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…

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.

Copyright belongs to the ages

Originally posted 2008-03-23 17:14:32. Republished by Blog Post Promoter

Media Wonk:

No wonder they call Economics the Dismal Science. At the Internet Video Policy Symposium in Washington yesterday (co-sponsored by Content Agenda), a chorus line of academic economists postulated that content owners face a far more difficult challenge than they know in monetizing their content on the Internet, and that the odds that we can build our way out of the current debate over how to manage scarce online capacity are virtually nil.The most enthusiastically glum was Gerry Faulhaber, a professor at the Wharton School of Business at the University of Pennsylvania and the former chief economist for the FCC. According to Faulhaber, copyright is a dead letter.

“Copyright is a very big issue in the legal world today, but in the business world, when you talk to consumers about protecting copyrights, it’s a dead issue,” he said. “It’s gone. If you have a business model based on copyright, forget it.”

Provocative, I suppose, though it sounds like an overstatement, and not necessarily all that logical. The copyright regime has never depended on the opinions of non-stakeholders, merely the ability to penalize them for infringement. The technological / legal dance is far from over. I would say that the Microsoft business model, to give one example of one that is “based on copyright” at least in part, is not exactly in “forget it” mode, and will not be all that fast.

But that’s not to say it looks good for copyright as a linchpin of monopoly-type business models in the future. No, no, no.

Even Hippies Have their Limits

Originally posted 2005-12-04 23:22:11. Republished by Blog Post Promoter

Dead LogoReuters “news” service reports:

Facing a revolt by its famously faithful fans, The Grateful Dead backed away on Thursday from a move to block “Deadheads” from downloading the jam band’s concert recordings for free.

The San Francisco Bay-based band had asked an independently run Web site to stop making thousands of the group’s recordings available for free download.

Yeah, hippies have their limits, but when do we hear about them?

[W]ith the 1995 death of lead singer and guitarist Jerry Garcia, band members no longer keep up such an active tour schedule, making the Internet an important source of revenue.

Oh, that’s when — when the gelt is on the table.  How can the Grateful Dead band members possibly not have “enough” money by now?   Well, rock stars only tell everyone else how much dirty lucre is too much — they have no moral limits, themselves, on either earning it or spending it.  But we digress:

But the founder and director of the Web site (, Brewster Kahle, said in an online posting on Thursday that bootleg audience copies of the band’s concerts had been restored for free downloading.

Yes, hippies have their limits. Thing is their spawn don’t. They never do:

“It appears doing the right things for the fans has given way to greed,” the fan petition said.

Bass player Phil Lesh posted an apologetic message on his own Web site saying he did not know the band had asked operators of the site to take down the recordings.

“I do feel that the music is the Grateful Dead’s legacy and I hope that one way or another all of it is available for those who want it,” Lesh wrote.

Grateful Dead spokesman Dennis McNally said a major concern for the band was that trading music over the Internet did not create the same sense of community as trading tapes in person.

Heh-heh. Yeah, that’s it. Community, baby. Don’t bogart that community.

Owning ratings

Originally posted 2009-07-16 16:13:09. Republished by Blog Post Promoter

Eric Goldman:

A Colorado judge has reached the remarkable conclusion that a hospital publicizing its star ratings and other recognition from a third party rating service in its marketing material might be committing copyright and trademark infringement. This is a little like saying that it could be copyright and trademark infringement for a law school to include its US News rankings in its marketing material or for a book publisher to issue a press release announcing its ranking on the New York Times bestseller list. CRAZY.

Sounds that way.  But it was a federal judge who reached that conclusion, right?  So how crazy could it be?

Anyway, next thing you know someone will be arguing that you can own batting averages or something!

Via Marty Schwimmer’s new @TrademarkBlog feed on Twitter.

Strange trademark things going on — or perhaps nothing going on at all — with Charriol

I don’t know much about fine jewelry.  But a person looking at retail jewelry online during this, the season of discounting, pointed out to me last night that there seemed to be something very strange going on concerning nomenclature for jewelry pieces being offered on various store websites.  It seemed to have to do with pieces made by Charriol. Or was it, rather, Alor?  Or, A’lor?

The Trademark Blog:  "Mandatory Zut Alors Pun Here"

The Trademark Blog: “Mandatory Zut Alors Pun Here”

Being the kind of people we were, we assumed it “must be some trademark thingy,” and I, for one called it a night.

The jewelry-window-shopping person, however, was intrigued, and journeyed to the Charriol website, and found a URL that went  And this is what it said:

Dear Partners,

Many of our trusted CHARRIOL dealers have recently experienced a marketing campaign by CHARRIOL’s longtime licensee/distributor, A’lor International Ltd., aimed at persuading you that CHARRIOL’s internationally famous cable design and products were returning to their original ‘A’lor roots’ or that CHARRIOL was changing its name to ALOR.  Some of you have been informed that ALOR cable jewelry was replacing CHARRIOL cable jewelry, and that CHARRIOL was either exiting the market or being ‘rebranded’ as ALOR.  Others have been persuaded to abandon their CHARRIOL displays or to replace well-displayed CHARRIOL jewelry with ALOR collections.

CHARRIOL and A’lor have tested their recent disputes in court and CHARRIOL maintains that A’lor, as the licensee of CHARRIOL, has a contractual obligation not to distribute its current lines of identical jewelry to CHARRIOL jewelry under the ALOR name.  And a federal court has recently agreed, because on April 10, 2014, the United States District Court for the Southern District of California ruled that A’lor is barred from infringing CHARRIOL cable trademarks by selling ALOR jewelry that uses such cable.  A’lor is similarly barred from using CHARRIOL trademarks, including cable, distributing or selling products with the cable design, advertising that A’lor was or is being ‘rebranded’ or merged with CHARRIOL, and other similar commercial activities which have caused great confusion in the jewelry and luxury goods marketplace.

The federal court on April 10 issued an injunction against A’lor which provides specifically:

Read More…

War Is Peace; Freedom is Slavery; Ignorance is Strength

Originally posted 2007-03-28 19:08:24. Republished by Blog Post Promoter

And free speech is a form of negotiable intellectual property, right?

Maybe I can give up the blog. There is no percentage in clever commentary when the claimants provide the self-parody.  Credit to Instapundit.