LIKELIHOOD OF CONFUSION®

Get the big picture — Eric Goldman’s roundup on technology and marketing law developments for April.

The world needs more better blogging! So welcome, good luck and Godspeed to the youthful but wise William J. Morris, III, of Saunders & Silverstein in Newburyport, Massachusetts, evidently a master of his domain, who launched his new UDRP Blog last month!

Business method patents! I must get a call about patenting a “business method” once a month. And I’m not even a patent lawyer. And, as a not one of those guys, I often wonder — mostly when trying desperately to fall asleep on a day packed with action, adventure and stimulation such as today; for patent law is good for that — what on earth makes a “business method” an “invention” that can be patented? I always thought an invention had gauges and tubes and blinking lights on it! And here these hedge fund guys and online booksellers are trying to patent “inventions” that seem to make it legal for them to print even more money, which I also recall not being so lawful, by the way!

Thankfully there is the Wall Street Journal Law Blog, which today interviewed a patent lawyer evidently notable for having a very nice smile and no involvement in the Bilski case, which is being argued before the Federal Circuit tomorrow, and will answer some of the above questions, presumably.

Okay. So what’s the Bilski case all about?

The patent at issue in Bilski covers a method of managing risk in selling commodities. The claims do not cite a transformation of articles; they’re not tied to a machine. So the question becomes is this patentable? [The Patently-O blog has a lot of the documents in the case.]

When the court decided to hear the case en banc, it put out five questions* they wanted the parties to address. The second one is really the meat of it — what standard should govern business-method patents?

That’s easy: Gauges, tubes and blinking lights! Ones that switch off once I do, of course.

Legal Blog Watch:

Pet food giant Purina is like a dog that won’t give up its bone — or in this case, its chow. Three years ago, Purina sent a cease-and-desist letter to Chow, Baby!, a Baltimore area pet supply shop and Web site owned by Robin McDonald, asserting that its use of the “Chow, Baby!” name was likely to cause confusion with Purina’s CHOW trademarks and would dilute the distinctive quality of those marks. McDonald’s lawyer advised her that it would cost thousands of dollars to fight for the name and that she might lose anyway. As a result, McDonald took down the Web site. But she retained the name, Chow, Baby! for her local store, figuring that Purina wouldn’t find out about it.

Now, McDonald is ready to re-launch an Internet presence. But this time, McDonald decided to steer clear of a dogfight with Purina, and instead, changed her company’s name to “Howl, Baby,” subsequently shortened to Howl.

Would it really have cost McDonald “thousands of dollars” to tussle with Purina, or was her lawyer barking up the wrong tree when he dispensed that advice?

For someone who reads legal blogs, Carolyn Elefant asks a surprising question! No, it doesn’t cost thousands of dollars of anyone’s billable time to write up the argument about why Purina is out of line on a blog, as Carol does admirably at the link, or even a letter responding to Purina’s C&D. (Via Overlawyered.)

But there is not much use in arguing the merits of a claim with lawyers in correspondence, which I try studiously to avoid. Some percentage of attorneys above 50% knows both sides of the argument before putting a threat to paper, and your tutoring is seldom going to move their corporate clients. (In the case of smaller businesses, an “educational” response may be worthwhile, because there by virtue of your letter your adversary’s client may have the first chance to hear the other side of the argument — even giving your adversary the benefit of the doubt!)

But companies such as Purina are not interested in discussing the matter. Brand management isn’t a seminar. They are interesting in executing and maintaining a policy of complete domination of not only their brand equity space, but a comfortable semiotic buffer all around that space to the full extent that they can get away with it. Judges simply do not award fees or otherwise penalize brand owners for overreaching under the Lanham Act, though the Act empowers them to do so (the exceptions are notable and hence reportable). For this reason it is worth it to Purina and companies like it — given the extant rules regime, it is a rational economic and corporate choice — to litigate these cases at the small risk of actually getting to a final adverse judgment regarding a trademark they have no right to anyway, as weighed against the much higher possibility that the other side will surrender $10,000, $25,000 or even $100,000 worth of fees into the process — dollars that are orders of magnitude more significant to the defendant (or declaratory judgment plaintiff) than for a corporation that probably has counsel on a retainer anyway.

So yes, Carolyn, thousands with a “small t” is probably an understatement. And that does not seem likely to change, unfortunately, in the foreseeable future. That’s the way the world works, my feline friends. As we always say here, trademarks — and now, we might well add, their penumbras and emanations — are all about catnip; consumer protection, once the conceptual heart of the matter, is today so much kitty litter.

Irvin Robbins, the co-founder of the Baskin-Robbins ice cream chain, died yesterday. Here’s how much time has passed since just about the time your blogger was born, in ice cream marketing years:

When the Beatles were to arrive in the United States in 1964, a reporter called to ask whether Baskin-Robbins was going to commemorate the event with a new flavor.

Robbins didn’t have a flavor planned but quickly replied, “Uh, Beatle Nut, of course.”

The flavor was created, manufactured and delivered in just five days, according to the Web site.

Hah! Can you imagine? Without a sponsorship deal! “Diversion!” “Free riding!” “Initial interest confusion!” “LIKELIHOOD OF CONFUSION®!” And, of course, “Dilution!”

No…. none of those things. Just tribute. And, yes, a little profit too. The Beatles… probably didn’t miss it. They were a musical act, and song writers, interested in rhythm and blues, not sprinkles and scoops.

We’re not against intellectual property here. Not at all. But there was a time when you could have a little fun, even in business, doing something that sounds like “trading on” the name and fame of the phenomena of public life without having to fear cadres of IP lawyers demanding cessation and desistence, claiming confusion as to source-sponsorship-or-affiliation, and reserving all rights on fancy colored letterhead delivered simultaneously by certified mail / RRR and PDF via email.

As any Beatle Nut knows, today the Beatles-inspired theme of big-IP rent-maximizing business would be what Bungalow Bill’s mom told the children when they asked those uncomfortable questions: “If looks could kill it would have been us instead of him!”

Sounds good to me! Preliminary injunction granted!

This blog is a “media partner” sponsor for the following upcoming CLE seminar:

Managing Trademark Litigation

June 10 - 11, 2008

The Helmsley Park Lane

New York, NY

www.americanconference.com/tmlitigation

Managing it? I couldn’t manage without it!

Among the speakers are my former partners Brian Brokate and Heather McDonald and my friends and colleagues Dawn Atlas, Barbara Kolsun and Stephen Feingold — all brilliant minds, brilliantly presented! Other people, too, whom I don’t know, but who must manage quite a bit of trademark litigation.

Nothing not to like about it.

At least for MySpace.com, which has lost a key domain name battle in England over the domain myspace.co.uk. According to Bell Denning, solicitors for the respondent:

Both the first and the appeal decisions held that the vast majority of MySpace’s claims had no merit – not least because the UK ISP had legitimately registered the name some 6 years before the social networking site had been formed and the Stockport based ISP had been using it to host numerous websites for clients.

Instead argument centred on the most recent use of the domain as a Pay Per Click website, hosting adverts for other websites that users could link to by clicking on them. . . . [The panel] held there was “insufficient material” to uphold MySpace Inc.’s allegations.

Of more general interest was the second main point covered – namely whether parking use that started as legitimate could become abusive when the nature of the adverts hosted changed due to the sudden fame of a third party. In this case the adverts changed to reflect the fame of MySpace.com, but that had happened automatically as a result of the algorithms used by parking company Sedo. MySpace Inc. claimed TWS should have exercised control over the content of the adverts. No, said TWS – that is not a change of use.

The appeal panel said they were “reluctant to place any duty on a registrant, who has merely had the good fortune (or maybe ill fortune) to register a name in good faith…” and as long as they do nothing new to exploit the situation. That was the case here and so the domain is retained by TWS. “We knew we had done nothing wrong.” said TWS MD Paul Fallon “We are delighted that all three members of the Appeal Panel agreed with us.”

In short, under the Dispute Resolution Service Policy utilized by Nominet, the registry for UK domain names, the “bad faith” element in a domain name dispute is considered from the time of registration only. If a “lucky” registrant ends up with a windfall, without actively exploiting the registration in some new way, this is not objectionable from a purely domain-name point of view. From the decision:

[T]he registration of domain names is still a first-come first-served system and the Panel is reluctant to place any duty on a registrant, who has merely had the good fortune (or maybe ill fortune) to register a name in good faith, which subsequently, through no fault of his own, acquires notoriety, provided that he does nothing actively to exploit his position.

This certainly is of great general interest, considering the bullying business model that MySpace followed in this dispute. The full decision is here. Powdered wig tip and congratulations to winning counsel, Jim Davies!

Above the Law reports:

Belluck & Fox is a nine-attorney law firm in Manhattan. The firm worked out a deal with the radio station that broadcasts New York Yankees games, making it the official legal sponsor of Yankee radio broadcasts.

The folks at Belluck & Fox must have misread the contract though. They took the sponsorship a bit too far and transformed their HomeRunLegal.com site into a bonanza of Yankee paraphenalia, calling themselves the team’s official legal sponsor:

The site featured a photo of Yankee Stadium, a baseball emblazoned with the firm’s name, and a clipboard listing “Today’s Lineup” with such power hitters as “Mesothelioma & Asbestos Injuries,” “Car and Motorcycle Accident Claims,” and “Construction Accidents.” Festooned with the Yankees logo, it claimed the firm was the “official legal sponsor” of the Bronx Bombers.

This, as the appellate courts say, was error. Weren’t the terms of the “sponsorship” spelled out in the “sponsorship agreement”? Well, as the item says, they’re not that kind of lawyer. I am sure they are doing just fine.

Evidently, however, the kinder, gentler post-George Yankees were happy to resolve the matter with a simple phone call — meaning obviously the goons from MLB’s IP-obsessed front office were kept on the bench. (Via Overlawyered.)

Fabulous filings for fashionistas — and those who just want to look like them!

Till then, though, Yoko Ono is out there.

Greg Beck:

This has to be in the top five dumbest copyright threats I’ve ever seen, and that’s saying a lot.

I’ll agree that Greg has seen a lot, but even saying a little less — boy, is this one dumb.

LIKELIHOOD OF CONFUSION®, it turns out, is on this new thing — Internet startup guru guy Guy Kawasaki’s “Alltop project“:

We help you explore your passions by collecting stories from “all the top” sites on the web. We’ve grouped these collections — ”aggregations” — into individual Alltop sites based on topics such as environment, photography, science, celebrity gossip, fashion, gaming, sports, politics, automobiles, and Macintosh. At each Alltop site, we display the latest five stories from thirty or more sites on a single page — we call this “single-page aggregation.”

You can think of an Alltop site as a “dashboard,” “table of contents,” or even a “digital magazine rack” of the Internet. To be clear, Alltop sites are starting points — they are not destinations per se. The bottom line is that we are trying to enhance your online reading by both displaying stories from the sites that you’re already visiting and helping you discover sites that you didn’t know existed. In this way, our goal is the “cessation of Internet stagnation.”

More:

Q. How do you decide which sites and blogs are in a topic?

A. We use a patent-pending, semantic computational algorithm derived from the post-doctoral work of Guy at Stanford. Just kidding. We rely on several sources: results of Google searches, review of the sites’ and blogs’ content, researchers, and our “gut” plus the recommendations of the Twitter community, owners of the sites and blogs, and people who care enough to write to us. Let us declare something: The Twitter community has been the single biggest factor in the quality of Alltop. Without this group of mavens and connectors, Alltop would not be what it is today.

Works for me! Hat tip to Ted who, of course, is above the fold and all. I can handle that.

UPDATE: Wow — looky what I found there: “Law and Magic Blog“! Cool. I think “magic” goes with “law and,” as opposed to it being a “magic blog.” Still — cool!

UPDATE: “Kawasakied“!

Sarah Bird explains how to do it right. She explains why she thinks you would possibly want to bother here, conveniently omitting the uncomfortable fact that — unlike Sarah Bird — most of us don’t really have to worry about the copyright in our blogs being infringed. I mean like 99.99999% of us.

Still, you never know, I guess. Hat tip to Evan Brown.

Maybe. Maybe not:

The U.S. Patent and Trademark Office may have a major problem on its hands — the possibly unconstitutional appointment of nearly two-thirds of its patent appeals judges.

Such a constitutional flaw, if legitimate, could call into question the hundreds of decisions worth billions of dollars in the past eight years. The flaw, discovered by highly regarded intellectual property scholar John Duffy of George Washington University Law School, could also afflict the appointment of nearly half of the agency’s trademark appeals judges.

Hat tip to Instapundit. (”Afflict”?)

UPDATE: Hey, wait a minute, there!: “The argument that Professor Duffy makes regarding BPAI judges seems to apply to TTAB judges as well,” says — who else? — John Welch of The TTABlog®.

Blogger Kathleen Seidel pushes back on the Clifford Shoemaker subpoena — all by herself, it seems — and wins.

UPDATE:  More stuff. I completely missed the boat on this one.

Those were the days!

It’s not a defense to trademark infringement or counterfeiting that your heart is full of good intentions.

Searchengineland:

Eric Goldman reports that a US District Judge in Florida ordered an advertiser using a trademark term to use the negative keyword option, to ensure that they would no longer bid on that term in the future.

The judge ordered the defendant to stop using the word “ORION” in their search ad campaigns, by adding that keyword to the negative keyword filter in AdWords. Here are the exact words of the court order, found in section D of Orion Bancorp Inc. v. Orion Residential Finance LLC:

from purchasing or using any form of advertising including keywords or “adwords” in internet advertising containing any mark incorporating Plaintiff’s Mark, or any confusingly similar mark, and shall, when purchasing internet advertising using keywords, adwords or the like, require the activation of the term “ORION” as negative keywords or negative adwords in any internet advertising purchased or used.

Courts and judges are indeed getting savvier on search engines and search engine marketing.

That’s what Eric said, too.  I find it hard to believe, but then again they couldn’t get much less savvy, could they?

“Green trademarks” that is. Green-themed, green-related, green to go, green for action! Well, trends aren’t just for marketers — you can find them in the media too. First, Susan Scafidi — trend-tracker extraordinaire, and, as you will see, a trend-maker too. This was on her awesomely chic blog but refers to an interview she did that was published in a Milwaukee newspaper on April 21st:

Eco-friendly fashion has escaped the confines of shapeless, formless, colorless sack dresses and ugly earth sandals to become a major fashion trend, with cutting-edge retailers like Barney’s New York shouting, “Don’t Panic! It’s Organic!” and celebrities adding their names to labels that promise sustainable, recycled, natural, biodegradable, cruelty-free, fair trade fashion fixes. With the text on some hang tags longer than an editorial in an alternative weekly and the British Advertising Standards Authority cracking down on unsustainable claims regarding “sustainable” cotton, Milwaukee Journal Sentinel reporter Lori Price asked your favorite law prof whether U.S. law offers any specific regulations regarding green clothing claims.

That should just about do it right there! But nope. Two days later, here’s the big trademark story on Ad Age:

Getting ready well in advance for today’s Earth Day events, marketers bombarded the Patent and Trademark Office last year for green-themed marks, leading to a 10% spike in trademark filings over 2006, according to a report released by the law firm Dechert.

According to the annual report “Trends in Trademarks,” filings for new trademarks last year topped 300,000, setting a record buoyed by interest in environmentalism. The previous record was 289,000 filings, set in 2000 during the internet boom.

Now that’s a trend!  Articles about eco-trademarks.

Now… “an interest in environmentalism,” eh? Let me suggest an inconvenient truth: Trademarks are about gelt. That’s what the article quoting Susan is about — the fact that there is (gasp!) no regulation over claims of “greenness” made on the stuff people sell you. As Susan says:

“The law hasn’t caught up with eco or organic, so frankly, it’s still easy to be green,” said Susan Scafidi, a visiting professor at Fordham Law School, who teaches fashion law. “So long as you are not defrauding the consumer, you can say anything, and so long as no one complains, you can do anything.”

Actually, it sounds like the law has caught up pretty well, no? At least until some legislator or interest group finds a way to catch up with it and… “buoy” some governmental “interest.”

The New York Times:

The “my” prefix has become an easy and increasingly popular shorthand for suggesting that bond between consumers and corporations. Matthew Zook of ZookNIC, a business that analyzes domain names, said domains that start with “my” more than tripled between 2005 and 2008, to 712,000 from 217,000. According to the government’s Patent and Trademark Office, the number of trademark applications to register marks that include the word “my” increased to 1,943 last year from 382 in 1998. Through March of this year, the number of applications has soared to 530. . . .

“My” is the latest in a line of prefixes that have ebbed and flowed on the Web. A decade ago, everything was “e” — from eTrade to eBay — and “i,” as in iPod or iPhone, has become synonymous with all things Apple.

It’s a little odd to me, because “my” strikes me as very early ’90’s for a branding strategy, at best. And indeed the Times article waits for a good half page before getting to what I remember to be the genesis of all this “I, me, mine” business:

Among the earliest known “my” entries is the comparison-shopping site www.MySimon.com, which filed for trademark in 1998. Mr. Jurisich said that Microsoft may have inadvertently played a role in this trend. “In the ’90s, all these people were trying to find domain names and staring at their Windows computers, which had ‘my documents’ and ‘my music,’ ” he said. “Everyone thought, ‘Let’s try “my.” ’ It was very natural.” (Of course, the success of MySpace, taking off in 2004, may have increased the barrage.)

But almost everything about MySpace’s success is in spite of its design. Clearly it was Windows and its infantile my-this-and-that strategy that spawned this whole “my” concept for neuvo-techno naming, and yet I remember by the time MySimon.com hit thinking that it was a stupid name for a service — what is “my Simon”? Is it, or he, different from “your Simon”?

My Simon, my foot!

“Cyberproperty”? A dubious concept, the dubiousness now analyzed and developed theoretically in this article by Michael Carrier and Greg Lastowka, via Marty Schwimmer.

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

Just as I started hitting some kind of [blogging] pace, I’ve been hit by pre-Passover preparations, plus the need to front-load my law practice to make up for the fact that I will be “out of pocket” Sunday and Monday 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.”

Well, on Passover everything comes to a halt. It begins with the destruction of the chametz, leavened foodstuffs, our daily bread. What could be more symbolic of the mundane, ordinary and routine than a piece of bread? We scour our homes and clear every morsel. The “normal” is simply unacceptable for eight days each year. Then we turn off our cell phones, close our places of business and sit down to a Seder with all the time in the world to discuss the Exodus experience. And, while many of us cringe at the seeming never-ending questions our kids can annoyingly ask the rest of the year, on this night they’re encouraged to ask the four questions, along with any others they might have.

As for the rest of Passover, the simple commandment prohibiting us from eating leavened foods automatically creates a huge paradigm shift for a whole eight days whereby our regular routines go out the window. We are free of fast food restaurants. Free from the mundane obligations and vicissitudes of life. Passover is freedom indeed, from the spirit-stunting routines of modern life.

The fact is that each and every week we’ve simply got to take a day off just to catch our breath. That day is Shabbat. But in order to “clean house” and truly free our inner selves from the overwhelming clutter of life lived in the fast lane, we need the extra-strength, paradigm shifting power of Passover.

If you are Jewish, have a sweet and meaningful Passover!

Walter Olson:

With all his lawyer chums from Milberg-witness days, you’d think Ben Stein could have saved the makers of his creationist movie from stumbling into textbook IP infringements [Myers, again, WSJ law blog].

Ouch.  Ben is an odd guy.

Parlous times:  John Welch endorses the International Star Registry!

It’s war over the trademark for Facebook!

Greenspan, 25, argues Zuckerberg, 23, had no right to trademark the Facebook name in 2005 because the term had been used generically for decades at Harvard University, where they first met. What is more, Greenspan maintains he used the term “Face Book” as part of an online service called houseSYSTEM a few months before Zuckerberg unveiled his now-famous Web site in 2004.

Long before Zuckerberg moved to Silicon Valley in 2004, the Facebook term was widely used at Harvard to describe any paper or electronic book that displayed the faces of students and faculty “in a structured manner,” Greenspan wrote in his petition.

Picking up on that theme, Greenspan said houseSYSTEM introduced a student locator called “the Face Book” in September 2003 — at least four months before Zuckerberg unveiled “thefacebook.com.”

Greenspan said he has documentation, including e-mail exchanges, to show Zuckerberg knew about Greenspan’s Face Book feature and even considered melding it into the thefacebook.com.

When I first read the headline, I thought this was one of those situations where a lawsuit was being filed utilizing the Lanham Act as a proxy for more substantial, but less readily spinnable (and injunctionable), legal disputes. That may still be the case, but it does seem that there are bona fide trademark questions here. It does seem a stretch, though, to argue that because “facebook” is a generic term for a facebook — which it certainly was as far back as the medieval period, when I went to college — that it cannot be distinctive (or certainly have acquired distinctiveness) as a term for a social networking website. The later dispute over the use of the term by Greenspan may be more interesting, but he would seem to have a serious laches issue — and a very obvious inferred sour grapes hump to get over as well.