Originally posted 2010-12-01 20:08:12. Republished by Blog Post Promoter

Or, perhaps, recycling.  (Recycled that gag last year too.) It once again seemed appropriate, considering both the sad events concerning the recent passing of Ed. of Blawg Review and that this is first day of Chanukah — to reprint 2009’s last-ever Chanukah Blawg Review on LIKELIHOOD OF CONFUSION®.  Better to light a candle … or eight… than to curse the darkness, after all.

It went something like — well, exactly like — this post, below.  As I re-read this, I realize that a lot of what I said about “what a year” last year had been for me was only more true this year.  In some very good ways, and very not so good ways.

(For something a little more theological and a little less introspective, you can go to this Blawg Review’s predecessor, the 2008 Chanukah Blawg Review.  If one crazy night of this is not enough for you.)

Welcome to Blawg Review.  Cold, rainy, prematurely wintry greetings from metropolitan New York.

No exclamation point.  It has been that kind of year, it seems.  Nothing depressing about it, or it shouldn’t be.  That’s just life, and in particular that’s the way life feels at that dreary moment when you’re living it clustered around the winter solstice.

Lobby and stairs, Newark historic courthouse

Lobby and stairs, Newark NJ historic courthouse

And if I were perkily to emit that Chanukah, the festival of rededication, is “all about” pulling oneself up by one’s bootstraps in the face of dread and gloom, for of course a little light will banish a great deal of darkness, I would not be the first to say it; and it’s not as if cliché is too good for LIKELIHOOD OF CONFUSION®.

But no.  It is not going to be that kind of Chanukah Blawg Review this year.  Let’s instead think a little less loftily, but maybe more fruitfully, about where we are.  Where we’ve been since last Chanukah.  And what we’re doing, blawgily speaking.  And why.

Is there a Chanukah concept in that?  Rabbi Avraham Chaim Feuer says there is — and it seems to be a very appropriate one for this moment, for this blog, even, and for the constellations of blawgs that still form and swirl around us:

Only recently — barely a hundred years have elapsed since the invention of the lightbulb — has Edison’s genius transformed [mankind’s formerly] bleak [benighted] situation. Today, mankind’s blindness is banished by billions of powerful and enduring bulbs. Artificial light has become so economically feasible that even the poorest can afford to squander it. Everything glows in the Age of Illumination. . . .

Centuries ago, prior to the Age of Illumination, people did not waste light. A fire with no function was promptly extinguished, and the fuel was carefully hoarded. If the flames of the menorah burned constantly without apparent function, it must have been that this was not light made to shed external illumination, but rather to symbolize the inner glory associated with Godliness.

For this reason, it is prohibited, according to Halacha, or Judaic Law, to use Chanukah candles as illumination for any ordinary activities. Such utility would strip the candles of their essential message — that there is more than one kind of light, that of the soul besides that of the eyes.

“The time for lighting the Chanukah candles is from sunset until the time that the traffic ceases in the marketplace,” states the Talmud (Shabbos 21b).  As long as men are involved in the affairs of the marketplace, as long as they are engaged in the pursuit and purchase of all their eyes see and their hearts desire, then they are still in need of the lesson of the Chanukah menorah.

No doubt, our era is the age of the eye and the age of the market. This is self-evident and does not need further elaboration. When before in history has the consumer been flooded with such a staggering array of tempting products, wrapped in millions of dollars of “eye-catching” advertisement? When before has the human eye been so constantly exposed to the distracting sights of the stage, screen, and street? In the Age of Illumination, the outer lights have all but blotted out the inner lights.

It is time to gather around the . . .  candles of the menorah, and give the inner lights the opportunity to convey their soft, subtle, penetrating message.

So, let’s sit down — come in out of the wet; can I get you a hot drink?  No, no latkes, sorry — trying to stay away from the heavy stuff, since the operation.  We do have these nice dreidel-shaped cookies… here.  Say a brocha.  Nice. Read More…

Seattle. Trademark lawyers.

Originally posted 2009-05-19 00:20:16. Republished by Blog Post Promoter

At Mike Atkin’s place in Seattle, all kinds of law bloggers, but mostly trademark ones, got together tonight in honor of all being rained on in the same place for the annual INTA Festival of Expense Accounts.

Here are two of them.  Yes, that’s Randazza on the right (Marc, Marco, whatever) — not in the picture, but in real life.  And of course, me on his left.  Equally preposterous!

Matter meets antimatter

Matter meets antimatter

INTA:  Anything can happen!  (UPDATE:  Official pic here.)

Strict construction

Originally posted 2005-01-05 09:06:00. Republished by Blog Post Promoter

No, not more about that constitutional dustup at the Volokh Conspiracy. The delivery guys were supposed to be here yesterday with a blog roll and a direct link on the top to the firm website. But you know how it is — they just called from Route 3 for directions. Sheesh.

UPDATE: The Dean intimidated me into sticking the darned HTML code in there myself. It’s “good enough for government work.” Thanks to him (again) and Bob Cox for our first-ever links. But enough log-rolling. Now it’s time for objections to document demands. Yes!

China fakes reform

Originally posted 2008-06-18 10:51:15. Republished by Blog Post Promoter

On the eve of the Beijing Olympics — which is nothing if not a branding, merchandising and licensing bonanza to which athletes are invited — a nervous Chinese government official writes in the Wall Street Journal that that the era of Chinese counterfeiting is about to end, actually, and here’s why:

How will we do this? In the following four ways:

  • First, we will make timely revisions to IPR legislation, including the laws on patent, trademark and copyright, as well as regulations on their implementation. We will also bring forward legislation in the areas of hereditary resources, traditional lore, folk arts and geographical marks so as to improve the overall framework for IPR law enforcement and management.
  • Second, we will speed up the revision of laws and regulations on punishment of IPR infringements, and strengthen the systems of judicial protection and administrative law enforcement. We will mainly rely on judicial protection for protecting intellectual property rights. We will mete out more severe penalties, reduce the cost of IPR protection, and deter violation by raising its cost.
  • Third, we will properly define the scope of intellectual property rights to prevent their abuse, ensure a level playing field, and protect the lawful rights and interests of the public. We will ensure a better mesh of our IPR policy with those of culture, education, scientific research and public health to uphold people’s rights to properly use the information and fruits of innovation in ways permitted by law in their activities in culture, education, scientific research and health, and make sure that innovation achievements are shared more equitably.
  • And finally, we will launch extensive educational programs among the public to further encourage innovation, promote such moral standards as honesty and credibility, and condemn plagiarism, piracy and counterfeiting. We will raise people’s IPR awareness and foster an innovation-friendly IPR culture in which knowledge and integrity are respected, and laws and regulations are complied with.

Still with us? A lot of chin music, really. An hour later and we again feel hungry. Why?

One would think that a totalitarian regime would have no trouble implementing policies such as these. They are just rules, after all. The problem is that China has opened to free enterprise, but it has not opened to the rule of law.

Free enterprise plus political repression — reliance on coercion throughout legal, administrative and social institutions — will not, in the long run, work in a large economy.  And in the short run, at least, the result is endemic corruption. Read More…

Not a good e-discovery strategy

Originally posted 2007-02-08 16:29:54. Republished by Blog Post Promoter

Lavi Soloway writes (hat tip to Above the Law) regarding the extremely un-white-shoe discrimination litigation in New York County between former Sullivan & Cromwell associate Aaron Charney and the law firm, including this astonishing bit:

Last Wednesday January 31 there was a secret settlement meeting at which Charney was offered an undisclosed sum in return for which he promised, among other things, to destroy the hard drive on his personal, home computer. The destruction of that hard drive moved to the center of the debate. Aaron Charney has been ordered to submit an affidavit to the court regarding the hard drive and the status of documents that were allegedly in his possession.

Judge Fried also ordered Aaron Charney to produce his personal, home hard drive at 9:30 a.m tomorrow morning, if, in fact, is has not been destroyed. Fried was particularly concerned that Charney seems to have destroyed the hard drive (which would presumably have contained emails he sent to him self from his Sullivan and Cromwell account with client documents and other firm related documents attached) AFTER being ordered by Judge Ramos at an earlier hearing not to do so. It appeared that Charney destroyed the hard drive becuase S&C asked him to do so as a condition of settlement.

This would be astonishing, indeed. You don’t even need the new, improved and annoying e-discovery rules in the federal courts, nor do you need to be a litigator, to know what a bad, bad idea that was.

Both parties may have a lot of explaining to do. Sweeter it does not get!

UPDATE: S&C promises plenty of explaining. They’ve got your explaining right here. ($5 Million?!)

Seventh Circuit: I Hate Illinois Nazis.

Originally posted 2005-02-10 10:28:00. Republished by Blog Post Promoter

McDermott Will & Emery has published an article on the Mondaq website (registration required) about a Seventh Circuit decision in which a losing party was required to pay the plaintiff’s attorneys’ fees because of gross misbehavior during the litigation. According to the piece, and confirmed by this item, the sanctioned party surprisingly chose to litigate by rules other than those of the Marquess of Queensbury (or perhaps not?):

The plaintiff, Te-Ta-Ma Truth Foundation (Foundation), the owner of a federally registered trademark for the mark “Church of the Creator,” filed a trademark infringement action against the defendant, World Church of the Creator (World Church), a white supremacist group, for use of the “Church of Creator” mark. World Church’s use of the mark resulted in actual confusion as Foundation, a religious charity that promoted universal love and respect, began to receive complaints and condemnations from third parties after World Church members appeared on the Jerry Springer show and proclaimed hatred for Jews and non-whites.

Throughout the litigation, World Church encouraged its members to send offensive and threatening e-mails and voicemails to the Foundation and the Foundation’s attorneys. In addition, World Church posted press releases on its website flouting its use of the mark even after the issuance of a permanent injunction. Moreover, a member of the World Church was tried and convicted of soliciting the murder of the district court judge and attempting to influence her through corruption and force.

And I thought New York practice was rough.

Just for background: The Lanham Act provides for an award of attorneys’ fees in “exceptional cases.” Different circuits have different standards for what constitutes “exceptional cases.” Cooper & Dunham in New York has an excellent summary on this topic here. The novelty of the Seventh Circuit case, however, was that an exceptional case may not only be determined from the merits of the claims and defenses, but the way the game is played as well.

What is the likelihood judges will apply this standard to parties who don’t have swastikas burned into their foreheads? Don’t hold your breath. Judges really hate to use sanctions (except in family court, it seems, from the calls I get). Then again, even my most lunatic adversary in a trademark litigation (in a case I managed to squeeze myself out of last year, thank God) never put out a contract on federal judge.

The TTAB, the trademark bloggers and the likelihood of preclusion

SCOTUSA trademark case involving LIKELIHOOD OF CONFUSION (the legal thing, not the fun blog) got unusual Supreme Court attention last week, as you doubtless know by now.  Good summary here by Sutherland Asbill & Brennan LLP (link added by me):

The U.S. Supreme Court heard oral argument last week in a much anticipated trademark matter, B&B Hardware Inc. v. Hargis Industries Inc. et al. The primary question presented was whether a likelihood-of-confusion* determination in a contested administrative proceeding regarding trademark registration should have preclusive effect in future trademark infringement litigation between the same parties over use of the same mark in commerce. The justices also considered, if the administrative determinations do not have preclusive effect, what deference, if any, may be appropriate at the litigation stage. . . .

The main question at oral argument focused on whether the likelihood of confusion analyses in TTAB proceedings and infringement litigations are sufficiently similar to support preclusion. . . .

Counsel for Hargis Industries, arguing against preclusion, attempted to explain the distinction between the confusion analyses in the two venues. For example, counsel argued, the TTAB does not consider in its likelihood-of-confusion analysis how the parties actually use their marks, but rather compares the marks only as they appear on the respective registrations or applications. Further, counsel argued, the TTAB does not consider the goods with which the marks are actually used. Instead, the goods as claimed in the registration or application frame the TTAB’s analysis. Accordingly, by way of example, counsel asserted that if an applicant were to claim a broad range of goods in its application for a mark, it may be denied registration, even if its comparatively narrow use of the mark would not be sufficient to support a finding of infringement. The justices appeared to struggle with the examples provided by counsel for Hargis of the differences between the likelihood-of-confusion inquiries.

In questioning B&B Hardware’s counsel, the justices explored whether the different stakes before the TTAB did not warrant an exception to the general rules of issue preclusion. The justices also questioned whether Congress intended TTAB proceedings to provide expeditious resolution to disputes between rightsholders and, if so, whether a ruling effectively upping the stakes of those proceedings would defeat congressional intent. Finally, the justices queried why ordinary rules of issue preclusion should not apply, with exceptions applicable where justified by the circumstances of each individual case.

OK, but the main question is, what are they saying at the trademark blogs?  I can’t have an opinion, after all, until I see what everyone else’s is! Read More…

GEICO Isn’t Good News for Google

Originally posted 2005-02-21 21:14:00. Republished by Blog Post Promoter

Remember the GEICO v. Google case? My former law partner and long-time spouse Jane Coleman does. She’s writing a chapter on secondary trademark infringement liability for the second edition of a book on trademark counterfeiting now being edited by our colleague Brian Brokate, a partner at Gibney Anthony & Flaherty.  wrote the definitive reference work on secondary trademark infringement.  (Brian is one of the leading anti-counterfeiting lawyers in the country. )  Her conclusion is one that Google and its lawyers doubtless know well: Having no trademark monitoring policy may be trouble, but a little policing may be worse than none at all.

The standard is set by a leading case in this area, Inwood Labs. Under Inwood, in a contributory trademark infringement case, a court will find contributory liability if the defendant has either (1) intentionally induced a third party to infringe the plaintiff’s mark or (2) supplied a product to a third party with actual or constructive knowledge that the product is being used to infringe the mark. The GEICO lawsuit, like most such cases, is a Prong Two case.

So, on to Prong Two, then: supplying a product to a third party with knowledge that the product is being used to infringe the mark. Product? Here there is no product; Google provides a service. But based on the principles synthesized in a later decision, Lockheed Martin v. Network Solutions from what are known as the “flea market cases,” the second prong of this definition of contributory infringement can apply to services, too. Then the court applies a modified version of the Inwood standard: It considers the extent of monitoring and control the defendant has over the infringing activity.

So, what happened in the GEICO case? GEICO, a discount insurance company, sued Google for using GEICO’s trademarks to sell advertising on Google’s search engine, alleging contributory trademark infringement. Two practices of Google were at issue:

  1. The sale by Google of GEICO’s marks as search terms or “keywords,” and
  2. The advertisements or “sponsored links” which contained GEICO’s marks in their text, generated by customers who selected those terms.

Regarding the sponsored links, GEICO had argued earlier that Google was contributorily liable, saying, “the advertisers themselves [made] ‘trademark use’ of the GEICO marks by incorporating them into the advertisements, which are likely to deceive customers into believing that the advertisers provide accurate information about GEICO products or are somehow related to GEICO.” GEICO also claimed — remember the “direct control and monitoring” standard of Lockheed – that Google in fact exercised significant control over the content of advertisements that appeared on its search result pages.

Last December, Google asked the U.S. District Court to grant judgment as a matter of law in its favor. It argued that GEICO could not win its contributory liability claim, because it could not prove that “Google affirmatively encouraged or knowingly assisted in violation of trademark law by the alleged infringers.” Google urged that its own internal trademark enforcement policy bans the infringing advertisements at issue, though “some ads occasionally slip through.” It insisted that the “inability to achieve perfect enforcement of that policy” did not give rise to contributory liability, and that there was no evidence that Google condoned or encouraged infringement.

But this would only matter if Prong One — intentional inducement– were at issue. Apparently, it’s not. Google understandably would have the court focus on its good intentions, but this is a Prong Two case such as Lockheed – where, again, the courts ask whether the defendant exercises a level of monitoring and control that Google acknowledges it does effect via its trademark enforcement policy. Google’s argument regarding its internal trademark policing policy may, in fact, prove too much.

It’s not clear that Google can get out of responsibility for ads that “slip through,” given its awareness of the existence of infringing ads. If it can police a little, perhaps it can police a lot. Judge Brinkema’s oral opinion did not address this, but a final written decision by her or an appellate court might. [UPDATE: As of early May, there is still no written decision. It’s a good bet that there won’t be one and the parties will settle…]

The court granted in part and denied in part Google’s motion, allowing the case to go forward on the question of whether Google was contributorily liable for trademark infringement arising out of the sponsored advertisements containing GEICO’s marks. The incentive to settle is high — and maybe that’s why it’s so quiet.

This is why I have argued that auction websites (read: eBay) should be subject to contributory liability for the sale of counterfeit or other infringing merchandise — because they (and other web auctioneers) do have control over the auctions. Courts have repeatedly found contributory infringement where a defendant claims “willful blindness.” Well, it’s certainly a sort of willful blindness to do some kinds of monitoring and not others.

Would it add to the cost of search engines and auctions to do more policing? Yes, of course it would: More fighting over rent. Considering the profits involved, and the tremendous costs imposed on brand owners to try and keep up with counterfeits and online infringers, an outcome that required more policing to protect the IP that contributes to those profits doesn’t seem like an unreasonable one.

Overreaching, Part XXVI — Major League Bozos?

Originally posted 2005-04-07 10:56:00. Republished by Blog Post Promoter

The Sports Law Blog reports on a story I first saw in the hard copy edition of IP Law and Business. A version of it (that magazine, like almost everything else, is owned by AmLaw Media) can be found here. Bottom line: Major League Baseball is asserting the “right” to the exploitation of baseball statistics, serving up such gopher balls as, “Player statistics are in the public domain. We’ve never disputed that. But if you’re going to use statistics in a game for profit, you need a license from us to do that. We own those statistics when they’re used for commercial gain.” The angle? Perhaps, maybe, the stats themselves don’t belong to the league, but, uh, the “methodology” for computing them does.

Utterly idiotic. Fabulously obnoxious. Rent your pinstripes, baseball owners! It’s not as if you have bigger problems to deal with.

Greg at the Sports Law Blog put it well:

Thus, it seems to me that baseball will lose this claim. Statistics are facts, nothing more, and can be disseminated as freely as can news stories. It is unclear how extending copyright to statistics would not also impact newspapers, television stations and commercial websites that also report baseball statistics. Baseball’s methods for “compiling” these statistics consists of the advanced mathematical functions of addition and averaging.

I’m not even sure it’s true that MLB itself (which has also had domain name issues of interest to legal professionals) has in any innovated or created the statistics. Most of these seem to have been created by fans (lots of fans) and media outlets.

All of which should make MLB happy. These baseball stats take on a life of their own and just route consumers right back to the product. Why it is that every single damned subsidiary thing that emits from a “property” has to be snagged, bagged and tagged is just, I guess, the waters of capitalism seeking their own level. In this case, however, here’s hoping the courts find that MLB is all wet.

UPDATE: David Marc Nieporent (of the famed Jumping to Conclusions blog, and) of our office reports as follows:

If you read the lawsuit for declaratory relief filed by CDC against MLB, attached as exhibits are the C&D letters sent by MLB. They make trademark and publicity claims, but no copyright. (Although the complaint for relief does ask for declaratory judgment on copyright, as well.)

Spiritual balm for clerkship-seeking law students

Originally posted 2008-02-23 22:42:25. Republished by Blog Post Promoter

In a totally random way, I ended up linking to an old piece about my adventures seeking a first-year summer associate position at my other blog.

Then after some very flattering feedback, I figured some readers of this blog might enjoy it, especially law students, so here it is, freshly warmed from 1987.

Warning: It’s written in a form of late middle English rarely used in this country any more. But you should be able to get the gist. (The original post is here.)

Privacy rules!

Originally posted 2012-01-26 21:40:35. Republished by Blog Post Promoter

Barney Google: Just looking to not be evil!

Everyone is going nuts over the changes to the Google privacy rules — so much so that the cool article to write now is, whoa, why is everyone going crazy over… you get it.

The fuss is just something people write about.  Google already owns us.  Until something gives, it hasn’t decided to destroy us… well, at least not anyone I know.  Yet.  What’s the news here?

Oh, I know what you’re worried about!  No problem —

The LIKELIHOOD OF CONFUSION® privacy policy is solid as a brick — as ever!  There will be no changes.  Yet.


I Read Dead Peoples’ Email: UPDATE

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 (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.