Virgin Makes Pfizer Blush
Pfizer objects to Virgin's use of a little blue pill to brag that it's bigger than its rivals in the bedroom department. Via Adland.
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April 29, 2005
5 Things To Do When You Receive A Cease and Desist Letter
1. Do not contact the other side and discuss the case.
2. Do not contact the other side and discuss the case.
3. Do not contact the other side and discuss the case.
4. Consult experienced counsel and receive an evaluation of your rights.
5. Do not contact the other side and discuss the case.
"I Was Only Joking" Defense
Volokh on the legal treatment of the 'I was only joking' defense in relation to threats against the President and bomb threats on airlines.
Unfettered By Facts or Reason, We Legislate Freely
A column from FT.Com that challenges various underpinings of IP legislation such as the relationship between IP rights and innovation.
Tiger Direct Sues Apple Over TIGER Mac OS
Today Apple rolled-out the latest version of its operating system, TIGER. Yesterday, Tiger Direct, a direct PC seller, sued Apple. I can't confirm the MacWorld's article's assertion that Apple has a registration for TIGER. Tiger Direct had filed extensions to file an opposition against Apple's application for TIGER last August, which opposition seems to have no papers entered since last year, suggesting that the parties were in discussions (the TTAB Vue print-out states that the opposition status is both terminated and pending, an odd state of affairs. The TARR status indicates that an opposition was initiated in December).
Text of Complaint in NY Spyware Suit
April 28, 2005
Ninth Circuit Case on Gray Goods
Ninth Circuit decision on gray goods that, it can't help noting, are actually gray. In this case the goods were manufactured by a licensee of the Canadian trademark owner, sold to a Canadian company, and then shipped to the U.S. Additional elements make this a somewhat complex fact pattern.
American Circuit Breaker v. Oregon Breakers, 03-35375 (9th Cir. April 25, 2005).
If you were brushing up on your gray goods law, you may want to start with K Mart Corp. v. Cartier, Inc., 486 U.S. 281 (1988).
I Should Do Something Like This
From Silicom.com, a feature entitled Ask The (U.K.) Lawyer. Discussion of internesting UK meta-tag case.
It's All Happening At The Zoo
Talent Zoo sues Work Zoo, another job recruitment agency. Via Adweek.
Wal-Mart Objects To Parody
Wal-Mart objects to parody, via SiliconValley.com.
April 27, 2005
Your Tax Dollars Working Overtime
That's the U.S. Patent and Trademark Office Data Center? Two guys and a printer in the lobby? No wonder they can afford to lower fees. Hat tip Snark Hunting.
April 26, 2005
GoDaddy Surpasses NSI As Top Registrar
Edelman on Spyware
Ben Edelman writes to advise that he has updated his comprehensive Index of Spyware Installation Methods.
Trademark Rights As Baseball Memorabilia
Albuquerque Journal: Nostalgic Albuquerque Man Buys Rights To Name of City's Former Pro Baseball Team
And The Top Trademark In Vietnam Is . . .
From the Vietnam Economic Times:
SAMSING-VINA, [was] crowned the top trademark in Vietnam by the international market research institute GFK at a ceremony in HCM City.
Samsung colour computer screens and computer LCDs were also awarded the title.
According to the survey by German analysts GFK, Samsung holds 22% of the colour TV market in Vietnam, 33% of the colour monitor market, and 39% for LCD monitors, outstripping all other rivals.
April 25, 2005
An Episode Of Deadwood Would Last about a Minute
Text of approved Family Entertainment and Copyright Act here.
EFF discussion of bill here.
MPAA press release on new law here.
The Clearplay DVD playback device, which edits out objectionable material, is now clearly lawful as a result of a provision summarized here:
Title II: Exemption from Infringement for Skipping Audio and Video Content In Motion Pictures - Family Movie Act of 2005 - (Sec. 202) Creates an exemption from copyright infringement for: (1) the making imperceptible, by or at the direction of a private household, of limited portions of audio or video content of a motion picture during a performance in or transmitted to that household for private home viewing from an authorized copy of the motion picture; or (2) the creation or provision of technology that enables such editing, is designed and marketed for such use, creates no fixed copy of the altered version, and makes no changes, deletions or additions to commercial advertisements or promotional announcements that would otherwise be performed or displayed.
Amends the Trademark Act of 1946 to protect from liability for trademark infringement: (1) persons who engage in the above-referenced conduct; and (2) manufacturers of technology that enables such editing if notice is provided that the performance of the movie is altered from the director's or copyright holder's intended performance.
Clearplay device available here.
Santorum Attempts To Control The Weather
My Between Lawyers post on Senator Santorum's attempt to control the weather.
Pictured: Simon Barsinister, who was thwarted in his attempts to control the weather by Underdog.
April 22, 2005
Try The Veal
Wall Street Journal article today, page W1, on undisclosed endorsement deals by chefs. One chef gets paid $10,000 a year from the Alaskan Seafood Marketing Institute, to use the word Alaskan to describe his king-crab dishes. One chef gets free veal to make his "Bronx style filet mignon."
Hint to trademark search firms and other trademark service vendors. I'll be at INTA.
April 21, 2005
CTM For Ruffles Breaks Into Chips
Filing for a Community Trademark has always included a gamble. The costs for obtaining a CTM are lower than filing in the separate national jursidictions. However a CTM is all or nothing - you cannot be successfully opposed in any CTM jurisdiction - there is no such thing as a partial CTM. If you are successfully opposed in one or more jurisdictions, your CTM is 'broken' and you must re-file your surviving 'shards' in those countries' national trademark office. This is an expensive debacle. This is also potentially an argument for using the Madrid system instead.
The most recently reported instant of a broken CTM is that of RUFFLES for Pepsico, which will lost the chance for a CTM based on a German company's rights in RIFFELs for potato chips. This article suggests that this opposition is based on Pepsico's 1996 application (CTMs went live in 1996).
Community Trademark FAQs here.
Spam v. Spam Arrest
The TTABlog on Hormel's cancellation action against the SPAM ARREST mark.
April 20, 2005
Subliminal Advertisement for Trademark Lawyers
Trademark owner adopts trademark, presumably doesn't search mark, gets demand letter, abandons expensive promotional campaign. Via applegateoregonnews.com.
April 19, 2005
Habemus Papal Domain Names
BENEDICTXVI.COM was registered April 1 of this year. POPEBENEDICTXVI.COM was registered in February.
Update: much coverage on 'Pope-squatting.'
April 18, 2005
W 43 v. W '04
Via cnn.com, designer of W '43 logo sues Republican National Committee for use of W 04 logo, alleging that he had pitched his design to RNC merchandising licensee, Spalding Group.
I attempted to go The Spalding Group's store which is really at georgewbushstore.com to see a copy of its W 04 logo (no luck). At first I mis-typed in georgebushstore.com, which turns out to be the George Bush Is The Antichrist Store.
Rated LG - Legal Guidance Suggested
This is primarily a G-Rated blog, although some material is PG-13, some is rated R, and never anything NC-17. We've shown one female nipple but it was made of terry cloth and therefore hard to determine the appropriate audience.
The NY Times reports that the MPAA, owner of certification trademarks for the ratings system I just used, has send a demand letter to authors of fan fiction who have been using the system to self-rate their content (so that no one looking at, for example, some Harry Potter fan fiction, inadvertently encounters some age-inappropriate tricks).
Other rating systems exist of course - The Entertainment Software Rating Board has the CEETMA system. Television has a strange inconsistently applied system that requires deciphering. There is also an Internet Content Rating Association.
Complaint in Google v. Froogles
Via Search Engine Journal, an article re Googles filing of a trademark infringement complaint against Froogles, and a copy of the complaint via Search Engine Watch.
Spirit of Cuba for Rum
St. Petersburg Times discussion of dispute between Pernod (distributor of HAVANA CLUB outside the U.S.) and Matusalem, over its use of SPIRIT OF CUBA for rum.
April 12, 2005
Light Blogging Ahead
See you next week.
Google News Use of Third Party Content
LA Times article on Google's use of third-party news for its Google News service. Of interest: AP is asking Google to license its content.
Bar Committees As Group Annotators
I've been thinking some more about group annotation of legal texts and I think that substantive law-oriented groups such as The Copyright Society, or the practice committees of the various bar associations would be naturals to experiment with (and coerce members to contribute to) wiki-type annotation and linkification technology. See here for more details.
IP Issues in Online Gaming
I'm late to the game on this but here's an interesting ITConversations audio from November 2004 on intellectual property issues raised by MMPORGS and other forms of online gaming.
REDSKINS Case
Article on REDSKINS case. I concur with IPKat that as troubling as any other aspect of this case is the team's determination to fight so hard to retain a name that identifies a race of people by the color of their skins, for the purpose of a game. In an effort to move licensed merchandise (or secure better stadium deals in new cities), professional teams jettison every aspect of their trademark indicia. Washington's reluctance to migrate away from this term is regrettable.
Tools To Police Trademarks In Keyword Ad Copy
Model Of A Modern Military Plane
Should companies that make models of military aircraft pay royalties to defense contractors for the use of their creations? Via the Rutland Herald.
April 11, 2005
51,850 Cases of Trademark Infringement in China in 2004
Via Xinhua: "Chinese industry and commerce management departments at all levels discovered 51,851 cases involving infringement of trademarks like Louis Vuitton, Chanel and POLO last year, up 27 percent from the previous year, an official aid here Thursday."
Mandrake Makes Trademark Disappear
French software company Mandrake changes named to MANDRIVA, thus making its trademark dispute with Hearst Corp., owner of MANDRAKE THE MAGICIAN, disappear.
Tiger's Shot on the 16th Hole
Why not link to the homemade Nike commercials of Tiger's 16th hole shot that are popping up.
April 08, 2005
New Branding Blog
STRANGE BRAND is a new blog on branding from the CEO of Forty Media. Recent posts concern AJAX, the Google dance, and advertising in RSS feeds.
Experiment Re: Group Annotation of Legal Text
You may be familiar with WIKIPEDIA, an 'open' encyclopedia that anyone can edit.
You may be familiar with Open Source Software Development wherein any developer can take a crack at developing a program (Linux and Mozilla likely being the best known examples of such a process).
You may be familiar with the Talmud wherein generations of scholars contributed to commentary on an original text (leading to the present use of the term 'Talmudic' to mean either "thorough" or "too thorough").
If you're lawyer, you're certainly familiar with the great legal research tools such as Wright and Miller, the West Digests, and in IP, Nimmer, McCarthy and Gilson.
These research tools are monumentally useful works of encyclopedic comprehensiveness. On the other hand, single-source tools are receiving criticism for according too much influence to the interpretation of a single viewpoint.
In contrast, large-scale distributed projects are thought by some to be an increasingly powerful economic force. However, you don't have to read too many open comment threads to realize that people post a lot of, to put it mildly, irrelevant material (and the accuracy of some of Wikipedia's information is a subject of debate).
So to what extent can the power of the blogosphere be harnessed to create open-source legal reference works?
I don't know. Legal commentary written by inexperienced folk is not going to be particularly helpful. However it seems like fun to experiment with the technology. Co-conspirator TechLaw Advisor was good enough to set up a Wiki spot at legal.jot.com featuring two recent cases of note - Capital Records v. Naxos. The thought was to have a single text and invite annotation onto the text.
Instructions on how to post an annotation here. An example of Group 'linkification' of Grokster here. Please take a look.
Papal Domain Names
The domain name JOHNPAULIII.COM is available for sale on AfterNic for $1950. It was registered in 1999.
POPEJOHNPAULIII.COM re-directs to catholichomeschooler.com. It was registered this past January.
Names such as Lando II, Formosus II and Agatho II, papal names not re-used, in one case, since 681, are still available. Hat tip Volokh.
April 06, 2005
'Not The Same Starbucks But Across The Street From Each Other
Gratuitous Hostility Possible Defense to ACPA; Purposeful Hostility, Maybe Not
Ok, let's say I have a dispute with you. Maybe you're my former employee and you have cheated me out of the pension that is rightfully mine. Or you're the town police department and you unfairly ticketed my Cooper mini. Or we have some other transaction that leaves me feeling hard done by, and I go to your office to demand that you make amends.
So you tell me to go pound sand and on the way out the door I grab some piece of your office equipment and I say "you'll get this back when we resolve this dispute on my terms."
I want something of value from you (resolution of my claim), and I'm ransoming something of yours as leverage, exposing you to hardship until resolution.
It's my view that if I have a dispute with you, and I grab a domain name that could divert traffic from you, and use it for speech that on its face is non-commercial, that my overall use of the domain name may still be in bad faith because I registered it to obtain a personal commercial advantage from you, namely favorable settlement of our dispute.
This is not necessarily the majority view and I've aways been concerned that cases dismissing cybersquatting in this fact pattern provided a road-map for successfully extortion.
Now we turn, as they say, to the instant case.
A guy named Kremer gets a hair transplant. Stop me if you heard this one. The hair transplant goes badly it seems, and Kremer sues Bosley Medical for malpractice. Malpractice case gets dismissed, don't know why.
Kremer bears a grudge. He registers BOSLEYMEDICAL.COM and BOSLEYMEDICALVIOLATIONS.COM. Five days later he delivers to Bosley a letter that is cryptic and doesn't mention the domain names, but it does begin:
"Do you want to discuss this?"
and the letter does refer to using the Internet to disseminate negative information about Bosley. Kremer waits a while and then begins to use websites at the domain names to disseminate negative information about Bosley.
Ok, what's going on here? What was Kremer's intent in registering the names?
Kremer maintained the site with non-commercial critical commentary (including information on a D.A. investigation of Bosley) and importantly, he didn't fall into traps that doomed other 'non-commercial' cybersquatting defendants in that he did not link to, for example, any revenue-producing activity of his own, or to that of competitors.
Bosley brought a UDRP (regarding only the bosleymedical.com name), and lost. The Bosley UDRP decision was notable, like the Bridgestone UDRP decision, in that in both cases registrant utilized a non-commercial use defense to retain control of a 'per se' version of a name (that defense being more successful in, for example, a __SUCKS.COM scenario).
Bosley brought a civil action under trademark infringement and ACPA. The district court dismissed and Bosley appealed to the Ninth Circuit.
There is a lengthy discussion of trademark infringement and the Court held that Kremer did not make commercial use of Bosley's marks (and it dismissed the infringement cause). I don't think this is surprising (but am surprised that others don't think its surprising).
What's interesting (to me) is the ACPA discussion (p. 3988-93). The Ninth Circuit notes that, unlike infringement, there is no commercial use requirement. It also notes that:
Allowing a cybersquatter to register a domain name with a bad faith intent to profit but get around the law by making noncommercial use of the mark would run counter to the purpose of the Act.
Determining that the District Court erred by imposing a commercial use requirement, the Circuit Court remanded the ACPA claim and if you read between the lines, it appears to direct Bosley to focus on the 'extortion' angle to see if that proves bad intent.
I've surveyed the blogosphere and this decision is being characterized as a victory for 'gripe sites.' (See here, here, and here). With regard to the infringement analysis, it is.
However, I think the fact that the ACPA count survived is important. It is hard to prove intent, and it is hard to reveal purposeful hostility masquerading as gratuitous hostility. But this case takes one of the hardest ACPA cases to win and suggests a way.
Bosley Medical v. Kremer, 04-55962 (9th Circuit, April 4, 3005).
April 05, 2005
Like Water, Only Less So
This is the oddest descriptor I've come across in a while: NEAR WATER. According to this NY Times article on the Coca Cola Company in Japan, its a flavored water.
April 01, 2005
Nobel Prize in Economics Awarded To Dilution Researcher
Press Release: The Bank of Sweden
The Royal Swedish Academy of Sciences has decided that the Bank of Sweden Prize in Economic Sciences in Memory of Alfred Nobel, 2005, is to be awarded to:
Massachusetts Institute of
for methods of measuring trademark dilution
Dr. Panjandrum-Lipshitz, is the first quantum physicist to be awarded the prize in Economics. Intrigued by his use of scanning tunneling microscopy to photograph sub-atomic particles, several large trademark owners commissioned him to tackle such issues as: What is the diminution of the market capitalization of Intel Corporation if an art gallery in Massachusetts
Link To Google v. American Blind Decision
The 'money graf' in the Court's decision in Google v. American Blind on Google's motion to dismiss the direct liability cause (in other words, Google's liability not for what the advertiser does but for Google's act itself of selling the advertiser the keyword), was:
"In light of the very liberal standard applicable to Rule 12(B)(6) motions, the Ninth Circuit's expansive holidng in Playboy (fn omitted), and the obvious commercial importance of this case . . . the Court concludes that resolution of the novel legal questions presented by this case should await the development of a full factual record."
Also read footnote 24.
So this doesn't really change the 'destined' legal treatment of Google's liability but it does perhaps encourage others to sue Google thinking that at least their suit will likely make it past the pleadings stage.