Truvia and friends

Truvia and Friends

Is there really something new to add on the topic of private labels and confusion?  After all, I’ve explored various aspects of this phenomenon, through:

Same thing, too, in the Reese’s Peanut Butter Cups quasi-post (you’ll see what I mean), which didn’t involve private labels as such but rather, in a dilution context, the even broader issue as in the mayo post:  The concept of “official mayonnaise colors” or “official peanut butter cup” — or, in that case, “official ‘Reese’s'” colors, the bittersweet reward collected by the category originator (Reese’s) or overwhelmingly dominant brand (Hellman’s).

You get my point.

What, then, is my point now?  Well, look at the picture I took today at my friendly neighborhood Stop and Shop.  What do you see?   Read More…

If infringement falls in a forest….

Framing the Marshall courthouseCan there be “infringement” of a trademark without confusion? As she is so apt to do, and to do so well, Pamela Chestek asks that question in this post, entitled Infringement Without Confusion?, which is about something completely different from what I thought it was going to be about, because I know that, in New York at least, the answer can be yes. That’s not the question Pamela is asking.   But this is a great opportunity, and given the name of this blog and what I say up in the right-hand-corner there, a good place, to unpack a few things about this thing, and address what I thought she meant before proceeding to what she meant, as well as to what’s going on in the comments to her post.   The … confusion on my part is not, in fact, irrelevant. What was I thinking of when I read the question?  New York’s famous, or perhaps infamous, state-law tort of unfair competition by “wrongful misappropriation,” of course.  To wit: In New York, the “essence of unfair competition . . . is the bad faith misappropriation of  the labors and expenditures of another, likely to cause confusion or to deceive purchasers as to the origin of the goods.” Nabisco, Inc. v. PF Brands, Inc., 50 F. Supp. 2d 188, 212 (S.D.N.Y. 1999). To assert an unfair competition claim, a plaintiff must demonstrate (1) a likelihood of confusion, and (2) the defendant’s bad faith. Kraft Gen. Foods, Inc. v. Allied Old English, Inc., 831 F. Supp. 123, 135 (S.D.N.Y. 1993). Unlike a claim for trademark infringement, proof of secondary meaning ,or, indeed, of a protectable mark at all) is not required. Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339, 364 (S.D.N.Y. 1998). Ok, very nice.  But is “infringement without confusion” the same thing as “confusion without secondary meaning”?   Well, how would it be different?  Once you’re dealing with logical dead-ends, after all, they start to look quite similar, and end up in more or less the same place.blivet the devils tuning fork After all, the premise of confusion is a baseline of association — in trademark law, we call that secondary meaning, or… a protectable mark.   Same place.   Indeed, pointier heads than that of LIKELIHOOD OF CONFUSION® have long pondered what the heck it means to have a likelihood of confusion without secondary meaning, or without a protectable mark.   As one academic treatment of this odd creature put it,

Some legal theories, like the proverbial vampire, refuse to die. The common law tort of misappropriation is one such legal theory, and the recent Restatement (Third) of Unfair Competition (Restatement) may finally lead to the demise of this outdated cause of action.

Regrettably, the “recent” referred to in that quote was 1993.   Read More…

Indirect Liability and Grokster

Originally posted 2012-10-29 11:41:37. Republished by Blog Post Promoter

This post on the Marginal Revolution blog (where this blog once advertised) links to (or tries to link to) an amicus brief filed by… a bunch of guys — namely Kenneth J. Arrow, Ian Ayres, Gary Becker, William M. Landes, Steven Levitt, Douglas Lichtman, Kevin Murphy, Randal Picker, Andrew Rosenfield, and Steven Shavell. Their self-described interest as amici?

Amici are professors and scholars who teach and write on economic issues and, in particular, on the economics of innovation, the economics of intellectual property, and the economics of both deterrence and enforcement. . . . Amici file solely as individuals and not on behalf of the institutions with which they are affiliated. Amici represent neither party in this action, and write solely to offer an economic perspective on the important social issues at stake in this dispute.

Nice work if you can get it. All but two of them are University of Chicago (i.e., “law and economics”) professors; the other two are Ian Ayres of Yale (formerly a Northwestern prof, which is why his name jumped out at me) and the other is from Stanford Law.

So what do they say? Their focus in the brief is on the usefulness of the doctrine of indirect or secondary liability in intellectual property. That’s a topic of great interest to us around here, but we have always focused on trademark, where the issues can be quite different. But regarding copyright, here is the conception of the problem by these learned men (yes, all men), per their own brief:

In this dispute, the Court is being asked to clarify the conditions under which those conventional remedies should be supplemented by an additional cause of action: liability that would hold responsible a firm whose product or service facilitates copyright infringement. The argument in favor of this sort of “indirect” liability is that in certain circumstances it will be the only practical way to maintain the efficacy of copyright markets. That is, direct liability is so costly in certain situations that, without indirect liability, authors would in those settings no longer have a meaningful right to prevent unauthorized use of their work. The argument against indirect liability is that, because the products and services at issue here have both legal and illegal uses, any legal intervention must be cautious or else risk inadvertently interfering unreasonably with legitimate activity.

And here is their conclusion, based (Cliff’s Notes-like) on their legal argument headings and the summary at the end of the argument section: Read More…

Reporters without Borders Nominates MBA for Freedom of Expression Blog Award

Originally posted 2014-11-26 12:58:01. Republished by Blog Post Promoter

mediabloggers-fixed_logoYesterday the Media Bloggers Association announced that it has been nominated for a “Freedom of Expression Blog Award.” You can read about the award here. You can vote for the MBA, and — entirely incidentally — thereby make me (the MBA’s lawyer) look a little good, here. Do!

Kane on Trademark Law – 6th Edition

Originally posted 2014-10-06 09:52:00. Republished by Blog Post Promoter

Kane on Trademark Law - 6th Edition

I’m biased in reviewing the 6th edition of the only comprehensive single-volume —

Well, there you go.  Bias number one:  As far as I can tell, Siegrun Kane’s Kane on Trademark Law: A Practitioner’s Guide is the definitive comprehensive single volume on trademark practice.  I have had my copy on hand at all times for over a decade.  When I learned that it had been updated in May 2014, I was pretty excited.

Bias number two:  I was excited because it was Siegrun Kane herself who mentioned it to me when I had the pleasure of seeing her, many years after we last worked together for a common client, early this year. That was when we both presented at the New York City Bar’s “Trademark Talk” CLE extravaganza, where she brought down the house.  So that’s (2) and (3), I guess:  We’re old colleagues, but although Siegrun is a legend in trademark law whereas I am something between a bad dream and a bit of gas, she is always unfailing gracious.  (As is her husband, David, whose picture is right there on the Wikipedia entry for “gracious.”)

So I’m all biased up, because I’m predisposed to liking this work, having always done so, and because I got a free new review copy of the 6th Edition because Siegrun asked them to send it to me.  But such bias is not, as we say in the trademark practitioner field, for nothing.  You have to have this book.

Wait:  Bias number four:  I’m writing for lawyers who have, and want to have, and like to have, books.  In other words, lawyers seriously interested in learning the answers to legal questions, and indeed identifying the right questions, thoroughly.  If you think you can learn how to be good at this by just doing text searches on Westlaw and Lexis —

Trademark lawyer Ron ColemanWell, you still need this book.  Because it’s one volume, and it’s all in there.  Perhaps it’s also in McCarthy’s treatise; but, frankly, who knows?  McCarthy is massive, it’s expensive, it’s full of forms you probably don’t want or need; and it’s got rust all over it.  Don’t get me wrong:  McCarthy’s treatise an encyclopedia of trademark law, really; if you ever need to know gobs and gobs of cases standing for this, that or the other proposition under the Lanham Act, you will want to have access to McCarthy, which you can cite like a court case.  It’s the black-letter dinosoropedia of trademark law.

But if you want to have one volume right at your side that allows you to scope out, in succinct, snappy prose organized along the lines that make sense in evaluating your client’s claims or defenses, this is the one.

Read More…

Speech and — more? — speech re Russ Feingold

Originally posted 2010-11-05 17:11:32. Republished by Blog Post Promoter

Don’t say they’re anything but — what’s the term? — “fair and balanced” over at Randazza’s Legal Satyricon blog when it comes to the post-mortem on the end of Russ Feingold’s present level of responsibility with respect to the public trough trust.

Focusing on the McCain-Feingold Incumbent Protection Act, one of his satyrs, J. DeVoy, writes:

Russell Feingold will be an ex-senator in January.  It’s not soon enough.  Feingold, half of the propulsion behind the McCain-Feingold Act that limited political speech and chipped away at your First Amendment protections, was never the reformer he portrayed himself to be.

McCain-Feingold has long been one of the outgoing Wisconsin senator’s hallmark achievements. . . .

So what if he initially voted against the Patriot Act, a token vote doomed to uselessness?  When it mattered, at election time, the only civil liberties that were worth defending were those that Russ Feingold found important – evinced by McCain-Feingold.

Here to help with fairness

Marco himself couldn’t take that sitting down, and ripostes, crying “Shame on Wisconsin” (a state I was just getting to like) and with not a small bit of overstatement, as follows:

In 2001, I watched as dissent began to be equated with disloyalty. Questioning became equated with sabotage. Standing up for what you believed in became equated with treason.

My fears unfolded as the Patriot Act was rolled out. Did anyone really believe that the government worked tirelessly to “protect us,” drafting the Patriot Act almost overnight? Or was this a wish list of authoritarian desires that had simply been waiting in a file marked “Do Not Release Until We Have a Good Excuse.”

I watched as 99 of Russ Feingold’s colleagues voted to pass this sweeping measure that changed what it meant to be an American.

There was what to complain about in the Patriot Act, as the Supreme Court ruled time and again, though little of it had to do with the curtailment of free speech — Marc’s “topic,” I always thought — and certainly not the curtailment of classic political speech, which was what made McCain-Feingold a true crime against the First Amendment.

But Marc’s post completely ignores McCain Feingold.  Now who, or what, would have put a gag on the likes of such a man such as to cause such conspicuous silence where there was, as they say, a “duty to speak”?

Grapes of Rath

Originally posted 2010-06-08 15:23:57. Republished by Blog Post Promoter

The Patently Obvious Blog reports that the Federal Circuit, still clinging to antique notions of national sovereignty, quaintly rules that although the U.S. is indeed a signatory to the Paris Convention (of course! Paris!), “the Paris Convention is not ‘self executing’ and thus has no direct effect on U.S. law.” In other words, Congress has to amend the Lanham Act to amend the Lanham Act. Evidently this “sovereignty” fetish applies to important matters like trademarks, not the death penalty and stuff.

Incidentally, the ruling means that a certain Dr. Rath (sounds like a James Bond nemesis, or maybe a very bad advice columnist, doesn’t it?) (and it doesn’t help that in German you pronounce it like “rot”) cannot obtain a trademark registration for his last name in the U.S. despite his holding a foreign registration.

One more reason why they laugh at us in Europe, I guess…

UPDATE:  See John Welch here.

Likelihood of creation

Originally posted 2006-11-02 23:18:54. Republished by Blog Post Promoter

And then there are things much bigger than intellectual property, even bigger than things we can even comprehend intellectually, and that are no one’s property… and everyone’s.

The Internet changes everything and nothing at all.

Good Shabbos.

When It Absolutely, Positively Has to Match the Dinette

Originally posted 2005-08-17 18:09:29. Republished by Blog Post Promoter

You’ve heard about the FedEx Furniture trademark kerfuffle by now, haven’t you? Sort of story that kind of blogs itself.

UPDATE: Interesting to see the threads this has spawned, though….

“I don’t even own a TV”—Aereo (Part Two)

Originally posted 2014-10-26 19:37:31. Republished by Blog Post Promoter

aereo-logoFamiliarity of the reader with Part One is presumed.

As I read the Second Circuit decision, I was pleased—for reasons I can’t quite, and won’t bother trying to, articulate—that the appellate court was affirming the denial of a preliminary injunction in part, at least, because the granting of the injunction would probably have “severely harm[ed] Aereo, likely ending its business.”

Yet I was at the same time bothered by something I couldn’t quite put my finger on, until I did, and it was nothing other than the acknowledgment by the Second Circuit (immediately preceding the one just quoted) that “the [district] court concluded that the Plaintiffs had demonstrated a likelihood that they would suffer irreparable harm in the absence of a preliminary injunction.” Which means, of course, that right now—and since March 14, 2012, when Aereo began providing its service to subscribers… and through tomorrow, and the day after, and the day after that… until such time as the plaintiffs prevail in the two lawsuits pending in the Southern District of New York (and are awarded a permanent injunction), an eventuality Judge Nathan has deemed unlikely as a matter of law, which ruling the Second Circuit has affirmed… the plaintiffs, every broadcast network in New York City, are being irreparably harmed.

How, exactly? The appellate decision doesn’t discuss the harms to the plaintiffs, because it doesn’t need to. The Second Circuit agreed that the plaintiffs “are not likely to prevail on the merits,” so its discussion of the harms claimed by each side of the dispute are minimal. “Plaintiffs do argue that any harm suffered by Aereo should be disregarded in the balance of hardships analysis because Aereo’s business is illegal,” the Second Circuit decision reads, “…[b]ut this argument hinges on the conclusion that Aereo’s business infringes the Plaintiff’s copyrights,” which the court concluded it does not, at least “on the limited question before us… whether Aereo’s transmission of unique copies of recorded programs to the Aereo users who directed that they be created are public performances.” So we must seek our answer elsewhere. Perhaps in the district court opinion.

But before we look there, let’s think about this like regular folks. Regular folks don’t read court opinions. Regular folks ask whether something feels right or wrong. And this feels at once both right and wrong.

Imagine that you live in New York City. As a NYC resident, when you’re not at a Yankees game or ice skating at Rockefeller Center or having lunch with, say, Michael Bloomberg at Ray’s Famous Original Ray’s Pizza, you might watch some broadcast television, which you don’t pay for, since you have an antenna attached to your top-of-the-line widescreen HD set in your 350-square-foot studio apartment that you share with a roommate and a cat. But when you get home from your pizza date your roommate and his girlfriend and her friend are using the TV to play video games (only ironically, though)… but you’re not out of luck, since you’re an Aereo subscriber! So you take your iPad to your freecycled futon in your corner of the room and you log in and request that the new episode of whatever show everybody likes that’s playing right now be streamed to your Internet-capable device.

Where’s the harm in that? Read More…

Dear Linus: Trademarks are not Security Blankets (UPDATED!)

Originally posted 2011-08-16 12:34:57. Republished by Blog Post Promoter

Dana Blankenhorn understands how trademark law works. Evidently, Linus Torvald’s lawyers don’t. And if Dana’s wrong and Linus is right, why, that will be an interesting new chapter in the IP rent-grab-a-thon: Open source trademarks, where quality control (the sine qua non of trademark licensing) is, to say the least, besides the point.

UPDATED:  Luis Villa writes, in the comments, regarding this post, originally posted August 24, 2005:

Those articles are more than four years old now, Ron, and the policy has proven fairly robust- as far as I know there have been no Linux(tm)-related trademark lawsuits since the policy was put in place, and all major Linux vendors support the policy. (That said, licensing is now free, rather than having a nearly de minimis cost, as it has been folded into the work of the Linux Foundation.)  (Read the rest..)

MTA’s way or the highway

Originally posted 2009-09-02 16:31:48. Republished by Blog Post Promoter

I’ve been watching these guys at the MTA and their IP enforcement program for a while now.  Once was for a client, who, regrettably, didn’t want to fight.

  • I first picked up on this over four years ago, when I wrote,

The New York Times reported (yes, reg. req.) last week that New York’s Metropolitan Transit Authority is scrambling to enforce trademark rights in its wide array of iconography, including the famous alphanumeric train symbols known to all New Yorkers. . . .

Still and all, there is an interesting trademark policy issue in here somewhere. It’s one thing to say that services aren’t free and that even when, as in the case of the MTA, they succesfully address significant externalities, their costs should not be unduly disconnected from users. But it’s another thing to say that, however revenue-starved, a public institution (in the broad sense of the word) such as the MTA should restrict the public, much less the bloggy, enjoyment of a public iconography such as the train number symbols and the image of the classic subway token.

  • A few months later I reported on a “crackdown” by the MTA on unauthorized distribution of copyright-protected maps of the subway, and cited Bill Patry, who said, in a similar vein:

There is no statutory bar to protection for original subway maps, therefore. There should, though, be a common sense bar but that, like common decency, is apparently lacking.

  • Later in 2005 I saw the MTA’s overreaching finally exceed the breaking point, when it tried to register trademark rights in this original phrase (they were succesful, too).If you see something say something


What, really, is the point?  It’s just your (my) tax money at work.

  • In 2006 I noted a story reporting that — unlike a lot of other copyright, trademark and right-of-publicity owners who have not made a peep — the MTA made those masters of confusion, “Jews for Jesus,” stop using the transit symbols in their underground evangelizing, though in reality, they probably didn’t have to.
  • Then, most recently, I “covered” an item — involving official New York City family planning devices bearing a “subway theme,” regarding which I suggested, somewhat tongue in

cheek, that this would seem to undermine any secondary meaning connecting the subway route symbols and subway routes at all.

This suddenly came to my attention again, when, three weeks ago, the following comment appeared on that two year old post: Read More…