When you say BUD®


Of course he’s happy. The restaurant popped open that can special for him!

Disputes involving the great BUDWEISER trademark are even older than LIKELIHOOD OF CONFUSION® — the blog, not the secondary meaning thing.  You know that because even in 2006 I wrote — already sounding like a tired old man — how ubiquitous Anheuser Busch’s enforcement adventures were.

Here’s the latest one to come to notice, via John Welch, and it does have to make you pine for a cold frosty to read how this went:

The TTAB sustained an opposition to registration of the mark WINEBUD for “alcoholic beverages except beers; wines and still wines and sparkling wines; beverages containing wine, namely, sparkling fruit wine and still fruit wine; ready to drink alcoholic beverages except beers,” finding the mark likely to cause confusion with the famous mark BUD registered for beer. The Board deemed the marks to be highly similar, the involved goods to be related, and the channels of trade and classes of consumers overlapping. The goods are purchased by ordinary consumers who are unlikely to exercise care in their purchases. Survey evidence corroborated the Board’s conclusion. Anheuser-Busch, LLC v. Innvopak Systems Pty Ltd., Opposition No. 91194148 (August 17, 2015) [precedential]. . . .

The marks: Applicant argued that WINEBUD is a “fanciful compound noun formed from the nouns WINE and BUD, an analogy to horticultural words such as ‘rosebud.'” It contended that wine drinkers would perceive the latter half of its mark as connoting the bud of a vine, not as a reference to BUDWEISER the beer or the BUD family of marks. According to Applicant, BUD refers to BUDWEISER and BUDWEISER refers to someone or something from Budweis, and Budweis is the former name of Ceské Budejovice, which is a small Czech town.

The Board was not persuaded, observing that there was no evidence that consumers would associate the mark BUDWEISER with a geographical location. Likewise as to the mark BUD, which is the more relevant mark here, there was no evidence that consumers would make a geographical connection.

There’s a lot more in John’s post, as usual, including the important issue of the role of a senior trademark holder’s fame in an opposition proceeding, which, as the TTAB’s opinion notes, while “not enough to establish likely confusion . . . puts a heavy thumb on Opposer’s side of the scale.”


Heavy thumb indeed (he said, foreshadowingly).

So I want to just think, together with you — which is better than thinking alone — about a couple of aspects of this opposition proceeding. Read More…

They’re giving it away!

Originally posted 2006-05-03 17:31:29. Republished by Blog Post Promoter

Dickstein Shapiro has published a guide to IP issues (it’s a PDF) for in-house counsel, which is probably useful for non-specialists in private practice as well as all the other fakers out there.  Hat tip to Geoffrey Gussis at In-House Blog.

Getting intellectual about intellectual property

Originally posted 2008-02-08 10:19:17. Republished by Blog Post Promoter

Erik Schmidt:

Richard Stallman, founder of the Free Software Foundation, and creator of the GNU Public License (GPL) was also present. Stallman is known for his outspoken political beliefs and his attention to semantics. He … took issue with “intellectual property,” a term he considers propagandistic and misleading.Stallman’s argument is that copyright, patents, trademark, and trade secret laws are quite different from each other. Copyright and patent law both spring from the same clause in the Constitution, while unfair competition (trademark and trade secrets) derive from common law and statute. Perhaps Stallman is concerned that use of the term “intellectual property” is one of the reasons we now have sui generis protection for boat hull designs and plants. The more broadly the term is used, the more broadly the right of legal protection is interpreted, and the more likely courts are to expand the scope of property rights in the expression of ideas. In a conversation after the panel discussion, he forwarded the notion that the term also distorts public understanding of the separate concepts involved.

On that last point about public understanding, Eric, I wouldn’t sweat it.  Most people have no idea what we mean by the term, and I’ve even had attorneys ask me “what’s new these days in intellectual properties?”  But I do agree with Stallman that the phrase is misleading, and really loaded — I don’t know if I’d go so far as to say propagandistic! — with meaning it does not deserve.  Not only is this because intellectual property law contains so much that is so stupid, either, but merely because so much of what is protected is something quite undeserving of being associated with the lofty concept of intellection.

DMCA days

Originally posted 2008-07-21 13:30:08. Republished by Blog Post Promoter

Mike Masnick on a key question:  Whether copyright fair use, no matter how obvious, may be ignored by a would-be copyright owner when sending a DMCA takedown notice that but for the fair use defense is “reasonable”:

The DMCA has provisions for a copyright holder to assert ownership, at which point the service provider needs to takedown the content. Whoever posted the content can protest that the content was legally posted — which is exactly what happened in this case. However, the DMCA also says that filing a false DMCA notice opens one up to damages from those whose content was taken down. This was in an effort to discourage false DMCA notices. This provision was used last year against Viacom for its false takedowns on satirical clips of the Colbert Report.

The question then, is whether or not filing a takedown notice on content that is used in a way consistent with “fair use” is a misuse or not. Universal Music’s claim is that it is not reasonable for the copyright holder to take fair use into consideration before sending a takedown notice. At a first pass, it sounds like the judge agrees.

As ridiculous as this whole situation is, the judge and Universal Music may be correct under the existing law.

A corrollary:  Is fair use grounds for a DMCA recipient to disregard a DMCA takedown notice?  Hat tip to aggregator Tech Verdict.

UPDATE from Carolyn Wright.

Emerson InSinkErator trash compactors will mangle your hand if you stick it in one of them.

Originally posted 2006-10-19 13:44:39. Republished by Blog Post Promoter

Sounds like a reasonable assertion, right? The same thing will happen if you stick your hand into an Acme trash compactor. It’s just bad practice. Who could be offended by that?


Emerson Electic could (links added):

Emerson Electric is suing NBC over a scene in their new series “Heroes” that featured the company’s garbage disposal, according to an CNN Money article. The first episode showed one of the characters (whose superpowers include indestructibility) stuffing her hand down the disposal and getting it mangled, although within a few seconds her hand was fully healed.

However, Emerson, makers of the “InSinkErator,” believes the scene gratuitously showed their product as being dangerous. Their suit alleges that the program “implies an incorrect and dangerous design for a food waste disposer,” and “casts the disposer in an unsavory light, irreparably tarnishing the product.” They are reportedly asking the court to order NBC to “remove Emerson trademarks from future broadcasts of the show and also seek damages suffered from NBC’s acts of “unfair competition, trademark infringement, and trademark dilution.”

A spokesman for Emerson pointed out data showing that not only are you 10 times more likely to suffer harm from your dishwasher, but any injuries suffered in the event of a disposal accident would not be nearly as severe as those shown in the TV episode.

You can’t say “unbelievable” any more, because nothing is. But on the face of it, this sounds mighty flimsy — “trademark use,” anyone? — and an abuse of the Lanham Act that may be sanctionable. Decide for yourself and let me know what you think: Here’s the amended complaint.

The suit was filed in St. Louis, where Emerson is based.

UPDATE:  Stupid claim settled.  Of course.

Where Were You When “Happy Birthday to You” Was Found to Be in the Public Domain?

You can wish MDB a HBD on 3/12. Every year.

FYI, You can wish MDB a HBD on 3/12. Every year.

Newly discovered evidence [according to a court filing] “proves conclusively that Happy Birthday has been in the public domain since no later than 1922.” At stake is the more than $5,000 per day—or $2 million per year—that singers, stage directors, filmmakers and advertisers currently shell out to use the [song]. – The Washington Post

My entire extended family and I—some six dozen of us, spanning four generations—were at a Joe’s Crab Shack celebrating Nana’s big 1-0-0. The wait staff was midway through a verse of the restaurant’s proprietary alternative ‘Joyful Anniversary of Your Being Born’ melody when one of the busboys—a second-year law student, I think I’d heard him mention—glanced at his phone. He must have gotten word of the court decision just then, because he signalled to the rest of the servers’ ensemble and as one they transitioned to the previously-verboten tune. It took a moment for the other relatives and me to catch on to what was happening, but when we did we joined in. More than one voice cracked—with emotion, for this was a truly momentous occasion. As it turned out, Nana herself entered the Great Public Domain in the Sky the following month—by which I mean she died—but she died with her faith in the American legal system restored, even if she never forgave Chester A. Arthur.”

– Randall W., Atlanta

“I was at home, swimming in an enormous pile of money—the royalties I’ve earned from selling eBooks of public domain works on Amazon.com. No wonder the Warner Music Group wanted to keep the most recognized song in the English language out of there. The public domain is a festering goldmine.”

– Molly M., Raleigh-Durham Read More…

The eBay Euro-crackup

Originally posted 2007-12-04 11:51:11. Republished by Blog Post Promoter

Associated Press:

France’s auction watchdog is taking eBay to court, arguing the Internet auctioneer does not do enough to protect consumers.

The regulatory authority, called the Council of Sales, said Monday that eBay’s French site should be held to the same standards as France’s auction houses, which need a special permit from authorities, partly to ensure consumers are protected.

In a statement, eBay’s French branch, eBay.fr, said the legal action was “totally unjust.” The French site has argued for years that it should not be subject to the same regulations as France’s auctioneers.

It has argued for years, and profited for years, on the sale of counterfeit merchandise.  American courts may not care, but these days Europe matters in the world of commerce.  eBay has to start paying serious attention.

Jonathan Rogers: Is YouTube “Monetizing Piracy”?

Originally posted 2012-06-11 19:57:19. Republished by Blog Post Promoter

I like this from Jonathan Rogers:

On the YouTube blog, the company posted an announcement about a deal struck with many music publishers. Now, when users upload videos with background music that is copyrighted music, instead of begin taken down, if it belongs to certain publishers, an ad will play, and at least some of the revenue sent to that publisher to pay for the royalties that should be paid. . . .

My problem with this is that it only further to cloud the layman YouTube user’s understand of proper copyright music use in videos. Google tried to educate users with a cute video. But you still see people upload full songs with nothing but a picture of the artist then post in the comments “COPYRIGHT NOTICE – I DONT OWN THIS MUSIC NOR CLAIM TO, DONT TAKE THIS DOWN OR SUE ME”. There is a terrible lack of understanding about what copyright protects with most users.

Okay, I don’t love it, I like it.  I like it because I have also written at length about the way copyright enforcement and policy feeds back into the public’s understanding of, and willingness to comply with (or, if you must, “buy into”) intellectual property laws, and why that matters.

In this case, however… “meh.”  I think YouTube had to come to an accommodation with music publishers on this knotty problem.  There’s a limit, especially in a bilateral context such as this one (holding the “publishers” as one “side”), to how much the parties can do to both come to an agreement and make this an effective “teaching moment.”

If you disagree, though, SUE ME!

Susan Crawford: Why I Voted For XXX

Originally posted 2007-03-31 23:09:23. Republished by Blog Post Promoter

Susan Crawford explains, at considerable length, why she voted with the minority at ICANN on the defeated proposal to open up a “xxx” new domain registry for dirty Internet websites:

I continue to be dissatisfied with elements of the proposed xxx contract, including but not limited to the “rapid takedown” provision of Appendix S,[1] which is manifestly designed to placate trademark owners and ignores the many due process concerns that have been expressed about the existing UDRP.

I mean, there are a whole lot of other issues here, and you should read her and other comments on why this vote went this way and what it means for Internet governance, which I for one care little about. I can barely govern myself. But I do find her reference to the influence of Big IP pretty interesting.

My proposal, by the way: I’d already herd the 5% of non-pornographic websites into a ghetto ending in, I don’t know, “.ok.”

Contributory trademark infringement liability: Give it to me short

Secondary Trademark Liability | Bloomberg BNA

Buy me!

Last week LIKELIHOOD OF CONFUSION® featured a guest post by Jane Coleman by way of the upcoming update to her book, Secondary Trademark Infringement.  It addressed the question of how the doctrine of contributory liability’s asserted distinction between service providers and product suppliers deals with trademark licenses.

You can just imagine what a wacky summer it’s been at the Coleman place with an issue like that to banter about!

Good enough. But no less exciting — I’d argue, frankly, that it’s more exciting! — is that at the website of the same name, which formerly offered, online and for free, the core of what became the Bloomberg BNA treatise, and then cruelly withdrew all that learning from the free-o-sphere when the book stuff got serious, there is now some consolation for the educated public:  A new overview of contributory liability in trademark, which, of course, is where most of the secondary liability action is anyway.

Thus you will want to bookmark “A Short History of Contributory Liability Doctrine.”

That’s not to say you shouldn’t still buy the book.  If you don’t, frankly, the joke’s on you.

But, in a pinch, that link will probably do the trick.

Rat on the stand

Originally posted 2007-12-28 15:46:47. Republished by Blog Post Promoter

Marty Schwimmer gets all the best stories!

No safe harbor for this shark.

Originally posted 2013-04-29 12:04:55. Republished by Blog Post Promoter

Matthew David Brozik

One groovy shark.

Generally, one doesn’t expect to find copyright decisions of note in state courts, but every so often one will crop up. One really doesn’t expect to find interesting decisions on state-court motions to dismiss a party’s fourteenth affirmative defense… and yet here we are, reading with great interest the April 23, 2013, decision of the New York State Supreme Court, Appellate Division, First Department in UMG Recordings, Inc. v. Escape Media Group, Inc.

Defendant Escape Media Group owns and runs an online music streaming service called Grooveshark, where users can upload audio files, usually songs, to an archive maintained on Escape’s servers; other users can search the servers and stream the files to computers and other devices. The setup is designed to be on the up-and-up, though; it isn’t 1999 Napster. Escape “has taken some measures to ensure that Grooveshark does not trample on the rights of those who own copyrights in the works stored on its servers,” reads the First Department decision. “For example, it is a party to license agreements with several large-scale owners and licensees of sound recordings. In addition, it requires each user, before he or she uploads a work to Grooveshark servers, to confirm ownership of the recording’s copyright or license, or some other authorization to share it.”

Alas! Read More…