Petroliam Nasional Berhard to SCOTUS: Gimme shelter

Did the 9th Circuit miss a spot?

In December 2013 I wrote, mostly cribbing from Jane Coleman‘s commentary, about the very dubious Ninth Circuit decision in Petroliam Nasional Berhad v. (9th Cir. Dec. 4, 2013) that declared the existential impossibility of a claim for contributory liability based on the Anticybersquatting Consumer Protection Act (ACPA).  The bottom line, I wrote then, was that “Unfortunately the Ninth Circuit went beyond dictum here, it seems, affirmatively deciding a question it didn’t have to and doing so with unfortunately overbroad language that’s likely to cause a lot of litigation confusion.”

Reasonably enough, then, given the view of the matter around my house, Petroliam Nasional Berhad has filed a Petition for Certiorari to the Supreme Court.  The question presented:

Do the normal rules for contributory trademark infringement set forth in Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982) apply to trademark infringement by “cybersquatting” under Section 43(d) of the Lanham Trademark Act?

That’s a nice way to present it, I think.  The summary of argument:

In rare cases, a federal court decides an important federal question in a way that conflicts with relevant decisions of this Court. This is such a case, as the court below held that there is no contributory liability for trademark infringement committed in violation of Section 43(d) of the Lanham Act. This approach conflicts with  longstanding contributory liability principles that have guided this Court and other federal courts for more than 30 years. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982) (holding that there is a cause of action for contributory trademark infringement under the Lanham Act.). And it contradicts this Court’s well established precedent that “when Congress creates a tort action, it legislates against the legal background of ordinary tort related vicarious liability rules and consequently intends its legislation to incorporate those rules.” Meyer v. Holley, 537 U.S. 280,285 (2003).

And, if you will, the meat of it:

The Ninth Circuit’s opinion thus misapprehends Section 32(D)(iii) – quoted above – which only exempts from liability the registration or maintenance of a domain name by a registrar “absent a showing of bad faith intent to profit from such registration or maintenance of the domain name.” More importantly, it contradicts the plain language of the statute which shows that Congress did intend for there to be contributory liability for cybersquatting in violation of Section 43(d), albeit subject to the narrow exception in Section 32(D)(iii). And the legislative history of Section 32(D)(iii) confirms what the statute’s plain language makes clear, namely, that Congress was codifying an existing limitation on secondary liability for cybersquatting. See 1999 WL 594571 (Leg.Hist.), S. Rep. 106 140, at 11 (Section 32(D)(iii)’s intended effect was “codifying current case law limiting the secondary liability of domain name registrars and registries for the act of registration of a domain name.”). Neither the language of the statute nor the legislative history supports the Ninth Circuit’s conclusion that Congress intended to eliminate secondary liability altogether.

Secondary Trademark Liability

It’s all in here!

The plain-language point being this:  It’s clear that there is no liability for domain registrars, secondary or otherwise, under the ACPA arising out of their simple execution of the “rote” function of domain registration.  But under the Ninth Circuit’s opinion in Petroliam Nasional Berhardnothing a registrar could do, no matter how beyond this “ministerial” registration function, could result in secondary liability for any party based on an underlying violation of the ACPA. While that wasn’t even close to the dumbest thing a circuit court said about IP law in 2013 (this is), there doesn’t seem to be any reason for the Circuit Court to have said it.  And yes, there are plenty of good reasons for it not to have said that.  Jane explains it all, if you don’t follow.

Still, it’s hard to see how the petitioner gets the Supremes’ attention on this, because the outcome appears to have been right.  As far as I can tell, there isn’t a very good factual hook to justify reversal, and the Court of Courts isn’t in the business of tidying up messes like the one the 9th made here.  (Whose business, exactly, it is to do that is not entirely clear.)

Bully, all the same, and best of luck to Perry Clark, counsel for petitioner, who has ample experience to appreciate the uphillness of his battle.

THE SLANTS — Federal Circuit brief

H.R. Pufnstuf, Call Your Lawyer

Originally posted 2005-07-12 13:45:43. Republished by Blog Post Promoter

Via Techlaw Advisor [UPDATE:  shuttered], a link to a very smart copyright blog from a member of the firm that cleaned my clock in 1998. The item by Bill Patry, Clothing and Costumes Redux, is surely everything you ever needed to know about whether dressing up in funny costumes is going to be a ticket to federal court, in light of (or despite, as he suggests) two recent decisions. (Oddly, however, he does not address the Barney decision, nor the H.R. Pufnstuf kerfuffle stuff from a few years ago.)

It’s not every day that I say this, but Patry’s blog is one H-E-double-hockey-sticks of a good IP blog, if you’re into that sort of thing (and who isn’t*)? I bookmarked it and you should, too.

* Pace my lawyer friend, Alper (see below) who told me that will all due respect, he couldn’t understand my fascination with intellectual property. What does he do? Landlord-tenant! Takes all kinds, I guess…

Likelihood of extrusion

Originally posted 2011-04-18 14:15:24. Republished by Blog Post Promoter

Reprinting my annual Passover post, adjusted for days of the week as they come out this year:

I’ve been hit by pre-Passover preparations, plus the need to front-load the making-a-living part to make up for the fact that I will be “out of pocket” Tuesday and Wednesday and essentially on mission-critical-only duty for most of the rest of the week, too.

Here’s a nice thought on the topic, appropos for our blogging lifestyle:

The 21st century is certainly a marvelous time in which to live. Space exploration, computerization, the taming of vicious diseases are all truly amazing feats. But we also suffer more burnout, mental exhaustion, attention deficit disorders and high blood pressure than ever before. They are no doubt the effects of our own hi-tech servitude. Like it or not, we’re ruthlessly on call to someone for something all the time. And, we call it “normal.”
Read More…

Explicitly yours

American University Law ReviewTomorrow I will be on a panel called “Warning, the Following Material May Be Explicit: Addressing the Efficacy of §2(a) of the Lanham Act” as part of American University Law Review’s annual Federal Circuit Symposium. It’s being held at Arent Fox, whose web page promoting the event says:

The American University Law Review’s Volume 63 Federal Circuit Symposium will assess the Lanham Act’s section 2(a) bars to registration for immoral, scandalous, and disparaging marks. Prominent legal academics, practitioners, and a Trademark Trial and Appeal Board judge will discuss relevant cases, the provision’s varying effects, and its remaining value.

You can also register at the link and you should do that ASAP!

Obviously I will once again be discussing the Federal Circuit appeal by our client, Asian-American musical performing ensemble group The Slants, from the TTAB decision affirming the denial of a trademark registration for THE SLANTS on the ground that they are Asian-Americans.

I had the opportunity to present on this topic in Cleveland exactly a month ago.  That, however, was an hour of stand-up; this is a panel, which mostly features sitting and nodding.  My fellow panelists are Jim Bikoff from Silverberg, Goldman & Bikoff LLP, Professor Michael Bressman of Vanderbilt Law School and — yes, Finnegan again! – Doug Rettew of Finnegan, Henderson, Farabow, Garrett & Dunner.  The program starts at 1:00 PM with my panel, which will last from 1:00-2:30.

The second panel features my friend Professor Christine Farley from American, TTAB Judge Linda Kuczma, and Professor Sarah Hinchliffe, visiting professor at William and Mary Law School. Arent Fox’s resident rock starPamela Deese, will act in all things as moderator.

As interesting as that is, my real point is that you are not exempt from attending this event just because you think you already heard “this” in Cleveland.

I enjoy being a trademark lawyer

Originally posted 2009-03-27 17:28:28. Republished by Blog Post Promoter

John Welch at the TTABlog® has up what even he acknowledges is an “excit[ing]” post, in which he both imagines himself a woman and quotes this lively Trademark Trial and Appeals Board opinion excerpt concerning the resolution of the Chippendale’s dancer-boy trademark appeal I discussed a while back:

The TTAB appeal was a washout

The TTAB appeal was a washout

Judge David Bucher . . . asked “what purpose is served by prosecuting this application in light of applicant’s [incontestable] registration,” particularly in light of the burden it placed on the PTO? “Trademark Examining Attorneys laboring under demanding production requirements cannot afford to be time travelers, and few have advanced degrees in dramaturgy and theatre arts.”

Nonetheless, he found that the subject mark “would appear to be an original creation and an immediately recognizable symbol belonging to applicant alone, and hence, inherently distinctive.”

Judge Bucher accepted [drama iconology expert] Dr. Shteir’s conclusion that “the expectations of the all-female audience to whom the show was originally presented are critical to our decision herein.”

Yay for Judge Bucher!  Unfortunately for Chippendale’s, however, as well as LIKELIHOOD OF CONFUSION®, which opined that the seedy purveyor of undercooked beefcake should (not “would,” Mr. Welch!) win this one, the ellipsis above elides the words, “in a lively dissent.”

See John’s blog for learned analysis of the opinion, as well as thoughtful consideration of the practical lawyering and IP-strategy issues originally addressed in the comments here.

How Tweet it is

Originally posted 2010-09-15 21:15:29. Republished by Blog Post Promoter

A little topical tweeting music from the last few weeks via @roncoleman:

You could do worse than to check these out.

And away we go!

Move on, already

Originally posted 2007-09-24 22:59:42. Republished by Blog Post Promoter

Yet another chapter in the abuse of supposed trademark rights in “catchphrases” — now from MoveOn, the “freedom” people.

The purveyor of an “infringing” T-shirt ran for the hills, intimidated unjustly — classic “big IP” stunting at work. (Why don’t these folks even try to find pro bono lawyers? I’m not the only one who would have handled this case for free.)

IP doth make villains of us all! (Speaking of evil — another hat tip to Instapundit, too!)

This Isn’t One, Either. Heavens, No.

Originally posted 2005-02-17 00:04:00. Republished by Blog Post Promoter

Bill Heinze’s I/P Updates blog reports about a trademark registration you can see at the erstwhile movie pirating website You get a message that says “There are websites that provide legal downloads. This is not one of them.” The site is the property of the good people at the MPAA.  And it ought to: Downloading someone else’s movie is just plain stealing. Even if the MPAA is against it.

Clients sometimes ask whether the infringing website they’re steaming about can ever fall like an overripe fruit into their hot little hands. Yep. It can.

Welcome, Blogads clickers

Originally posted 2005-01-04 10:03:00. Republished by Blog Post Promoter

I’m stuck in a monthlong marketing campaign on Blogads. The rates are really favorable but the diminishing returns are sick-making. So having “spent” the money (well, pledged it — do you think Amex reads blogs?), we may as well drive some traffic to here, the law firm’s new blog.

I have joked that the wheels are about to come off the blogging wagon — blogs are now so cool I’m afraid they’re no longer cool at all. If everyone has one, who wants one? But as a phenomenon of communication, in the sense of information exchange, they are not going away. What’s good (for me) is that the legal issues of blogging aren’t going away either. They will only increase. Not everyone is interested in more communication — not if it’s a threat to their franchise. That means people will attempt to utilize (or no less likely abuse) the law and the courts in order to compete unfairly. And that’s something we have demonstrated we can do something about. (And sometimes we can’t, even if down the line courts acknowledge, well, maybe we were right….) One of the reasons I left my my old firm two years ago and founded this office was so that I could spend more time working the leading edge of Internet-related law. I’m happy that we’re succeeding, at least somewhat.

We also do house closings. Baby steps, man, baby steps. At least our real estate associate is a blogger.

Anyway, a number of bloggers whose names you must know (I like the sound of that) are banding together to form the Media Bloggers Association. More associations means more lawsuits! It’s all good.

UPDATE: A reader asked me about the old firm, Gibney Anthony & Flaherty, in New York. It was a warm, friendly breakup. We are still friends, still work together, and I am still on their letterhead as “counsel.” So don’t get upset.

Knockoff News Forty-Two

Originally posted 2006-12-04 22:52:40. Republished by Blog Post Promoter

Check it out, bub.

“Dear Licensor” — Part II

Originally posted 2011-08-19 10:37:54. Republished by Blog Post Promoter

Dear John Letter

Permission: Casey Berry

Last spring I excerpted from and linked to an article by my friends Richard Bergovoy (of the Licensing Law Blog) and Oliver Herzfeld (of Beanstalk) concerning the dizzying concept of a trademark licensee gone bankrupt.  Now I’m told that Part II is out and about as well.

Here’s a highlight:

Richard Bergovoy

Richard Bergovoy

If Licensee Seeks to Assume and the Licensor Objects

The licensor may believe that the licensee or its proposed assignee are incapable of properly performing the license agreement. One of the fundamental principles of U.S. trademark law is that a licensor must control the quality of the goods and services provided by the licensee under the licensed mark. This rule is designed to fulfill the public policy objective of consumer protection, in that trademark laws help prevent the public from being misled as to the quality of branded products and services. A prohibited “assignment in gross of a mark” or other failure to maintain quality control standards could give rise to a so-called “naked license” claim. The consequences of such a claim can be quite severe. In particular, “a court may find that the trademark owner has abandoned the trademark, in which case the owner would be estopped from asserting rights to the trademark.” To prevent such damage from occurring, the licensor may object to a licensee’s assumption or assumption and assigument of a license agreement on the following four grounds …

The four grounds, and the rest of the article, can be found here.