The odd inversion of the trademark “rights in gross” conundrum

Sunset, Court Plaza

A courthouse

Is reselling domain names a violation of the UDRP? At his blog, Gerald “Mr. UDRP” Levine lays out the question, and then answers it plain and simple (emphasis mine):

On the question of reselling domain names on the secondary market, a dissenting panelist in a 2005 case observed that “[t]here is no doubt Respondent is in the business of being a reseller of domain names that consist of common English words” and then suggested that the “fundamental question before the Panel is whether or not such a business should be allowed under the UDRP.” He concluded that such a business should not be allowed: “I would … find Respondent has engaged in a pattern of preventative domain name registration through its prior conduct of registering domain names that are identical to third-party marks.” Shoe Mart Factory Outlet, Inc. v. DomainHouse.com, Inc. c/o Domain Administrator, FA0504000 462916 (Nat. Arb. Forum June 10, 2005).

The same panelist (again in dissent) in Randall E. Kay v. Sebastian Kleveros / Comcept – Internet Ventures, FA1602001659119 (Forum March 18, 2016) (<nvrt.com>) states

Reselling domain names does not constitute a bona fide offering of goods or services for the purposes of the UDRP. To allow such an absurd construction would eviscerate the UDRP because every respondent could demonstrate rights by simply offering the relevant domain name for sale to the general public at the time of registration. The UDRP could be easily circumvented.

This exaggerates the consequences beyond recognition; buying and selling domain names is neither absurd nor would it eviscerate the UDRP. In fact, it’s legal.

And now you want to read Gerry’s post where he explains his conclusion.  My observation is just this:   Read More…

Cease-and-Desist letters as self-executing copyright bombs

Originally posted 2007-10-13 23:50:07. Republished by Blog Post Promoter

Techdirt reports (thanks, Pennywit!) on a law firm that tells recipients of its questionable “C&D” letters that if they dare post them, they’ll be liable for copyright infringement. This is the law firm, and this is the letter. And this is the response. (And here’s the definitive treatment, via the Citizen Media Law Project).

A very good lawyer taught me, as a young pup, that you should never put anything on your legal stationery you’re not prepared to use, or see the other side use, as an exhibit to a motion — i.e., ask yourself, “What will the judge think when he reads this?” Now the question is a lot broader, as is the advice: Don’t write a so-called “lawyer’s letter” that you’re not prepared for the whole world to see.

Some more homey advice: Don’t make threats you can’t back up. And don’t try making a bomb just to have it blow up in your face.

UPDATE:  The other shoe drops.  Are you moved?  Pennywit writes:  “I’m actually quite surprised at the intense personal tone of parts of it; wouldn’t even a minimum amount of professionalism mandate a certain detachment?”

Copywrong

Originally posted 2013-12-03 10:39:49. Republished by Blog Post Promoter

David Post discusses Judge Richard Posner’s musings on the pretty hopeless prospects of the newspaper biz:

[I]f “the newspaper” as a business model fails (because of competition from the free content available on the Net), who will invest the resources required for adequate news-gathering services in the first place? . . .

[Posner’s] proposal for reform, however, goes into the “Cure Worse Than Disease” file:

Expanding copyright law to bar online access to copyrighted materials without the copyright holder’s consent, or to bar linking to or paraphrasing copyrighted materials without the copyright holder’s consent, might be necessary to keep free riding on content financed by online newspapers from so impairing the incentive to create costly news-gathering operations that news services like Reuters and the Associated Press would become the only professional, nongovernmental sources of news and opinion.

It’s hard for me to summarize why this is so terrible an idea.

But — like online copyright infringement — impossible to resist the temptation to try!

Confusion ascendant

Originally posted 2015-07-25 23:11:05. Republished by Blog Post Promoter

  1. Jewish tradition teaches that on Tisha B’Av (the Ninth day of the month of Av) five national calamities occurred:

  1. During the time of Moses, Jews in the desert accepted the slanderous report of the ten spies, and the decree was issued by God forbidding them from entering the Land of Israel. (1312 BCE – traditional Jewish dating)
  2. The First Temple was destroyed by the Babylonians, led by Nebuchadnezzar. 100,000 Jews were slaughtered and millions more exiled. (586 BCE)
  3. The Second Temple was destroyed by the Romans, led by Titus. Traditional sourcest teach that two million Jews died, and another one million were exiled. (70 CE)

Read More…

Jews for Jesus* v. free speech: update

Originally posted 2012-12-04 12:56:40. Republished by Blog Post Promoter

The troublesome “Jews for Jesus” blog is still around, after some people had the impression that perhaps Jews for Jesus, Inc. had been succesful in shutting it down. The J4J Whistleblower is still feeling kind of conspiratorial, writing:

Take your time to read through my previous blogs and the points raised. In one of my earlier blogs I pointed out that it takes time to sort through everything to realize what is going on. My previous post to this one looks at the actual text of Jews for Jesus’ lawsuit and points out what they really want. You’ll find this is in line with Susan Perlman’s comment that Jews for Jesus believes it has a right to how their organization will be represented on the internet. That explains why they are only using this blog as a stepping stone to have Google remove any blog with the name “jewsforjesus” in it. An astute observer on a legal blog pointed out that the likely target is www.exjewsforjesus.blogspot.com.

Harrumph. I couldn’t find that astute observer — Whistleblower is quite stingy with the hyperlinks for a blogger — but if that were true, it would be another blow inflicted on free speech by Jews for Jesus with the help of the courts. Quite ironic considering that this group has actually extended free speech protection in a number of decisions, including one in the U.S. Supreme Court, where its own speech was threatened.

But that sort of irony is already old and tired, isn’t it? It must be, because this story is being fairly well ignored — as the Jews for Jesus v. Brodsky case was — by the usual suspects in the free speech department whose ox, for some reason, doesn’t ever appear to be gored when Jews for Jesus is doing the goring. In 1998, Steve Brodsky’s requests for amicus submissions in the Third Circuit were blown off by both the New Jersey ACLU and the Electronic Freedom Foundation, without any real explanation, for example. Here too the EFF has been silent about this case, as have been the “copyfighters” at Corante.com. I don’t know why now, as I didn’t know why, then. Maybe if Steve Brodsky or the Whistleblower published pornography or scandalous charactures of Dick Cheney or were uploading music files the self-appointed guardians of free speech would have something to say about what’s going on here.

Yes, the old irony is old news. I guess it’s just as well, anyway, because in the area of free speech, now we have the all new irony!

Or is irony just not the right word for plain old cynicism? Well… don’t ask me!

*(Sour grapes warning! But if you can stand the taste, come on in; the dishing’s fine!)

UPDATE: Thanks to Dean for the link. I think that one may criticize my analysis above by suggesting that because of my own personal interest in this case, I am also guilty of the “whose ox is being gored?” syndrome. This may be true, but then I do not claim a comprehensive bailiwick, as the would-be guardians of free speech on the Internet do. I am just one lawyer who has had a few clients with interest in these matters. But I will acknowledge that the experience of representing Steve Brodsky against Jews for Jesus, Inc. and The National Debate against the New York Times has affected my own views, which formerly were biased in favor of trademark and copyright holders — that, and getting beaten up on daily basis for several months on the CYBERIA-L list, largely at the hands of Mike Godwin! So you know — we grow, we learn…

Zediva: The world’s longest extension cord

Originally posted 2012-04-09 16:28:21. Republished by Blog Post Promoter

Matthew David Brozik

Guest blogger Matthew David Brozik

The AP reports that a small California (of course) company thinks it has a brilliant idea, a way to out-Netflix Netflix: Zediva Inc. is going to make available for viewing on subscribers’ Internet devices new movies as soon as they are available on DVD. This is a big deal, because Netflix, for instance, does not do this. Netflix will begin sending physical DVDs of a new movie as soon as the movie comes out on DVD… but the instant viewing option comes later, largely because movie studios want it that way, believing that the ability of consumers to view films instantly at home cuts into DVD sales.

Zediva’s doing something right. But is it wrong?

So just how will Zediva be able to transmit, say, “Yogi Bear” on its March 22, 2012, DVD release date?  Here’s how: Zediva will buy a copy of Yogi Bear on DVD, then play it on a DVD player at its Silicon Valley (of course) headquarters, and send the feed to your home. It’s the equivalent of running a very long cable from Zediva’s DVD player to your television set. Right? Movie studios and lawyers who care about these things say no, it is not. While Zediva asserts that what it is doing (or planning to do imminently) is the equivalent of what Netflix does when it mails out DVDs to subscribers (a scheme permitted by the so-called “first-sale doctrine,” which has allowed libraries to lend books to patrons for hundreds of years), several commentators have already countered that it is more akin to Netflix’s other service, that of streaming.  And a streaming arrangement requires licensing, because streaming isn’t lending a physical copy.  (Some commentators are arguing that streaming somehow inherently infringes on a copyright holder’s exclusive public performance right; I don’t agree.)

I’m going to take a potentially unpopular position here (even though I am by no means required to): I think Zediva’s idea is legal, if not particularly smart. The potential for a system that might well be legitimate to devolve into something entirely outside the law, however, is just too great.  That is, for Zediva to do what it says it will, it must own a separate physical copy of a DVD of a given movie for each subscriber who wants to watch it (at the same time). That means if 100 different subscribers want to watch “Yogi Bear” at the same time, in different locations, then Zediva needs to put 100 different DVDs into 100 different DVD players.  Zediva simply may not cut corners and, for instance, rip the content of a DVD and then send a subscriber or two or a hundred the digital information… just until it can run out and pick up some extra copies of Yogi Bear.  And, of course, Zediva may not rip the content of one DVD and then burn the content onto another hundred DVDs to be in compliance with its own (arguably legal) model. Is Zediva smarter than the average start-up? Maybe. If Zediva keeps its nose clean, it just might have something here. Eh, Boo Boo?

UPDATE:  Zediva:  The lawsuit.

UPDATE II:  Zediva loses; is lost.  But you know this ain’t over!

Thank you for your loyalty

I like opinions in trademark infringement cases that don’t just gloss over LIKELIHOOD OF CONFUSION issues, but I have to admit I wasn’t ready for what awaited me when, after seeing the tweet reproduced below from Bill Donahue, I undertook to dig into yesterday’s ruling by the Southern District of New York in Citigroup, Inc. v. AT&T Services, et al.)

So, what gave? Or didn’t?

First, the basics.  From the opinion:

This is a trademark action concerning the phrases “thank you” and “thanks.” Citigroup, a leading financial services company, has offered a customer loyalty, reward, and redemption program using the term “THANKYOU” since 2004. AT&T, a telecommunications giant, began implementing a customer loyalty program using the term “AT&T THANKS” this summer, in 2016. Citigroup initiated this action seeking both damages and an injunction prohibiting AT&T’s continued use of this name, and has moved for a preliminary injunction that would prohibit that use during the pendency of this litigation.

Citi_Marketing_Page_Center_Graphic_2016._CB297805081_These are your alleged trademarks, then:  THANK YOU and THANKS.

Again:  These corporate behemoths are litigating over the use of the words, respectively, “thank you” and “thanks” for — what now?

Competing customer loyalty programs.

Customer LOYALTY programs.  One is called THANK YOU.

One is called THANKS.

What I am telling you is the following information, in case my powers of expression have, perhaps, failed me:  Both parties here claim protectible trademark rights in the use of the words, respectively (maybe), “Thank you” and “Thanks” for customer loyalty programs.

Now, Bill’s take, as he said in the following tweet, is that the money quote from the opinion is this:

On this record, the Court cannot conclude that Citigroup has carried its burden. For the reasons discussed above, there has not been an adequate showing of irreparable harm from the continued existence of AT&T THANKS while this litigation continues. Against that lack of a showing, AT&T has advanced concrete  evidence that requiring it to halt use of the “AT&T THANKS” name would be an expensive and significant disruption.

That is accurate.  How the court gets there, however, is quite interesting. Read More…

My assorted past

What, you didn’t know?

You’ve got to check that out!

Employee’s Own Electronic Customer Lists “Converted”

Originally posted 2013-03-05 17:36:15. Republished by Blog Post Promoter

Originally published August 2, 2005.

Another interesting New York decision reported by the (sub only) New York Law Journal ), an an article called “The Common Law Concept Applied to Computers.”  [Update:  The link to the New York Law Journal is long gone, but the case is Shmueli v. Corcoran Group, 9 Misc.3d 589, 802 N.Y.S.2d 871 (Sup. Ct. N.Y. Co.), aff’d, 29 AD 3d 309 (App. Div. 1st Dept. 2006).]

A Manhattan judge has relied on analogy to determine that the common-law concept of conversion — the wrongful retention of another person’s physical property — applies to electronic records.

Supreme Court Justice Herman Cahn held that a terminated real estate agent who was prevented from accessing her work computer to obtain an electronic list she kept has a conversion cause of action against her former employer, the Corcoran Group.

Usually the former employer is suing the employee for theft of trade secrets. Here, presumably . . .  the employee’s list was her own property, perhaps brought from a previous professional existence, and not that of her employer. The fact that it was kept on her employer’s computer . . . did not automatically make it the employer’s property. We will want to read the full decision, but this is a very interesting case for computer law afficionados.

One last thought from Justice Cahn:

“The question is,” according to Justice Cahn’s decision, “does the common law tort of conversion become an extinct vestige of the past as to documents maintained on a computer, merely because traditional definitions of documents evolve over time to the point where wood pulp is no longer the only required medium upon which to record data?”

Their lack of wood pulp notwithstanding, Ms. Shmueli’s electronic records still comprised property, Justice Cahn ruled.

Best of 2009: Char’ed, I’m sure

Originally posted 2015-01-28 12:07:38. Republished by Blog Post Promoter

First posted December 8, 2009. 
black-bear-coffee-insidesmall-123005
Poor Starbucks.  So much trademark trouble they have!  Other trouble, too.  And now the people who gave you five-dollar coffee in a paper cup had lost another one — one they thought they had won, namely the Starbucks v. Charbucks case (decision here, posted by Marty; the real name of the case is Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.) involving trademark infringement and its genetic freak of a cousin: trademark dilution.

In fact, Starbucks lost this case a lot.  They lost and lost and lost.

Then, they won.  Starbucks won!

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

At least, they won a shot at winning.  Which, given their litigation luck these days, must be like a double espresso administered intravenously, juridically speaking.  And, brand-wise.

That Law.com piece by Mark Hamblett in the last link is a good summary of the docket-slaloming.  For the law lesson, let’s just skip to smart person Rebecca Tushnet, who may or may not be fueled by caffeine when she blogs but all the same has done all the heavy lifting here:

As we all know, Starbucks is big and famous. Wolfe’s does business as Black Bear, a small business that sells coffee via mail order, the internet, and a limited number of New England supermarkets. In 1997, Black Bear began selling a dark roasted blend, Charbucks Blend, and later Mister Charbucks.

Read More…