LIKELIHOOD OF CONFUSION®

I don’t report on every dumb trademark lawsuit, because the really goofy ones involving famous companies usually end up getting mainstream press and big-time blog attention as well as other bloggy sober analysis, so what do you need me for?  I just work my little sub-micro-niche with thankless dedication and motivated solely by a love for the law which can never be truly understood by the mortal world.

On the other hand, when big-time meta-blogs on the Law.com network say nice things about LIKELIHOOD OF CONFUSION® … it’s worth a little reciprocal attention to see what could have caused such a thing (besides the fact that Ambrogi didn’t write the piece), even if everyone else is, in fact, all over the story:

“The question of ‘likelihood of confusion’ is the signal test to determine if a trademark infringement claim is valid.” So says the introduction to the excellent Likelihood of Confusion blog. Using that test, then, I ask you: Would you be likely to confuse a $30 pair of rubber shoes with a $50,000 sports car?

That “likelihood” appears to be the fear of Porsche.Footnoted.org writes in this post that in a recent Form 10-Q filed with the SEC, Colorado-based shoe manufacturer Crocs disclosed that it is being sued over its use of the name “Cayman.”

Some days I feel as if I should start reading 10-Q’s to find material, too, but not the day they put that one out.  And at my age, footnotes are out of the question — even when the feet are shod in Crocs, as mine usually are by mid-afternoon.  Of course if I could really make heads or tails of a 10-Q, “at my age” I’d actually be ensconced in a Porsche by mid-afternoon . . . but, depressingly, I digress.

Bottom line (I’ve added a couple of “others in the blogosphere” links):

Others in the blogosphere have been quick to point out that in addition to the remote possibility of confusion here, the word “Cayman” is commonly used in many other contexts. Thus, a certain species of alligator and residents of a British overseas colony may need to contact their lawyers.

Yeah, but still.  Let’s not get ridiculous!  Unlike alligators and faraway subjects of Her Majesty, both shoes and sports cars both get you places, right?  And who among us can’t really “book” in a pair of Crocs?  I’d call that a pretty good “bridging the gap” scenario, wouldn’t you?

For money, I mean!  Of course we would.

There you go, then.

Daniel Corbett, who unlike some people does not merely have a sadly un-updated picture of his younger self but who is by all indications actually as terrifyingly youthful as the visual evidence suggests, has despite this seeming deficiency quite ably rolled out the Pittsburgh Trademark Lawyer blog.

Welcome to the party, Daniel!  The more the merrier.  Just keep at it, and speak that Pittsburghy trademark truth!

Originally posted 2007-02-03 21:24:30. Republished by Blog Post Promoter

Knock-knock?  What’s there?

Originally posted 2006-08-08 00:29:57. Republished by Blog Post Promoter

I am sure it was accurate, in some Ratherian sense … but it was fake, and the blogsphere did brilliantly what it does best: Caught it and called the fakers out. Kudos of a sort to Reuters for, unlike Dan and the People’s Commissariat of Propaganda at CBS, admitting the undeniable. Yes, that’s what we’re grateful for these days. Considering that outfit’s very checkered past, let’s not take small miracles for granted.

For better and frequently for worse, there is nothing like visual “proof” to convince people of something, but there is one thing we have learned: a picture is more amenable to double-checking than mere words. All of which raises the question: What fakeness — from Reuters and the usual suspects — are we not catching? And why ever are the “mistakes” always in one direction?

UPDATE: Instapundit, tanned, rested and ready, weighs in, along similar lines. Chris Muir, finally having taken a cold shower (or a relatively tepid one), finds the lighter side.

(Posted Monday, August 7th on Dean’s World.)

Originally posted 2005-03-01 00:00:00. Republished by Blog Post Promoter

Remember this item?  I wrote, regarding a family’s request for access to a serviceman’s email account after his death, as follows:

I say that absent a specific compelling reason to get the email information — i.e., the location of his will or the buried treasure or something like that — it should die with the man. And, considering that, I would also require that the information ultimately revealed be narrowly-tailored as well. The court in camera, or a special master, or another neutral person should fetch the relevant information and then Yahoo! should blow taps on the account. A hero is entitled to die with his privacy and his secrets intact.

Michell Malkin reports on new developments. Like her, though for different reasons set out in my original post, I’m lukewarm about this move.

UPDATE TO THE UPDATE: Deeper treatment of this issue, and specifically the Justin Ellsworth case, continues apace. Here’s one piece in IP Law & Business (the article is not available on line for free) by Mark D. Rasch, who formerly headed the Department’s efforts to investigate and prosecute computer and high-technology crime. He recommends the creation of an ‘”Internet Living Will” designating who can have access to your electronic assets in the event of death or incapacitation, and the scope of their authority to act on your behalf.”

Also, Jonathan Bick, a lawyer in New Jersey who’s an adjunct professor at Rutgers and Pace law schools, writes in the New Jersey Law Journal, available at Law.com (registration required here, too) that agrees with the argument of my interlocutor Paul Gowder in the comments to my original post (above) that this stuff ought not to stay private: “[D]efending nondisclosure of information after a person has passed away on the basis of privacy would present significant legal difficulties. A typical result was found by the district court in New Era Publications Int’l v. Henry Holt & Co., 695 F. Supp. 1493 (S.D.N.Y. 1988), aff’d, 873 F.2d 576 (2d Cir. 1989), when it dismissed a privacy argument by noting that the author of the copyrighted work was dead, thus eliminating his privacy interests. This would also be the likely outcome should a privacy argument be present in the Yahoo! matter.”

I think it’s the wrong outcome. Expectations, expectations, expectations!

UPDATE ON REPOSTING IN 2009: Recently this item about “what happens to your email when you’re dead?” got a lot of play over Twitter.  This has been dealt with, in terms of what email providers do, elsewhere, too (and in a funny, macabre way here), but the issues I raised in this post — i.e., what should happen to your emails when you’re dead? — are not really being taken to heart by lawyers, policymakers or too many other people either.  Thinking about this more, I realized that I wrote so many posts on this topic, the last of which is here, that it should be part of my backward looking categorization project, and made up a whole category for these “emails of the dead” posts.  Enjoy them… while you can.

Originally posted 2009-01-01 16:58:41. Republished by Blog Post Promoter

Posted on November 17th, 2008:

No, not that Sonny. No, rather this: If America’s most famous variety-show-star-turned-congressman hadn’t slammed into that tree on that fatal day of downhill skiing, we’d probably never have the Sonny Bono Copyright Term Extension Act of 1998. That’s reason to mourn him right there.

Fair enough — if he’d sat in the lodge and drank cocoa instead we would probably still have the law, but at least its embarrassing content would not be matched with a preposterous name. But given that it is what it is, ten years later, what is it? Gigi Sohn says well:

How can you measure the number of new works and new wealth that were not created because of the extended terms? Or the number of new orphan works created? But since it has been shown that about 98% of copyrighted works lose their value between year 55 and year 75 of protection, we know who has profited from the law – large, multinational media companies like Disney, Fox and NBC-Universal, who maintain a vise-like grip on works that should have belonged to the public years ago. Suffice it to say that the Sonny Bono Act was nothing more than corporate welfare for big copyright holders. . . .

Ok, I got that off my chest. Now let me say something positive about both the DMCA and the Sonny Bono Act. The simultaneous passage of these two copyright strengthening bills, despite the strenuous objections of libraries, arts and cultural organizations, consumer electronics companies, and cyberliberties groups clearly hit a nerve, and became the impetus behind the copyright reform movement. . .

[W]hile we’ve stopped many bad things from happening, we have not yet been able to get any law or policy adopted that would bring some balance (or sanity) back to copyright law.

Read it! Hat tip to Denise Howell, via Twitter.

Comment here.

You know the drill!  Here’s some of what I found flying around out there that relates to LIKELIHOOD OF CONFUSION®’s docket  and which I saw fit to share, little-birdy-like, with those following @roncoleman last week:

• RT @copyrightlaw: Secrecy surrounding Anti-Counterfeiting Trade Agrmnt (ACTA) worries public interest groups http://bit.ly/2DUff
• RT @VBalasubramani interesting suit re sale of virtual goods and copyright infringement: http://j.mp/4BAMwz (@InfoLawGroup)
• RT @GuyKawasaki: What happens to email after you diehttp://om.ly/biPo — Well, what SHOULD happen?:http://bit.ly/4qL162 (LOC® 2006!)
• RT @smbayard: RT @InternetLaw Goldman: “A New Way to Bypass 47 USC 230? Default Injunctions and FRCP 65”http://bit.ly/4oNbyB
• RT @internetcases RT @eclewis – Ownership of IP on Social Networks http://is.gd/4TTfT
• RT @InternetLaw UK: High Court rejects libel case because article received approximately four visits http://bit.ly/1VDKvr

A nice harvest, once again.

Originally posted 2007-07-15 13:03:54. Republished by Blog Post Promoter

No “free speech absolutist” I, I like defamation as a cause of action when you can prove its elements, and I’m glad to see it hasn’t been completely eliminated by judges who raise the bar plaintiffs must overcome to impossible heights on imagined constitutional grounds. Maybe it helps if the plaintiff himself is a judge. Well, that works for me, too, as long as the next guy can take advantage of the precedent, and the climate, that an unaccustomed degree of actual responsibility for what you write and publish is imposed, as in days of old. Whether offline (if there is really still such a thing, or if it matters) or online.

As the link indicates, however, that doesn’t mean that a plaintiff with a meritorious claim is entitled to violate ethics rules — especially if he’s a judge. I’m “with that,” too. Evidently, after getting his jury verdict for $2M against the Boston Herald, Massachusetts Superior Court Judge Ernest Murphy allegedly wrote the paper a letter demanding a substantial amount more “or else.” One letter was supposedly written on court stationery — very bad.

This is only the filing of charges, not a determination of wrongdoing. I mean, I’d better be careful what I say. This guy does sue people. And win. Hat tip to Overlawyered.

Originally posted 2008-01-28 15:33:05. Republished by Blog Post Promoter

Thomson CompuMark’s home page lists this blog among a cozy coterie of worthy trademark resources. “Legal News and Perspective,” they call it. Thank you, Thomson.

I must admit the Thomson people do a fine trademark search and an even better INTA party, unless you want to actually have a conversation with an adult friend. But for the young crowd at INTA, the Thomson party is the party every year.

(No, I do not plan to be in Berlin. Berlin? Please.)

Originally posted 2007-11-09 01:37:32. Republished by Blog Post Promoter

Mises Blog:

This is my main problem with current trademark law — that in transferring the customer-fraud-based right to trademark holders, the fraud basis is lost over time, as the trademark right is conceived of as a right of the trademark holder. Then it gets broadened and extended, as all IP law does, just like money is continually debased and rights are continually diluted — for example, now trademark law has the horrendous “anti-dilution” cause of action, which does not even require “consumer confusion,” which at least standard trademark infringement claims do.

Now that’s a mouthful, eh?  Yes, that is one ba-a-a-ad phrase to have handy for your next trademarks-and-branding over pigs-in-blankets soirée!

Oh… you don’t… know what private label store branding OTC architecture means?  (Cough.)  Excuse me, um, I think I just saw my friend come in — hey, look, they brought out new canapés! — catch you later, okay?

Yeah.  I just read itfor the first time, too,  via this (warning:  Multilayered social networking ahead) LinkedIn discussion in the International Trademark Association group, where I wasn’t the only dummy who had never heard of it — but now I’m glad I did!  It’s explained in this post at The Duets Blog which actually deals with one of my favorite topics, “store brands” or private labels.

Well, I always wanted to know more about the issues involved in private branding, which bring out the best in me — and now I do!  Plus I know that very cool sounding phrase . . .  whatchamacallit.

Great post by Mark Prus of naming consultant NameFlash.

Marty Schwimmer (via @trademarkblog) updates us on the latest, and floats a novel idea of his own for getting in on the action, in the ongoing legal war between the United States Polo Association and Ralph Lauren’s faux-Aryan-fashion empire.  As I said in the comments there,

Man, this is the litigation series that just keeps on giving!

Which I mean in a good way, of course!

Originally posted as a comment
by Ron_Coleman
on The Trademark Blog using DISQUS.

Originally posted 2006-08-08 09:20:02. Republished by Blog Post Promoter

The application for a Bin Laden trademark by Falcon Sporting Goods in Europe has been withdrawn.

The TTABlog® almost breathlessly — and, quite understandably, considering — links to Seattle Trademark Lawyer, who reports on a case,  One True Vine, LLC v. The Wine Group LLC, just now being uncorked in a California District Court that could well answer a lot of the questions about application of the new “fraud on the PTO” legal standards to an old, familiar fact pattern:

This factual situation looks a lot like the facts in Medinol v. Neuro Vasx: two listed items in the identification of goods, use on only one of the two, a claim of inadvertent mistake. Of course, the Board found fraud in Medinol under the TTAB’s “should have known” standard that was recently rejected by the CAFC in Bose.

What standard will the court apply? How will defendant prove fraud? Is it enough for plaintiff to say that the error was inadvertent? Suppose the two listed goods were wine and nuclear reactors, and the Registrant claimed that the inclusion of “nuclear reactors” was inadvertently overlooked? Suppose plaintiff here had never sold any white wine at all under any label? What if Defendant showed that plaintiff had made the same error in other registrations?

Well, in vino veritas, right?

We’re all looking forward to the answers, which we will no doubt learn… though not before their time.

Originally posted 2005-04-22 00:00:00. Republished by Blog Post Promoter

Google shares are
up only seven-plus percent this morning. Am I sitting pretty? Let’s put
it this way: My haircut this morning? Paid for.

Look!  A big logo what you can link to!

If you think I should get one of these, you’re in a distinct minority.  But… maybe this year, a little less distinct?  Let’s see!  Anyway it’s a cool logo, and Kevin Aylward has done all the work.  The Law Blogs category is right here.

Originally posted 2007-03-11 10:20:50. Republished by Blog Post Promoter

A Chinese company

has been refused permission to use the name of a disgraced official as a trademark to sell rat poison.  Xinhua News Agency said the Shenyang Feilong Pharmaceutical Co. applied last month to use the name of Zheng Xiaoyu, who was fired as head of the national drug watchdog for suspicion of taking bribes, as its name for a brand of rat poisons and pesticides.

These Reds are really getting soft.

Some fakes are worse than others

Counterfeit Chic happens upon a new defense to trademark counterfeiting:  ”Counterfeiting?  You call this counterfeiting?!”

We’ve all seen imitation goods so poorly rendered that they wouldnt fool a myopic Martian on a dark night.  And there must be a market out there beyond mere video fiction, or LV look-alikes wouldnt keep showing up on shady street corners and in dark corners of the internet, next to the “Prado” and “Channel” bags.  But why would any self-respecting counterfeiter turn out such bad fakes?

It turns out there’s method to the madness.  In theory, these inept imitations could allow a manufacturer/importer/seller to avoid liability under the rationale that there’s no likelihood of consumer confusion.  In practice, however, courts dont like apparent bad actors.

Or have all that much interest in things like likelihood of consumer confusion, actually.  In practice.

On the other hand, as much as I rail against that judicial trend around here, when it comes to trademark counterfeiting I don’t have a big problem with it; it’s nearly a per se, strict liability tort, and that’s what it is.  I certainly wouldn’t want to live in a world where sloppy work is anything other than its own reward, after all.

Originally posted 2006-12-25 14:35:05. Republished by Blog Post Promoter

“It’s a new tradition on the last Monday of each year for an anonymous editor to announce the Blawg Review Awards for the best law blogs in numerous categories.”

This year [2006], that falls on December 25th — no matter if the only one working today is me and a few close personal friends.

So, the Blawg Review Awards 2006 are up. LIKELIHOOD OF CONFUSION won the award for “best blog name.” That’s appropriate for a blog that focuses in part on brand names, I suppose. It’s an honor to be, er, named.

Originally posted 2005-05-23 00:00:00. Republished by Blog Post Promoter

How else to describe a post (this one) that combines two of our favorite obsessions — Google and fair use?

Business Week online reports that Google’s announced plan to to scan millions of the world’s books and make them searchable online is, not surprisingly, a little scary to some people. No, not the people who are afraid of free access to books and information. Rather, the people who
are “all about” that very thing — but who are a little worried about “free” in the economic, not the freedom, sense of the word.

According to Business Week, “In a May 20 letter, the Association of American University Presses (AAUP) blasts Google’s so-called Print for Libraries program for posing a risk of “systematic infringement of copyright on a massive scale.” Evidently, according to the report, a number of publishers have also expressed some concern. “We don’t see how a for-profit company compiling this would be considered fair use,” a spokesman for the Association of American Publishers — the principal trade organization of the book publishing industry — told Business Week.

Well. But it would depend in no small part on how much of a work is being made available on line (as the article notes), as well as on the development of third-party liability for hacking that leads to unauthorized access of infringing material beyond what Google anticipates making searchable, or accessible from search results.

It’s getting to the point where we’re taking the Googlization of the known world for granted. We shouldn’t. It’s an incredible phenomenon.

Okay, folks — this one is for the lawyers, pretty much.  It’s a Contract Interpretation Quiz (I’ve added the emphasis):

Interpret this contract, reproduced below in full:

In consideration of the sum of One Dollar ($1.00) and other good, valuable, and adequate consideration, the receipt and sufficiency of which is acknowledged, the undersigned does hereby sell, assign, transfer, and set over to Bridgeport Music, Inc., its respective successors and assigns, fifty percent (50%) of his interest now owned or subsequently procured in the universe-wide copyright in and to the following musical composition(s) set forth in Exhibit A attached hereto, and all of the universe-wide right, title, and interest of the undersigned, vested or contingent, therein and thereto, including all claims for infringement of the copyrights whether now or hereafter existing, for the maximum terms of copyright, including any extensions and/or renewals thereto, throughout the universe.
The assignor sues for copyright infringement. Does the assignor have standing, or did it assign all claims for copyright infringement to the assignee?

According to the Eastern District of Texas, the assignor didn’t have standing. According to the Fifth Circuit, it did.

Subliminal

I woulda gotten this one, I think.  Gotten it wrong, that is.  As Pam Chestek explains, the Circuit says the highlighted phrase — “including all,” etc. — was to be read in the context of the fifty-fifty rights split, as opposed to placing what it regards as undue emphasis of the plain language which would give the words “all claims” their seemingly obvious meaning.

Well, okay.  But that doesn’t sound right to me.  It is entirely within the realm of possibility that one party would retain entirely for itself, or another party would be assigned entirely, the right to all copyright infringement claims (not to suggest that they might be worth more than the copyright itself, mind you!), and frankly the way I read this clause, that is exactly what “all claims” means.

Honestly, however, it is ambiguous, isn’t it?  What on earth did they mean, after all?  Why didn’t the court acknowledge this ambiguity and step outside of the four corners of the document and jettison the Parol Evidence Rule so we could look at outside proofs and learn what the heck the parties really intended here?  The decision makes no mention of this possibility, plowing past “ambiguity” on pages three to four.

They call me LIKELIHOOD OF CONFUSION®, yet I can hardly imagine much more ambiguity — and, I suppose we have to say, much less impressive draftsmanship, to put it politely? — than what we’re talking about right here.

Originally posted 2009-02-26 01:28:08. Republished by Blog Post Promoter

Computer security expert  Ben Rothke on data destruction:

In today’s litigious environment, there are a plethora of aggressive lawyers who would love to devour your organization for failure to take due care around document and media destruction.

He makes that sound like a bad thing!

Originally posted 2007-08-02 19:52:30. Republished by Blog Post Promoter

Scientology seems to do a lot better with the Internal Revenue Code than with the Copyright Act:

A Colorado nonprofit group has won a critical round in a legal fight against the Church of Scientology, raising questions about whether Scientology has a legal right to keep hundreds of documents offline and out of the public eye.The church, through its nonprofit subsidiary Bridge Publications, is suing Boulder-based FACTNet on charges that the group pirated more than 1,900 copyrighted church documents and distributing them on CD-ROMs.

But FACTNet and its cofounder, former Scientology member Lawrence Wollersheim, contend that Bridge does not have legal copyrights to all–and possibly to any–of the documents in question.

In a ruling last Wednesday, federal judge John Kane denied Scientology’s request for summary judgment, saying that FACTNet successfully had cast doubt on the legal status of the documents. Kane’s decision sends the case to a full trial, which will be supervised by a court “special master” appointed to untangle the thorny copyright issues involved.

It’s not as if you can’t ever use your copyright to keep works out of circulation. You certainly can. Just try to find a clean copy of “Song of the South,” “Amos and Andy” or any of the frankly racist animations from Disney and Looney Tunes of days gone by. But you have to really own the copyrights. (Unrelated by related thoughts on copyright and suppression here.)

Originally posted 2005-07-14 10:33:13. Republished by Blog Post Promoter

Two different sources alerted me to this story that is near and dear. That link to Shlashdot comes from my friend at the Sapiens Cogito blog. It appears that a law firm called Harding Earley Follmer & Frailey (no website I could find when I wrote this) is accused of pushing a little too hard to get some quality evidence in a trademark case by hacking the Internet Archive (the “Wayback Machine”). Says the story:

In preparing the case, representatives of Earley Follmer used the Wayback Machine to turn up old Web pages – some dating to 1999 – originally posted by the plaintiff, Healthcare Advocates of Philadelphia. Last week Healthcare Advocates sued both the Harding Earley firm and the Internet Archive, saying the access to its old Web pages, stored in the Internet Archive’s database, was unauthorized and illegal.

There’s a lot more detail in this story (registration required) from Law.com, sent to me by my former Gibney Anthony partner John Macaluso. The issue is a blocking protocol on Archive.com’s site which allows copyright owners and others to block access to the archived versions of their sites. The law firm is accused of hacking past that block, and the site is being sued itself for every IP crime on God’s green earth. From the Law.com story:

In an interview Tuesday, plaintiff’s attorney [Scott] Christie — a former federal prosecutor in the District of New Jersey where he headed the computer hacking and intellectual property section — said the case is about the right of Web site owners to protect their copyrighted material by insisting that archive sites block access.

As for the law firm he sued, Christie said their actions were “antithetical to the way lawyers are expected to conduct themselves,” and that, as specialists in the area of intellectual property, “they should have known better.”

In the opening paragraphs of the suit, the plaintiff’s lawyers contend there were “at least 92 separate acts of unauthorized electronic access” of Healthcare Advocates’ Web archives committed by “partners, associates, legal assistants and other employees of [the] Harding Earley law firm.”

John sent me the link with the title, “Hacker with a White Hat,” alluding to an article I co-authored a few years ago in Mealey’s Cyber Tech Litigation with then-associate Matthew Carlin (now counsel for the New York City Council) on whether and when it might be possible for a law firm to obtain a court order authorizing it to hack or shut down a grossly infringing website that refuses to submit to process — a common problem in the counterfeiting realm where John practices.

The problem Harding Earley is facing is a lot less common, though. Christie (a McCarter & English partner) sounds right. But of course, that’s just his take on the facts. Here’s Earley’s, from the Law.com piece:

In an interview, attorney John F.A. Earley III said “the case is meritless.”

Earley conceded that employees of his office had accessed the archives of Healthcare Advocates’ site, but insisted that none of them ever engaged in any “hacking.”

Instead, he said, they simply “followed the directions” on Internet Archive’s site. When an archive is labeled as “blocked,” he said, users are instructed to “try again.”

Earley said the allegations in the suit contradict themselves because Healthcare Advocates is accusing his firm of hacking into the site while at the same time accusing Internet Archive of failing to secure the site.

The decision to investigate Healthcare Advocates’ archives was part of a “routine” investigation, Earley said, because prior versions of a litigant’s Web site often contain valuable information.

In trademark and copyright cases, Earley said, defense lawyers often must investigate Web archives in order to establish key defenses.

In the case of Healthcare Advocates, he said, one of the issues was an allegation of theft of trade secrets — a claim that could be successfully defended by showing that the claimed secrets were published on the Internet and therefore could not be claimed as true secrets.

Earley predicted that the case would ultimately be dismissed because Healthcare Advocates will never be able to prove that Harding Earley’s employees did anything illegal.

“I consider it a hassle,” Earley said.

Ah, those precious facts. Very interesting case and a little peek into how IP litigators make the sausage.

UPDATE:  After two years of litigation, in 2007 plaintiff’s case was dismissed on summary judgment in a 40-page opinion (here), though the judge declined (don’t they always) to award fees to the defendants (opinion here).

Say you will?

The judge politely declined, actually — per our suggestion.  Read all about the happy outcome, and other yeoman work from the self-promotion-with-dignity crowd, at JD Scoop.