?

Posted by Marty at 04:17 PM | Permalink

This is not about trademark law, it's about politics and the blogosphere.

To over-simplify, a thesis of the book "What Is the Matter With Kansas" is that blue-collar voters in this country are duped over and over again by the Republican party.  The candidates campaign on 'values' (this time around, gay marriage), but they govern on behalf of big business, whose interests are often adverse to blue-collar 'values voters.'

The Senate has passed a bill on bankruptcy reform.  The bill has been described as a bill written for and by the credit card industry, and will increase the power of credit companies to collect debt, while reducing remedies to those in financial distress.

I have three questions:

1.  Is the characterization of the bill as pro-credit card company, anti-blue collar, an accurate one?

2.  Why has the blogosphere been fairly silent on this?  It's precisely this type of issue where blogging lawyers can educate folk like me (I've seen this post and little else).

3.  Does this bill prove the 'Kansas as Republican Dupe' theory?

UPDATE:  Here's a blog devoted to the Bankruptcy Bill.

Posted by Marty at 04:04 PM | Permalink

Our Israeli trademark and copyright lawyer friend Ellen, writes to report:

"In a surprising and controversial ruling likely to be appealed, Israel Tel Aviv District Court held that a commercial website that copies job opportunity listings from the classified ads of major Israel newspapers, does not violate any copyright held by the newspapers.  Judge Zaft told the newspapers that they have to learn to "cope" with existing alongside the Internet.  The Court's decision allows AllJobs to continue to charge monthly subscriber fee for collating and distributing job ads culled from other major newspapers.  The Court, focusing on the good of the advertisers, stated that the notices belong to the advertisers -- who desire greater exposure -- and not to the newspaper, and that there is "no copyright in information".

As to the maxim that advertisers desire greater exposure, it's true some of the time, and not true if the advertiser doesn't want to field voluminous 'unqualified' responses. 

Here is a discussion from the Newspaper Association of America discussing various theories of protection of classifed ads under U.S. law.

Posted by Marty at 02:18 AM | Permalink

The European Communties Trademark Association will be holding its 24th Annual Conference, in London, on "The Development of Trademark Rights, Designs and Related Rights in Europe", June 8 to 11.  IPKat fans will note that Jeremy Phillips will present.  The program is here.  Early bird registration deadline is Tuesday!

Posted by Marty at 10:32 PM | Permalink

I blogged previously on the Southern District Court of New York decision in the COHIBA cse, wherein the Court held that the Cuban plaintiff had protectable trademark rights in the COHIBA mark in the U.S. after it showed evidence that its reputation here met the standard under Article 6bis of the Paris Convention for protection as a famous mark.

The Second Circuit has now reversed the District Court holding in Empresa Cubana v. Culbro, 04-2527 (2d Cir Feb 25 2005).  It does not reach the issue as to whether plaintiff's mark is famous in the U.S. but instead holds that plaintiff, as a Cuban entity, cannot obtain property, that is to say protectable U.S. trademark rights, under the embargo against Cuba.  Thus the claims are dismissed.

This case may be correct on the law but raises concerns.

First, assuming that the lower court's factual holding that COHIBA is a famous mark in the U.S. is correct, the outcome appears to serve neither the purpose of the embargo nor of the Lanham Act. 

Plaintiff was not seeking the right to use the COHIBA mark in the U.S., only to prevent defendant from using it.  Such an injunction would not bolster the Cuban economy in any meaningful way.  In the meanwhile, the U.S. consumer, presumably aware of the famous Cuban COHIBA mark, will be exposed to defendant's COHIBA product (that had been marketed at times using Cuban imagery).

Second, there is the issue of equal treatment.  U.S. trademark owners have received the protection of foreign courts not only in the 'reputation without use' scenario (see my previous post) but even when external political forces may have prevented the trademark owner from satisfying local conditions otherwise necessary for protection under law.  For example McDonalds was able to protect its mark in South Africa against an interloper during McDonald's non-use during the apartheid sanction period. 

Then there is the issue of retaliation.  Cuba has certainly appropriated the assets of Cuban businesses, which appropriations led to trademark conflict outside Cuba (such as the HAVANA CLUB matter).  However with regard to Cuban protection of U.S. famous marks, on paper at least, Cuba now offers greater protection to U.S. marks than the other way around.  Cuba is an adherent to the Paris Convention and, in theory, would grant 6bis protection to U.S. famous trademark holders (I would be interested from hearing from anyone who has instructed a 6bis action in Cuba - I came close once but the client changed its mind ). Furthermore, U.S. entities may obtain Cuban trademark protection despite the embargo (although not all owners of famous marks do so). 

Some day Castro will fall off the world's stage.  We may at that time normalize trade relations with Cuba.  From a policy perspective, the U.S. would perhaps be better off until then if there was a no-use truce of the other country's marks.  I think we lose out if there's a free-for-all until then.

Posted by Marty at 09:12 PM | Permalink

SearchEngineWatch review of VisioBrand, a directory of brands.

Posted by Marty at 06:11 PM | Permalink

SearchBlog on keyword prices and click fraud.

Posted by Marty at 06:07 PM | Permalink

Today's emerging issue: legal treatment of blogs linking to political candidate websites (as in does linking to a candidate's website constitute a (regulable) political contribution).  Tempest set off by News.com article here; Instapundit compilation of links here.

Posted by Marty at 07:03 PM | Permalink

Discussion of Google's Auto-Link function continues.  Of interest are:

Fred von Lohmann of EFF likening a service to a butler you ask to annotate your mail (emphaszing the 'you ask' and the 'your mail').

Washington Post article reporting that Barnes & Noble has added ISBN links to its own site in order to prevent Auto-link from whisking customers over to Amazon.

Wendy Seltzer identifying technologically similar services in the past.

SearchEngineWatch with the most exhaustive discussion of the technological/market issues I've come across.

Prof. Goldman discussing the 'Google as Agent' issue.

Posted by Marty at 06:51 PM | Permalink

From the New York Public Library's collection of images.

Posted by Marty at 06:29 PM | Permalink