Holy copyright baloney, Batman!

Batmobile 1966

This Batmobile?

It’s not as if I’ve got a problem with DC Comics or something, but, well, here you go.  They’re just being like that!  And I’m just catching up with the fin-fendered fun.  First, per the Autoblog, on September 22, 2015:

Judges in the 9th US Circuit Court of Appeals upheld an earlier ruling about the copyright ramifications of selling replicas of the Batmobile. According to an Associated Press report in the Detroit News, the unique appearance of the Caped Crusader’s car was found to make it a character in the story and therefore couldn’t be copied without permission from DC Comics.

The legal battle between Mark Towle and DC Comics goes back years. Towle’s business, Gotham Garage, offered replicas of the 1966 Batmobile from the Adam West TV series and the 1989 film version. They were priced around $90,000, according to AP. The original sold for $4.62 million at auction in 2013.

LA Larry Zerner

LA Larry Zerner

Towle’s lawyer argued that the Batmobiles were simply cars and couldn’t be protected by copyright. In the earlier finding against Towle, the US District Court judge disagreed and defined the Dark Knight’s ride as more than just a vehicle but as a character in Batman’s tales.

Can it be?  Now, per my friend Larry Zerner, who doesn’t think so — well, no; he would agree, in fact, that it can, and that it is, but that it shouldn’t.  Here’s what he says, in a post dated January 23rd of 2016: Read More…

Tail wagging dog?

Originally posted 2010-10-14 21:56:02. Republished by Blog Post Promoter

Or maybe not. Evan Brown reports about a lawsuit by a high-end computer manufacturer, Alienware, over one of those “free laptop” promotions that it claims mostly leans on its brand name:

According to Alienware, after accepting the offer, users must purchase a specified amount of goods from various other sites. And this obligation is not clearly communicated, but is “presented to the consumer, if at all, only after he or she expends significant time and effort in responding to inquiries and navigating the multiple prompts.” . . .

Yes, and those young women who instant-message you from Nigeria really are living alone with their mothers and looking for a nice single man and his bank account number solely to wire in some pin money. Evan wisely asks whether this is really trademark infringement at all, and not fair use or some other defense such as the first use doctrine, and notes:

And Alienware may have anticipated this defense, alleging that it’s only “Alienware” serving as the source identifier for the offer, and “[t]here is no other recognizable or identifiable indication of source.” The defendant is an entity called “Online Gift Rewards.” Alienware claims that the designation is “likely to be perceived as a generic description of the offering rather than a source indicator.”

You know, this is not a half-bad argument. And this demonstrates why our law professors always said, “Hard cases make bad law.” These sorts of “trademark infringement” claims that only lightly implicate consumer confusion — they really are offering an Alienware machine — but are really attempts to get at some other black act, or grey act, are making copyright and trademark the all-round would-be enforcers of every sort of conceived and actual business offense. Some judges get it; some don’t.

This particular case — the complaint, courtesy of Evan, is here — raises an interesting issue in terms of how the prominent use of the desired brand name in the overall marketing campaign, along with a very generic description of the seller, could lead to confusion as to source (i.e., of the offer) or sponsorship. That would be fine with LIKELIHOOD OF CONFUSION® if that kind of analysis were reserved for allegedly close cases such as this, and not applied to retail sellers (typically online) of trademark-protected goods that are not “authorized” by the mark owner. (Yes, I am “positionally” biased.)

But in the midst of numerous decisions granting plenipotentiary powers over markets and marketing to anyone with a trademark registration, this could be just that hard case that could firm up an already troubling legal trend — and then some. But, hey, even trademark owners have rights!

The Oatmeal thing, and stupid law

Originally posted 2012-07-02 17:00:08. Republished by Blog Post Promoter

Sometimes an objectively big story implicating this blog’s “beat” completely escapes me.  That’s what happened with the story involving The Oatmeal, a web comic, and  something called FunnyJunk. It sounds awfully stupid.

I think there’s a point where it’s just not worth trying to catch up.  I don’t think a lot of important law is going to  come out of this dispute anyway, because we all know that hard cases make bad law.  Stupid cases often make good law, on the other hand, and there is a lot of stupid floating around on this one.

Instead, in a stunning bait-and-switch, I will mention two cases which, unlike the one I did win, I didn’t win, involving real legal issues, so no one can say I didn’t tell you so.

You may remember Ascentive v. Opinion Corp., which came out pretty good for my clients, PissedConsumer.com — the Eastern District of New York said that the stupid lawsuit brought by the plaintiff was not likely to succeed, and therefore it could not have a preliminary injunction.  Well, in two other related cases, we attempted to get judges to make the not-so-vast leap of faith that a case that is not likely to succeed should, really, probably just go away.

Both times, the judges said, well, where there’s a will (i.e., a will to make unsubstantiated false claims with no real good faith basis), there’s a way; plaintiffs don’t look like winners here but we have to let them have their “day in court” — meaning that, in an American Rule (no fee shifting, ever) world, we have to let them try to bankrupt the smaller company via litigation.  Well, those are the rules, I guess.

This happened in New York State Supreme Court, and once in federal court in Philadelphia.  Both links in the previous sentence leave it to the redoubtable Professor Goldman to address both decisions.   His take on both outcomes, and the trend they represent:

Judge Buckwalter’s [Eastern District of Pennsylvania] opinion is solidly constructed in the sense that it fairly applies existing law to the alleged facts. As taxpayers, we got our money’s worth from this opinion. Nevertheless, it’s clear Judge Buckwalter and other judges lack []adequate doctrinal tools to kill doomed cases early. In the end, this case is really about Amerigas trying to shut down negative reviews of its business. . . . I could imagine other judges finding more doctrinal flexibilities to address the realpolitik of this situation. I can’t blame Judge Buckwalter for failing to do so, but the result is unfortunate nevertheless.

In other words, even a smart judge can’t help it if the law is not so bright when it comes to what is, essentially, trademark bullying — a business model that remains soundly intact for the time being.

Now, go eat your oatmeal, like this guy did:

Florida: A nice place to visit, but…

Originally posted 2014-06-25 01:28:18. Republished by Blog Post Promoter

Internet Solutions operates recruiting and Internet advertising businesses, including one called VeriResume. Tabatha Marshall runs a blog and website at www.tabathamarshall.com that monitors “phishing,” including dubious job pitches. One section of the blog focused on VeriResume, and the various users posted comments criticizing VeriResume. As the Citizens Media Law Project explains:

One user, who claimed to be a company employee, alleged that the company engages in a “bait-and-switch” routine after applicants submit their information, according to documents attached to the complaint. In an update to her original post, Marshall summarized these user’s comments and expounded on the situation. . . .

[ISC sued.] Internet Solutions’s complaint includes claims for defamation, false light invasion of privacy, and injurious falsehood (trade libel). It alleges that Marshall has “author[ed], post[ed], and publish[ed]” statements claiming that Internet Solutions engages in “phishing,” “scams,” and other criminal and fraudulent conduct. It requests compensatory and punitive damages, and an injunction requiring Marshall to remove the allegedly defamatory posts and prohibiting her from making future defamatory statements about the company.

On April 8th of last year, the court dismissed the complaint on the ground that it lacked personal jurisdiction over Marshall. Internet Solutions then appealed the dismissal to the 11th Circuit and the 11th Circuit certified a question to the Florida Supreme Court as follows: “Does posting allegedly defamatory stories and comments about a company with its principal place of business in Florida on a non-commercial website owned and operated by a nonresident with no other connections to Florida constitute a commission of a tortious act within Florida for purposes of Fla. Stat. section 48.193(1)(b)?”

This is the friend of the court brief filed (conditionally) by the Media Bloggers Association, urging the Florida Supreme Court to respond in the negative. The summary of our argument is as follows (from the brief):

Amicus curiae files this brief to urge this Court not to extend the Florida long-arm statute to reach what is in effect any non-commercial Internet website in the world, regardless of its connection to this State. Such a wide-ranging assertion of jurisdiction for defamation by long-arm jurisdiction would violate the First Amendment of the United States Constitution’s guarantee of free speech by chilling protected journalism and commentary on the Internet. A finding that content or comment on a blog such as Ms. Marshall’s, which is for all meaningful purposes located in another state, constitutes “a tortious act within Florida” would be contrary to case law and would offend the constitutional policy, based on principles of due process, underlying personal jurisdiction. Amicus also urges the Court to decline to extend the Florida long-arm statute because of the conflict such an extension would create with 47 U.S.C. §230, which immunizes website operators from liability arising from the defamatory postings of others.

The brief is short and may be worth scanning if only to find the delicious–but entirely legally germane–punchline right before the Conclusion!

Major work on this filing was done by MBA intern Andie Schwartz and major thanks are due, of course, to Kevin Wimberly of Orlando’s Beusse Wolter Sanks Mora & Maire, P.A., which acted as pro bono local counsel.

(And guess who dragged us into this!)

Cross-posted on the MBA Legal blog.

Paradise by the celestial lights

Originally posted 2011-10-31 23:13:28. Republished by Blog Post Promoter

Infamy or Praise hosts the third Dantean Blawg Review!

The Death of Brick and Mortar

Originally posted 2014-02-26 09:43:39. Republished by Blog Post Promoter

It’s good to be an “Internet lawyer” — at least if you have “Internet clients.” Thankfully, I do.

Here’s why it’s so good, besides the obvious reasons (i.e., invitations to all the cool parties):The Death of Brick and Mortar and the Rise of Ecommerce
© TheStore.com

Keep it Underneath Their Robes, Please

Originally posted 2005-05-03 19:00:56. Republished by Blog Post Promoter

Underneath logoI recommended the Underneath Their Robes blog a little while ago. It is clever and well written, and the concept is brilliant.

But I have to say I am having second thought about the whole, albeit inevitable thing — it’s bad (clever, yes, but bad) enough treating the Demigods of Article III like rock stars, but extending that treatment to judicial clerks is really a bit unseemly, isn’t it?

It’s not as if they’re not all going to be federal judges themselves down the line, anyway!

Joint trademark “ownership”: Tea for two?

Yogi Tea

Yogi tea trademark.

It’s been almost ten years ago since the March 2006 blog post, which got a bit of play as it turned out, in which I expressed a sentiment that seemed incomprehensible to me at the time and a decade later I will admit I understand all too well:  The idea that both Marvel and DC could, as they were, both claim to be own the putative trademark SUPER-HERO.

I wrote this:

DC and Marvel — the only two companies that financially could fight over this with the other of them — are “jointly” claiming rights in the term SUPER-HERO. Adding ™ to super-hero is a naked bid to steal “super-hero” from us and claim it for their own. . . . ,” continues [Boing Boing], concluding:

Here’s a proposal: from now on, let’s never use the term “super-hero” to describe a Marvel character. Let’s call them “underwear perverts” — as Warren Ellis is wont to — or vigilantes, or mutants. Let’s reserve the term “super-hero” exclusively to describe the heroes of comics published by companies that aren’t crooked word-thieves.

(Via Slashdot.)  Well, that’s one approach. Here’s another one: I’ll represent pro bono any company harassed by this claim, if you can get me to where you are as necessary (and provide local counsel if needed).

By the way: They each have a registered trademark incorporating the term SUPER-HERO: MARVEL SUPER-HEROES and LEGION OF SUPER-HEROES, respectively. Does that mean they both have the trademark SUPER HERO? Actually — it means the exact opposite! In fact, if these two “competing” companies are trying to establish some sort of joint right in this term, it could be that rare case of trademark misuse so often pleaded and so never found by the courts…
Read More…

Best of 2006: Trademark City

Originally posted 2015-01-19 19:30:38. Republished by Blog Post Promoter

Trademark City

The Strategic Name Development blog reports that the naming rights to the New York Mets’ new baseball stadium have been sold to Citigroup. The stadium will be called “CitiField” and the privilege of that garish plug will cost Citigroup $20 million a year, or the cost of a grade-A free agent. The blog post has a great rundown on alternative “Citi” names that were considered, as well as a roundup of back-page and other learned reactions.

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

CitiGroup is itself a metropolis of trademark issues. The CitiGroup Center, which is right out the window of my office (over my shoulder in the picture above left), is a landmark building, i.e., a de facto trademark for the company on the New York skyline, of which it is one of the leading and tallest lights. In the picture below, taken from the east, you can see how its distinctive angles tower jauntily over the lovable rust-colored “lipstick”-shaped [former] LIKELIHOOD OF CONFUSION Building at 885 Third Avenue (below). But of course, buildings can’t really be trademarks, can they? If they can be, the CitiGroup Center is. Read More…

Clearly Not a Trademark

Originally posted 2012-01-31 00:01:06. Republished by Blog Post Promoter

Clear Bottle.3The glass is half-empty for Pennzoil. John Ottaviani, guest-blogging on Eric Goldman’s Technology & Marketing Law Blog, picked up a pretty interesting decision in the trade dress department (which, not surprisingly, John Welch was all over — in vivid detail — when it hit the TTAB in January):

[T]he Federal Circuit recently affirmed, per curium, the 2004 decision by the Trademark Trial and Appeal Board that Pennzoil is not entitled to register its clear plastic bottle for motor oil as a trademark. In its decision, the TTAB found that the use of the clear bottle was functional, and that, even if it was not functional, Pennzoil has not demontrated sufficent “secondary meaning” or “acquired distinctiveness” to warrant trademark protection.

In this case, the most damaging evidence to Pennzoil’s position that the clear container is not functional is that Pennzoil introduced its clear container after it determined that there was an obvious competitive advantage to displaying the colorization of its synthetic oils and blends in a transparent bottle. Because there were numerous non-reputation related reasons for adopting a clear container, and these were competitive reasons that should not be denied to Pennzoil’s competitors, the Board found that Pennzoil did not have a right to appropriate the use of a clear container exclusively for its motor oils.

Unlike Ottaviani, who says in the piece that he “tend[s] to like ‘non-traditional’ trademarks, such as color, sound, buildings, furniture designs, etc.,” I don’t. I think it’s bad enough that the lexicon is being gobbled up by trademark rent-seekers. I’m not crazy about the rest of the universe being up for grabs for the cease-and-desist bar (of which I have from time to time been a member, I must admit). On the other hand, gee, wouldn’t you think putting the motor erl in a clear bottle is a classic example of a clever package meant to establish secondary meaning, i.e., consumer identification with a single source?

Here’s the whole decision (HT to Ernest Miller).