May 24, 2012 | 1 Comment

Stand by me?

2062537407 e3b804917b Stand by me?

No, that's not standing. That's sitting.

Does anyone write a better lead sentence in trademark blogging than Pamela Chestek?:

International Importers v. International Spirits & Wines, LLC is, at bottom, a manufacturer-distributor dispute. It’s also a lesson in how not to handle trademark ownership.

And is anyone better at guiding us through the most tortured factual corporate histories in the process of teaching that lesson?  I don’t think so.  So no sense in my trying; read the post.  It’s a picnic of complicated licensing and corporate-legal missteps that would warm the cockles of IP litigators’ “hearts” (if we had any)  – and speeds them up a bit.

Here’s why.  The mess comes about in a fight over standing, prudential and otherwise.  Pretty technical stuff.  Here’s a part I was able to alight upon that seemed like just foothold enough for LIKELIHOOD OF CONFUSION®:

With that as background (phew!), International Importers sued International Spirits & Wines, LLC and “D’Aquino Group of Companies,” a non-existent legal entity, for infringement of the mark WALLABY CREEK based on the defendants’ importation and sale of the wine. Most notably, Fernbrew is one of the “D’Aquino Group of Companies.” So at the end of the day we have what is a common situation – the former distributor of a product claiming ownership of the trademark and bringing a trademark infringement claim against the manufacturer and the new distributor. But because of the joint ownership of the mark, what happens next is far from typical.

Looks like I chose well!  So?  Next:

Rather than sorting out the ownership under the usual manufacturer-distributor framework (alert – recursive link), the defendants challenged International Importers’ standing under Fed. R. Civ. P. 12(b)(1), on the theory that all co-owners must be joined, and under Fed. R. Civ. P. 12(b)(7) for failure to join a necessary and indispensable party under Rule 19, namely, the other owners of the trademark.

So does one owner have standing without joining the other owners?

The answer to this question sounds like something Rule 12 mavens should know.  Read the whole thing!  Seriously.  In this fight over spirits, there’s some dispiriting in there — for transactional and litigating IP lawyers alike.  I’ll take a double!

May 22, 2012 | 2 Comments

I have met the bloggers, and they are us!

Originally posted 2011-05-18 13:07:16. Republished by Blog Post Promoter

San Francisco 20110517 00587 225x300 I have met the bloggers, and they are us!Nice event last night at “Meet the Bloggers VII” otherwise not in the least bit known as the “IP Law BlogFestivus.”  You may want to check out the resultant IP Law BlogDex thingy too.

Good people, I’m telling you!  The only thing better than trademark bloggers is the people who want to have a drink with trademark bloggers, you get me?  Those folks have class, not to mention excellent taste.

IMG 20110517 005771 1024x768 I have met the bloggers, and they are us!

The Host with the Most

 

 

 

 

 

 

I took a few pictures.  Though I have taken some very nice pictures over the years on my BlackBerry, a party in a dark bar is pretty well beyond the phone’s most ambitious hopes.

(UPDATE:  It could be worse.  Here’s John Welch, by the way — the shot everyone’s looking for!)

But in order to preserve history, here’s what I’ve got (click the pic for full grainy goodness):

Read More…

May 22, 2012 | 0 Comments

Winging it

Originally posted 2010-04-02 10:25:15. Republished by Blog Post Promoter

LG+9 Winging it

Are you writing this down?

Legal marketing guy Lance Godard hosted Blawg Review this week with a simulated 22-tweet “interview” of 22 different lawyers.

You have to click it to see what I mean.  Hey, don’t trouble yourself to scroll up–here’s the link again.

May 22, 2012 | 0 Comments

Another business model bites the dust

Originally posted 2006-06-14 10:35:51. Republished by Blog Post Promoter

It’s easy to make money on licensing when you don’t pay the royalties:

A multi-agency task force has executed a search warrant on the country’s largest importer of DVD recorders and players, confiscating eight tractor-trailer loads of recorders allegedly bearing counterfeit trademarks.

James Sibley, a Santa Clara County deputy district attorney, said the warrant was served June 8 on Fremont-based Cyberhome USA, a U.S. affiliate of Cyberhome Taiwan. Sibley said the value of the 20,000 units exceeds $2 million. …
“Cyberhome ran up a $22 million bill with Philips, which they didn’t pay,” Sibley said. “So Philips pulled their license. The problem is that Cyberhome kept manufacturing and selling recorders and players under the Philips trademark.”The products weren’t inferior, Sibley said — essentially, they were the same as the recorders and players sold under the licensing agreement. But they were not authorized by Philips — and Philips wasn’t getting paid.

“This is about trademark infringement, not product quality,” Sibley said. Sibley said Cyberhome USA was importing the unauthorized DVD equipment “by the shipping container load” from Taiwan.

Under the trademark counterfeiting statute’s appropriately draconian civil penalties, if these facts pan out Cyberhome and its principals are in big trouble. Of course, if they meant to eventually pay it back and it’s all a terrible misunderstanding, well, that’s something else, isn’t it?

May 22, 2012 | 0 Comments

Art for IP’s sake

Originally posted 2006-05-02 14:39:27. Republished by Blog Post Promoter

miro Art for IPs sake

Or, rather, the opposite: Wendy Seltzer reports that a modified Google logo posted on April 20th, in the style of a Joan Miro painting and made in honor of the Spanish artist’s birthday, was removed after “his family and the Artist’s Rights Society asked Google to remove the tribute mid-day. Google honored theJoan Miro The Wind Among the Bullrushe Art for IPs sake request while saying that the logo did not infringe.”joan miró obra de joan miro 300x225 Art for IPs sake

Of course there is not even a breath of a trademark claim here, and evidently Google is just being sensitive — you don’t honor someone’s birthday (well, the anniversary of this birth — he died in 1983) by ticking off his family.

But what is it all coming to? Why do heirs of great men think their legacies are protected better by, one way or another, squelching any tribute to their works?

May 22, 2012 | 2 Comments

Baa, baa, Blawg Review #322

Skull and Bones program cover 193x300 Baa, baa, Blawg Review #322

Kevin Thompson of Cyberlaw Central, at considerable risk to life and limb, does a Skull-and-Bones themed Blawg Review.

As  a Princeton man I have my issues with this.  But as a family man, I would not dare utter them.

 

May 18, 2012 | 2 Comments

Jones Day keeps chillin’

Originally posted 2008-11-19 16:52:38. Republished by Blog Post Promoter

Public Citizen’s Paul Alan Levy reports:

A few weeks ago, I commented on the efforts of mega law firm Jones Day to abuse trademark law to suppress articles it didn’t like on a real estate transactions web site, BlockShopper.com.  Jones Day claims that linking to its web site without permission infringes and dilutes its trademark.  Along with EFF and other public interest groups, we also filed a brief as amici curiae explaining why a case like this should have to meet a higher pleading standard, and why allowing cases like this to proceed threatens the free speech rights of the general public.

Earlier this week, the trial judge denied the motion to dismiss on the ground that the complaint contains the right formula of words to plead likelihood of confusion and dilution, without addressing the broader concerns that we raised.  Paradoxically, the judge declined to accept our amicus brief (which Jones Day had opposed), largely on the ground that, supposedly, it did not say anything that the defendants did not say.

The opinion is worth reading as much for what it doesn’t say as for what it does.  The judge ignores the larger issues and gives no guidance to the parties, not to speak of the rest of the world, about what proofs will suffice to create liability or confer adequate defenses.   Of course, it is always up to a judge how much to say to explain his decisions, but this thirteen-page decision is quite remarkable for how little it says.

Welcome to the world of trademark law, Public Citizen!

UPDATE:  Settled.

May 18, 2012 | 0 Comments

Likelihood of … whatever

Originally posted 2007-08-16 23:47:00. Republished by Blog Post Promoter

Bill Patry experiences likelihood of confusion — but in copyright – as only the Ninth Circuit can induce.

May 18, 2012 | 3 Comments

Secret defrauder ring (UPDATED)

Originally posted 2010-02-15 13:15:54. Republished by Blog Post Promoter

I want one, too!

TTABlog FRAUD O METER 300x192 Secret defrauder ring (UPDATED)

What is the FRAUD-O-METER™?  Its creator, John Welch, explains:

Some say that a picture is worth a thousand words, and that is certainly true with regard to the TTABlog FRAUD-O-METER™ brand legal indicator. We all know that the CAFC in In re Bose Corporation jettisoned the TTAB’s “knew or should have known” standard for fraud set out in Medinol v. Neuro Vasx, ruling that the Board had “erroneously lowered the fraud standard to a simple negligence standard.”  The appellate court also held that proof of intent to deceive is required to establish fraud and it indicated that even “gross negligence” is not enough, but it declined to address the issue of whether “reckless disregard for the truth” would suffice.JWelch%20copy2 Secret defrauder ring (UPDATED)

The FRAUD-O-METER™ illustrates the current state of trademark fraud jurisprudence: the now defunct Medinol standard is depicted by the grey arrow resting in the “Negligence” wedge, while the white arrow, representing our post-Bose uncertainty, unsurely leans toward the “Reckless Disregard” wedge.

If the chart looks a bit blurry, then I suggest that you (1) move closer to your computer screen; (2) check your eyeglass prescription; or (3) double click on the chart for a larger version that you can print out or save as your computer wallpaper.

Or, kids, you can collect the whole set!

This is very clever.  Yet I have the sneaking feeling that John…  he is not to laugh from this PTO fraud, so much.

UPDATED:  The Beta for version 2.0 is out!  John explains:

The Board has yet to decide whether “reckless disregard for the truth” is enough to support a fraud ruling. There are some suggestions (including a recent article by TTAB Judge Lorelei Ritchie [TTABlogged here]) that “willful blindness” may be enough. With that in mind, I have created Version 2.0 of the Fraud-O-Meter, still in beta testing.

Fraud O Meter%2Bbeta%2B2%2Bwith%2Barrow%2Band%2Bq%2Bmark Secret defrauder ring (UPDATED)

May 16, 2012 | 0 Comments

Judge Roberts and IP

Originally posted 2005-08-19 15:03:06. Republished by Blog Post Promoter

Kelly D. Talcott writes in today’s New York Law Journal (sub. req.):

What the record does appear to show is that, if confirmed, the Supreme Court’s newest justice will be one who has hands-on experience dealing with technology law issues including, thankfully, patent law issues.

Indeed, Judge Roberts includes both the TrafFixDevices and Litton Systems patent cases in his response to the Senate Judiciary Committee’s question asking for the 10 most significant litigated matters that he personally handled.

His several copyright law decisions share a rigorous statutory analysis, deference to precedent, and a general wariness to resort to legislative history where a statute is clear on its face.

Judge Roberts, who less than five years ago was litigating patent issues before the Supreme Court, will introduce a welcome hands-on technical perspective to a court that has not had a new member since Justice Stephen G. Breyer was appointed in 1994.

Judge Roberts is so well qualified even the ABA had to admit it. Boy, that Law Journal has a lot of interesting stuff.

May 16, 2012 | 1 Comment

Not quite dead

Originally posted 2006-10-29 01:11:26. Republished by Blog Post Promoter

kinderstart Not quite dead

The Google / Kinderstart suit was dismissed, with leave given to amend, in August. What sounds like oral argument regarding the amended complaint is being reported by Reuters. It doesn’t sound too good for Kinderstart.

“I guess I am still not convinced … that a provably false statement has been alleged,” Fogel said during a court session on whether the suit should advance to the evidence discovery stage or be dismissed outright.

The judge asked whether Google has a free speech right to prioritize some sites over others in how it constructs computer formulas in its search system. “Assuming Google is saying that KinderStart’s Web site isn’t worth seeing. Why can’t they say that? That’s my question,” Fogel said.

Why, indeed? We argued earlier this year that Google is not a common carrier or a utility, echoing the judge’s question — “Why can’t they say that?” Wrong, dumb or even mean, there is no right to a Google rank. Is that a little scary if your business model depends on one? Perhaps. But we’re not there… not yet.

May 16, 2012 | 1 Comment

Judicial Canuck Stooges Spit in Uncle Sam’s, Barbie’s Eyes

Originally posted 2005-07-21 19:13:53. Republished by Blog Post Promoter

general montgomery Judicial Canuck Stooges Spit in Uncle Sams, Barbies Eyes

A “New York judge ruled that Mattel ha[s] no jurisdiction in Canada and that [the] owner [of BarbiesShop.com], Barbie Anderson Whalley, can keep the name of her store and website” — so says CTVNews, a media outlet serving the largest and most backward U.S. State.

If reported correctly (there have been questions about the the way things are done in that frosty part of the U.S.), this decision is outrageous. If this so-called jurist can, with the stroke of an ice-coated pen, declare that Mattell doesn’t have “jurisdiction” over Canada, the next thing you know some damned activist judge will say the U.S. doesn’t either.

Where will it end? Did Lincoln die in vain?!

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