INTA’s magic kingdom

This year’s annual meeting of the International Trademark Association was held in sunny Orlando, Florida, which in many respects is a very appropriate place for an association of trademarks to meet.  Orlando, of course, is the world’s epicenter of theme parks.  And the theme of themes is joyful, real-time, three-dimensional interaction with “intellectual property,” which for present purpose mostly means stuff born of copyright but transmogrified through the wonderful process of “branding” into trademarks.

Such undead creatures, of course, once so transformed can live forever as long as they justify their existence by bringing forth gold.  If so, they will be nurtured, grown and tended forever, and any threat to their health, or to their sustenance, will be brutally interdicted.  (Only in the event of a horrible accident of mutation — where, as a result of some regressive, non-adaptive feature, because of which their continued existence threatens the survival of the entire colony, will one of these creatures not only be allowed to die but, in fact — well, it is better not to speak of such things at all….) Read More…

The color purple

Originally posted 2015-06-19 15:13:46. Republished by Blog Post Promoter

Cadbury-PurpleCadbury is purple in the face over not being able to secure the wordlwide exclusive rights to the use of the color purple in association with the sale of chocolate — even as against an Australian company that’s been using the two together for almost a century:

Cadbury tells me it is “vigorously appealing” against a judgment over the use of purple. In a case that it has pursued for five years, Cadbury has tried and failed to stop Darrell Lea, an Australian chocolate manufacturer, from using the colour.

Despite the fact that Darrell Lea was established in 1927 and has been using purple for most of its existence, Cadbury insists that it has no right to the colour. Cadbury has registered one shade of purple in relation to block chocolate in tablet form in Britain but it has not been as successful elsewhere.

Purple, actually, may be the oldest legally-protected “trademark” color, of sorts. The color was, at certain times during ancient times and antiquity, permitted to be worn only by the nobility. To which, in the chocolate sense, Cadbury may or may not have a claim. I do like the stuff, and perhaps it is among the elite in the chocolate hierarchy. Certainly compared to virtually anything else the English make it is uniquely edible — but regal?

UPDATE:  Cadbury’s claim melts in its hands, not just in our mouths.

UPDATE II:  Settled, dismissed, whatever. It’s all over but the calories!  Via @IPThinkTank.

UPDATE III: Yes.  But no.  I mean yes.

Giving up the Web

Originally posted 2010-11-05 17:11:33. Republished by Blog Post Promoter

ClickZ News says lawyers are “Giving Up on Web Trademark Infringement”:

“Trademark dilution is death by a thousand cuts,” said Joe Dreitler, partner at Frost Brown Todd. “And if there are a thousand people doing parodies of Louis Vuitton, at what point [does it occur]?”

It’s almost as if the claim of trademark dilution, regarding which we have long been very dubious, brings its own punishment: It is now so relatively easy for a truly famous mark (such as Vuitton, which we have represented) to make a meritorious dilution claim and yet it is even easier to dilute a trademark on the Internet. And the bigger the trademark the more dilutable… the more it cries out for dilution… the more lawyers and trademark owners trip over themselves trying to figure out what to do about it. As this article demonstrates, they’re increasingly frustrated over their inability to do anything as the truly anarchistic nature of the Internet defies enforcement regardless of budgets or ambitions.

Probably the smart thing would be to forget about dilution, which the world lived without since Creation, and focus on tight brand building and enforcement against real infringements. But of course that is a course the trademark owners are constitutionally incapable of considering. Are they on the verge of making utter fools of themselves in the RIAA “constant nuclear option” enforcement — I mean, “enforcement” — mode? Probably. And law firms will profit all the way, which is the up side. (You think I meant that as a bad thing?!)

Design patents at the Supreme Court: A picture is worth…

D 593,087

D 593,087

 

FOUR HUNDRED MILLION DOLLARS…Or maybe the three pictures on this page are worth that much?

Two pics

 

                                                                D 618,677                                                                              D 604,305

 In August of 2012 a jury awarded Apple over $1 billion in patent infringement damages against Samsung in one of the legion lawsuits in the ongoing smart phone war between these two competitors. On May, 18, 2015, the Federal Circuit, the appeals court that reviews determinations of the federal district courts in patent cases, upheld the award of nearly $400,000,000 by a California jury against Samsung for infringement of Apple’s three pictured design patents. A design patent can be awarded by the United States Patent and Trademark Office for “any new, original and ornamental design for an article of manufacture.”

Design Patents at the Supreme

The method of calculating damages for infringement of a design patent is found in Chapter 35 of the United States Code at Section 289: Read More…

When Will The Law Catch Up To Self-Driving Cars? [Infographic]

Self-driving cars seem like a good idea- you can concentrate on other things, they take human error out of the equation, and they appear to be much safer. But are they even legal? There are many places throughout the United States where there aren’t yet laws that apply to self-driving cars. Currently 4 states have passed bills on automated driving, but there’s a lot more to it than that. Learn more from this infographic!

Self-Driving-Cars

Nominative fair use: The Second Circuit names names

Thurgood Marshall US Courthouse

Second Circuit

Nominative fair — the “unauthorized” use of a trademark as a trademark specifically to invoke the trademark, as opposed to its “non-trademark” use to describe the alleged infringer’s goods or services use — has now come East, courtesy of the Second Circuit Court of Appeals in International Information Systems Security Certification Consortium Inc. v. Security University LLC. 

Let’s call this bumbling, cumbersome caption by the short title, “Security University.”

The opinion (link here) (hat tip to Law360) is an important one for a couple of reasons, of which the ruling on nominative fair use is certainly the more important one.  As Bill Donahue’s Law360 piece explains:

The ruling came in a clash between a small IT security company called Security University LLC and the International Information Systems Security Certification Consortium Inc. over whether company misused the organization’s “Certified Information Systems Security Professional” certification mark in advertising its services.

In particular — get this — the defendant was going around calling one of its trainers a “Master” of this particular techie domain, and just wouldn’t stop:

ISC2 objects to some of 1 SU’s advertisements, run between 2010 and 2012, which, ISC2 argues, misleadingly suggested that SU’s instructor, Clement Dupuis, had attained some higher level of certification as a “Master CISSP” or “CISSP Master.” . . .

SU began using the term “Master” 1 in May 2010. On June 9, 2010, ISC2’s counsel wrote to Schneider asking that she cease using the phrase “Master CISSP” in SU’s advertisements. On June 13, 2010, Schneider emailed Marc Thompson, an employee of a third party entity that oversees seminars on ISC2’s behalf, stating that “SU will continue to use the word Master. Master Clement Dupuis is a Male Teacher [and] thus he is a Master according to the dictionary.”

“He is a Master according to the dictionary.”  

This was the point, as we have learned, at which it should have been clear that if this case were to be litigated, someone’s story was really, really going to stink up the place. Read More…

Adverference?

Originally posted 2009-01-22 13:31:48. Republished by Blog Post Promoter

"The Interloper" (Norman Rockwell)

"The Interloper" (Norman Rockwell)

Working from home today after a bruising few weeks at work (see yesterday’s post!), I finally figured out what was going on with banner ads on my Internet browsing.  It raises an interesting question about Internet-related copyright and trademark law.

We use a filtered Internet service at home.  This way we know that not only do our children not have access to or permission to use the Internet, but even if they “happen to” get to it anyway, the worst of the worst is not coming into our house.  This is good for the grownups too, of course.

I recently adjusted the filtering level on the service and by virtue of that change the filter now happens to block banner ads.  This I did not mind, because many such ads, especially on Yahoo! mail, are quite garish and often rather gross and, frankly, indecent.  After this change I also started seeing a filtering message in the place of familiar, and relatively high-class, banner ads on my favorite “big” blogs that feature ads, such as Instapundit. It was not a great aesthetic experience but I got used to it.

A little while later I had the jarring experience of realizing that ads for charity auctions on behalf of orthodox educational  institutions — including a client of mine! — and solicitations for fundraising on behalf of penurious young couples in Israel were appearing on that very same site, one of the most popular English-language blogs in the world!  Well, I would say Glenn Reynolds is pretty Jewish-friendly, to say the least, but this struck me as pretty odd.

instapundit-jewish-after-all

Once I could focus on the question, however, I realized what was going on:  My filtering service was reselling the filtered advertising real estate to advertisers interested in the orthodox Jewish Internet user market!

This seems to raise some interesting questions, doesn’t it?  Read More…

Bayer v. Belmora (the “FLANAX case”) – Petition for rehearing en banc

This Week in Law: “Never Mind”

Belatedly, and inexcusably — and, yet, does stuff this sparklingly brilliant ever get stale? — here’s the video of of my first (and only) appearance on Denise Howell’s This Week in Law all the way back on March 25, 2016 along with Kashmir Hill and old friend J. Michael Keyes.

The official blurb is, “What does privacy mean to you?  Free speech and artificial intelligence, the FBI may have help unlocking an encrypted iPhone, Hulk Hogan vs Gawker Media, Naruto and the monkey selfie rides again and more!”

You can download or subscribe at https://twit.tv/shows/this-week-in-law. If you do that sort of thing.

How bad is really bad IP blogging?

Originally posted 2014-08-11 18:52:37. Republished by Blog Post Promoter

I don’t like to call out other bloggers, but I do it sometimes.  People are gentle with my mistakes — Steve Feingold being the model of graciousness this week (as he always is, of course!) — usually.

Hand shredderBut if you write a blog and you jack it all up full of SEO juice and it then gets picked up by my daily Google Alert for “trademark” and then I poke around on your oddly-written Minnesota Attorney Blog blog where you have a category called “Minnesota Intellectual Property” — and hey, I know as well as anyone that they do intellectual property in Minnesota, so I’m not going to snark you out on that — and then I find that each post has this canned-SEO preface to it that says, Minneapolis Intellectual Property Attorneys,”… you know, just in case someone’s, like, searching for the phrase MINNESOTA INTELLECTUAL PROPERTY ATTORNEYS or something… and I click one of the two posts in this category by these “attorneys…”

It had better be good, brother.

So:

Trademarks do not have to be registered in order to be valid. The person who uses a mark in commerce first obtains a trademark on that mark. This mark indicates where a good or service came from. It shows the source. The person who obtains a trademark on a mark also obtains the right to prevent others from using that mark in commerce.

No.  Not good.

Not, not, not, not good.

I feel like Scott Greenfield.  But sometimes, somebody’s got to do it.

Not.  Good.

Minnesota Intellectual Property.

Attorneys.

Bad.