Twick or tweet?

... and there it went.

Ooooohhh!!!!!

No, it’s not quite October 31st — that scary, creepy night when you’re so afraid of what’s out there that, if you’re LIKELIHOOD OF CONFUSION®, you close all the blinds …  lock the door…  and stay out of the house and somewhere absolutely else until at least 10:00 PM.

But yes, it is time — well past time, in fact — for that semi-occasional roundup of recent topical tweets via the official LIKELIHOOD OF CONFUSION® Twitter account, @likely2confuse.  Which, if you’re on Twitter but you’re not following, you’re simply just not serious about this.

Oh, and also:  It is time for candy!

OK, yeah; it’s always time for candy.  So let’s go to the tweets:

Read More…

Frivolous copyright claims don’t automatically merit fee awards

Originally posted 2006-06-19 12:49:37. Republished by Blog Post Promoter

The New York Law Journal reports that my old friend Southern District Judge Denise Cote has turned down Fox Entertainment Group’s attempt to recoup almost $280,000 in attorney’s fees (pursuant to the copyright statute) it spent staving off a copyright suit that Fox had demonstrated was frivolous (it involved an allegation that a Fox TV program was a “ripoff” of another program). Judge Cote has an interesting take on the issue:

Although both sides agreed that the U.S. action should be dismissed with prejudice, Fox moved for an award of attorney’s fees, arguing that Ninox sued even though it knew that “The Complex: Malibu” was not substantially similar to “Dream House.”

“A compensatory fee award in these circumstances also encourages the defense of future meritless actions,” attorneys for Fox wrote in a letter to Judge Cote. “Like the gambler who raises the stakes in poker while holding no face cards, a litigant who loses this type of bet should bear the expenses incurred by the adversary in calling the bluff.”

Most IP litigators, especially those of us, ahem, “involved” in the defense side, recognize those cases that, once their merits, or outcome, are resolved, still chug along, powered solely by the gleam in someone’s eyes (woe to the ‘s attorney who puts it there!) that there could be an attorney’s fee award at the end of the rainbow. Judge Cote isn’t going to encourage that.

I’m not sure I get the next part, however. Judge Cote also writes,

“[A]lthough Ninox’s copyright claim is frivolous under the prevailing law, because this litigation would have applied copyright principles to a relatively new field of intellectual property, format licensing, as a matter of discretion, the Court will refrain from awarding attorney’s fees.”

Which is odd, because that sounds like whatever finding of frivolousness was made — the Court calls the claims “frivolous and objectively unreasonable” — is pretty much being taken back and defrivolized by that last quoted bit. What is it, exactly, that judges want?

UPDATE: The decision is here. A chilling excerpt from the lawyering point of view: Read More…

LateralLink.com: A new lateral-movement option for associate attorneys

Originally posted 2007-07-27 11:25:53. Republished by Blog Post Promoter

Lateral Link

This is an advertisement, essentially. But when have you seen one of those here before, besides stuff that pops up from time to time on the right-side bar? That should intrigue you sufficiently to read on. Well, that and my inimitable style and panache. Also at the end there will be chocolate chip cookies.

I’ve recently joined (updated: resigned, effective July 14, 2008) the advisory board of a new service I am shamelessly plugging here called LateralLink. It’s a frankly “exclusive” self-recruiting option for attorneys who have “top credentials” (not so top enough that I wouldn’t qualify but for my long teeth, but still pretty top) founded by three former lawyers (top dog types themselves) who believe, as I do, that the cold-calling model utilized by recruiters who are mainly interested in a fee doesn’t really do associates or law firms such a big favor. Read More…

Sarah Palin trademark thing

Originally posted 2011-02-09 12:06:19. Republished by Blog Post Promoter

I try not to blog about the trademark stories that are all over the place.  There are a couple of reasons for this.  One is that I am a snob.  I always knew that if “everyone was going” to see some movie, I was not interested in going unless some other reason could balance out the inherent flaw of popularity.  This is not a particularly meritorious quality of mine, but this is just between us.

Even less meritorious, when you have one of these popular trademark stories — like the Palin trademark situation — I figure if everyone is all over a story, well, it’s covered, right?  Let me find the story everyone else isn’t writing about.  Plus, why risk blowing it?  Lots of people know this stuff better than I do.  (UPDATE:  Here too — excellent comprehensive treatment.)

And then I take a look at what everybody’s saying because people are poking me about it and I realize maybe they’re missing something, perhaps.   That happened with the Politico trademark thing.

So here everyone’s talking about Sarah Palin trying to “trademark her name.” Of course regular readers already know that “trademark” is not a verb and that what Sarah Palin is trying to do is register her name as a trademark.  That’s not even low-hanging fruit any more around here.

My main take on this, looking at the application and the reporting, is that the law firm that filed the application should be very embarrassed, and certainly is.  As everyone knows by now, the application — here’s a PDF of the Office Action — was not properly authorized (“signed”) by the applicant, Governor Palin.

That is a tip-off that a lawyer who doesn’t really do trademark work was doing “trademark” “work.”

And indeed, running down the bio of the attorney of record, I see an accomplished generalist / litigator who is not a trademark lawyer — but who still exercised poor enough judgment not only to handle this himself with little more insight into the process than a well-focused layman, but with the full knowledge that he would subject himself to this level of scrutiny if anything went wrong.  Or even if it went right.  That same office has not continued to cover itself with glory as of this “Notation to File” only yesterday.

Trademark law does not get respect from the judges who “wing it” regarding other people’s businesses, from journalists and even law bloggers who by their misuse of the word “trademark” demonstrate a fundamental misunderstanding of American trademark law (by which trademarks are earned by use, not a process called “trademarking”), from outfits such as Legal Zoom that have non-lawyers file trademark applications for fees or from the lawyers who think of it as such a meatball area of practice that “anyone can do it.”

It’s all fun until someone puts out an eye, you know?

Caveat Animator (guest post by Brozik)

[A woman] has filed a lawsuit claiming that Disney’s animated film about [a princess, her magical sister, and their talking snowman] took elements from her 2010 autobiography…. Court documents [include] a list of 18 “Frozen” elements that [the woman] claims were plagiarized directly from her book. These include both stories having two sisters, a village, betrayal, open doors/gates, and a “moon setting.” – CNN Money

MDB

(Actually still licensed.)

I’m afraid that this woman is going to lose her lawsuit. I say this as not just an attorney once admitted to practice law in two states and before four federal district courts and the U.S. Supreme Court, but also someone who has sued Disney five times for the same thing, to wit: blatant mining of my personal experiences for material to use in their wildly successful movies without asking my permission or compensating me in any way. To date, I have yet to win a lawsuit, or to have my professional license reinstated, but as long as Disney keeps using my life as inspiration for its animation, I will keep demanding satisfaction—and injunctive relief—in court.

It’s partially my own fault, I’ve been told. In or about 1988, when I finished writing Book One of my memoirs—A Tearjerking Volume of Startling Brilliance—I mailed a photocopy of the unpublished manuscript to Disney’s then-president Jeffrey Katzenberg, although I confess that I don’t remember why. But imagine my surprise when I first saw The Little Mermaid in 1989. On the very first page of my work, I mention that I am a Pisces (the Fish), that for religious reasons I don’t eat crabs, and that I like to sing in the shower (that is, under water)!

It was immediately obvious to me that I was singlehandedly responsible for the start of what would become known as the “Disney Renaissance.” According to one source, The Little Mermaid had total international box office earnings of $211 million, of which I got not a penny. Instead, I had to shell out some of my own money to seek justice, which I also did not get. Read More…

Turn the other one? Or liberty? Or death?

Originally posted 2009-04-23 11:46:26. Republished by Blog Post Promoter

“Trademark” is not a verb.

Right — we will resolve these all here and now.  Key issues.  Fish or cut bait.  Or we most assuredly will all hang separately!

The Daily Mail reports, ” Cheeky team applies to use ‘Obama’ as a European trademark“:

A group of enterprising Spaniards is set to win the European trademark rights to a word with instant global recognition – OBAMA.

EU trademark rules once stopped opportunists turning the names of heads of state and other prominent figures and celebrities into branding gold.

But now, unless the use of an instantly identifiable name is deemed to be an act of deception, little else prevents the first-comer grabbing the rights.

Trademark is Not a Verb, Mr. Hart

Trademark is Not a Verb, Mr. Hart

This item stands for two key points which we all must know; nay, knit unto our very hearts.  Permit me some down-the-middle pedantry here.

1.  Trademark is NOT a verb.  Why do I refuse to give up my hopelessly-outnumbered position against the use of the word “trademark” as a verb?  This usage is everywhere, even on the INTA discussion list.  The reason is not only because I am a reactionary.  (Not only.)  It is because the whole point of U.S. trademark doctrine — that trademark rights are, and by the grace of God and Senator Lanham ought to be, earned by use.  First comes secondary meaning, then comes “rights.”

As I have said before, just as you cannot be “bar mitzvahed,” you cannot “trademark” something.  The “Trademarking” is not “done” via the filing of some paper or granting of a registration.  And this fact is obscured by the awful neologism “trademarked,” which suggests you can … well, it suggests you can do exactly what we’re reading this “cheeky team” did in the Daily Mail piece, and which a decent respect to the opinions of mankind requires that we all acknowledge they should not be able to ought to be do.  Ing.

Trademark is Not a Verb

Trademark is Not a Verb, or Give me Death!

2.  Speaking of self-evident truths, we solemnly publish and declare that even it had not become necessary for one people — Amur’ca — to dissolve the political bands which had connected it to another — England, of course — the injury imposed on the American language by the latter by the jarring, ugly and sick-making term “cheeky” as in the Daily Mail headline would make it necessary now.

And if I have to live with “trademarked” to never again see “cheeky,” may the Supreme Judge of the world, in recognition of the rectitude of my intentions, so grant me.

Thus endeth the lesson. Trademark is not a verb.

As to “European trademark” — “sheesh!

Almost Kind of a Replica

Originally posted 2005-09-10 22:23:12. Republished by Blog Post Promoter

I get so much spam that I couldn’t even dream of not using a service to filter it. I use Spam Arrest, which is quite good and always getting better. Most of the spam I get is so bad, so — really — disgusting, that I am reluctant to scan the “unverified” emails, whose titles alone are overwhelmingly obscene. But, alas, sometimes it’s necessary.

Here’s a keeper. Like you, a large percentage of the spam I get is for “replica watches.” Counterfeits, that is. I used to do a lot of work suing these guys, but I suppose that irony is lost on the bots that sound out these emails.

But this one is a keeper. The reference line reads: Re: Injoy [sic] your Cartier that looks 98% REAL!

Looks 98% real! Interesting defense. “Judge, how can they be counterfeit? We stopped at 98% verisimilitude just to make sure no one was confused!”

Famous marks doctrine dunked again

Originally posted 2008-03-03 11:13:08. Republished by Blog Post Promoter

Las Vegas Trademark Attorney reports that the Second Circuit has taken the “advice” of the New York Court of Appeals and rendered a final decision in the BUKHARA “famous marks doctrine” case.  Writing about the original Second Circuit opinion from last year, he says:

The court even acknowledged that its decision to reject the “famous marks” doctrine conflicts with the Ninth Circuit’s decision in Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d 1088, (9th Cir. 2004) which recognized the “famous marks” doctrine with respect to federal trademark rights, and goes against famed trademark treatise author J. Thomas McCarthy, who has apparently called the decision “embarrassing” (see write-up by Seattle Trademark Lawyer and contrasting write-up by Likelihood of Confusion). This circuit conflict alone leads some (myself included) to believe that a grant of certiorari from the U.S. Supreme Court is in the future.

Yeah, contrasting! It would be great if the Supremes would take this up.

Likelihood of enthusiasm

Originally posted 2008-12-09 17:12:21. Republished by Blog Post Promoter

Here’s a notice regarding our lust for life from C.C. Holland at Law.com:

The litmus test for whether you should start a blog boils down to passion, says Kevin O’Keefe, CEO of professional blog service LexBlog and a blogger himself. “I think every attorney should consider blogging, [but] if you don’t have a passion for the subject, that shines through.”

Your enthusiasm might align with your area of practice or be completely tangential. For example, Ronald D. Coleman, a commercial litigator with Goetz Fitzpatrick who focuses on copyright, trademark and unfair competition, blogs about those topics on Likelihood of Confusion.

Nice to be mentioned in connection with enthusiasm.  A man becomes preeminent, he’s expected to have enthusiasms.

Preeminent man

Public Citizen pushes IP overreach back

Originally posted 2007-05-25 00:29:52. Republished by Blog Post Promoter

Greg Beck of Public Citizen writes in with litigation news (I’ve added the links):

Public Citizen filed a motion to dismiss a lawsuit in Florida by two affiliated informercial companies that are attempting to shut down negative reviews of their day trading software on the websites InfomercialRatings.com and InfomercialScams.com. The companies claimed that running a website where consumers can post reviews of their products constitutes trademark infringement and a variety of other wrongs, and sought triple damages and attorneys’ fees against the site’s owner. In its motion to dismiss, Public Citizen argues that the Arizona-based website operator is not subject to jurisdiction in Florida, that the websites are protected by the First Amendment, that posting reviews is not trademark infringement, and that the Communications Decency Act protects a website owner from liability for what users post on the site.

Well, yeah.  Especially these two:  “the websites are protected by the First Amendment, [and] posting reviews is not trademark infringement.”  Motion to dismiss?  I hope there’s a motion for sanctions in the pipeline.
It’s not infrequently possible to blind judges to what’s really going on by flashing a bunch of trademark registrations in front of them, usually in a big fat Exhibit A to a complaint.  Small businesses can’t keep up with the cost of defending their litigation activities, and are getting hammered by IP overreach.  This is one right-wing nut saying, thank God for Public Citizen on this issue.

We make those?

Originally posted 2007-05-17 10:52:29. Republished by Blog Post Promoter

Manufacturing

When is too much quality control over licensees a bad thing? When a trademark licensor gets sued for a defective product with its trademark on it. The trick, according to this article by two Chadbourne attorneys, is to exercise enough to quality control to appropriately manage your goodwill, without having liability imputed to you because of your supposed hands-on involvement.

Reflecting Fool

Originally posted 2009-04-03 09:54:09. Republished by Blog Post Promoter

George M. Wallace, better known to law blog readers by virtue of his Declarations and Exclusions blog, moons us all and has published an “extra” April Fool’s Blawg Review Appendix on the first of the month.

Extra, meaning there was another one already, right?  Right — the moon, after all, only reflects the greater glory of that brighter star whose own anniversary is nearly upon us.

Shine on!