LIKELIHOOD OF CONFUSION®

I could have linked to a million stories on this, but Publishers Weekly seems appropriate:

I did too read the book.

In a potentially precedent-setting ruling today, federal judge Deborah Batts ruled that J.D. Salinger’s most famous character, Holden Caulfield, is protected by copyright. She did not rule, however, on whether Swedish author Fredrik Colting’s use of Salinger’s iconic character in his book 60 Years Later: Coming Through the Rye was allowable under fair use, and issued a temporary restraining order blocking its publication. Salinger’s lawyers have asked for a preliminary injunction permanently blocking publication of the book in the U.S., claiming it is tantamount to an unauthorized sequel. Batts now has 10 days under the order to decide whether to enjoin publication of 60 Years Later, though she can extend that period by another 10 days if necessary.

Batts’s ruling is the first time that the Second Circuit has explicitly ruled that a single character from a single literary work is copyrightable.

Opinion is here.

I’ve already weighed in on the fundamental proposition at stake.  Needless to say, beyond this the concept of an injunction barring the book’s publication, on top of this, er,  novel holding by Judge Batts, is about as chilling a breeze as I can feel on a muggy July day in Manhattan.

Here’s a roundup of other opinions:

The WSJ Law Blog spoke to Colting, who said, “I am pretty blown away by the judge’s decision.  Call me an ignorant Swede, but the last thing I thought possible in the U.S. was that you banned books.”  (Is “you ignorant Swede!” one of those common epithets that had been whizzing right past me all this time?)

Plagiarism Today focuses, in its brief coverage, on Colting’s claim that “his work was intended to be a parody and expressed disbelief at the ‘banning’ of his book.”  Well, Judge Batts expressed disbelief too — particularly at his “parody” claim, which is probably pretty credible disbelief, to, um, tell you the truth.

John Bennett, from the other side of the issue at Against Monopoly, writes trenchantly as follows:

When you read this story, it is hard not to throw up your hands in total disgust at the court and copyright law link here. . . .  Here we are threading needles and splitting hairs as the judge doesn’t seem to have thought about whether there is a real problem, trying instead to decide if the parody is successful or adds anything to the character portrayal. . . .  Here is a case where letting the market decide the book’s fate would have been a great idea. Instead, the suit will be appealed.

Man, he makes that sound like a bad thing!

I found an anonymous, and new, blog called iP Stump, which noted that the parody defense probably cost the Ignorant Swede his case, and while Stump seemed to applaud the ruling as “a victory for individual intellectual property protection,” he or she added,

The only thing that seems alarming to me is that the premise, story-line, and virtually every other aspect of the parody seems innovative and novel. While it is understandable that Salinger wants to protect his generation-defining work, it is upsetting to know that this case may well prohibit any future adaptation or even tribute to one of the greatest characters in literature.

My old friend Joe Windish is a little less impressed by Salinger’s iconic icon, writing at my old friend Joe Gandelman’s The Moderate Voice:

The economics of the situation would have worked in Salinger’s favor; “60 Years Later” would have spurred sales of Salinger’s Catcher in the Rye.

I was never under Caufield’s spell. In that I’m more in sync with today’s youth:

Teachers say young readers just don’t like Holden as much as they used to. What once seemed like courageous truth-telling now strikes many of them as “weird,” “whiny” and “immature.”

Judge Batts issued her opinion right on the eve of a vacation, so that may be why so far there’s no word from the brilliant Rich Stim (why aren’t I reading his blog every day?), Lessig (who doesn’t seem to blog once school’s out), my chum Victoria Pynchon (even she could not have mediated this one), or any of the crew at Copyfight (who really should be all over this, people!).

And don’t get me started about Bill Patry, who is mainly sick of sharing his expertise for free and getting aggravation back for his efforts.  But you never know.

Either way, this headed for the Second Circuit and, because of the very legitimate book-banning concerns expressed by that silly Swede, it may get there rather fast.

Impulse buying, King of Pop style:

Branca had a surprise for Jackson. The attorney said casually, ‘By the way, the ATV catalogue is available.’ Jackson looked puzzled. Branca added teasingly, ‘It includes a few things you might be interested in.’ ‘Like what?’ Jackson asked. ‘Northern Songs,’ Branca replied. Jackson recognized that name. ‘You mean the Northern Songs?’ ‘Yeah, Mike . . . the Beatles.’ Jackson did a full turn, jumped in the air and shrieked. ‘But wait,’ Branca warned. ‘Other people are also after the catalogue. It’s going to be a struggle.’ Jackson replied, ‘I don’t care. I want it . . . please.

From the LA Times, via BITTER LAWYER, which has a feature on “those JDs who kept the King of Pop out of trouble—and in some cases—out of prison.”:

“Two child-molestation investigations (no convictions), two divorces, myriad civil lawsuits over concerts, special performances and soured business deals, near-bankruptcy and the threatened foreclosure of his Neverland ranch kept teams of lawyers busy.” [CNN]

Plus, the possibly that Michael didn’t leave behind a will is enough to ensure many embittered legal battles are left to ensue.  .  .  .

Unfortunately, nailing down who did (and did not) represent Jackson isn’t easy. Over the years, he hired and fired enough lawyers to staff a medium-sized law firm. So consider this Michael Jackson’s greatest legal hits.

Should be a fun read, if you’re into the legal-personality thing.

Quite ironic, by the way, about Michael Jackson owning the Northern Songs catalogue — if you’ve ever read the lyrics to Only a Northern Song, which include:

It doesn’t really matter what clothes I wear
Or how I fare or if my hair is brown
When it’s only a Northern song.

If you think the harmony
Is a little dark and out of key
You’re correct, Is nobody there
and I told you is no one there

Burger King’s trademark place is kind of funny.   If you Google His Majesty’s Monicker along with the word TRADEMARK, you get this link, which not only asserts, naturally, his royal BURGER KING® registered mark, but the far more dubious BK® mark down at the bottom, yet not at all (on that page) the ancient registered mark asserted at the Google search page, to wit:

Too much paranoia?

Yeah — HAVE IT YOUR WAY.  I mean, WAY®.  Are they really still using that phrase?  Is using it in the invisible text that shows up in a Google search good enough for non-abandonment purposes?

The whole thing was raised in my mind upon a visit to James Lileks, who notes:

Burger King is a brand mess anyway. The logo looks like Speed Racer’s gallstone. The old logo got stale, but I’ll bet they want it back, because it would look totally old-school on one of those pre-distressed-for-your-convenience retro T-shirts that use lousy 70s graphics to indicate your hipness quotient. Compare all this flailing and “repositioning” to the competition: McDonald’s ads have always been bland and corporate and stuck in the soft-focus world of happy people having happy burgers; BK has had to take different tacks.

Lileks walks through them all, and links in turn to this Gawker item (not quite safe for home) which notes, in an item entitled World’s Cleverest Ad Campaign Is Big Failure, that McDonald’s has lately been eating BK’s (ah!), um, lunch.

That’s because McDonald’s runs boring ads that show All-American people enjoying their McDonald’s food, with a little jingle at the end, and Burger King runs ads that win ad awards. If only the average burger-eater were clever enough to appreciate [Crispin Porter Bogusky]’s brilliant branding techniques! You slob Americans get what you deserve, as will Burger King.

Now that sounds subversive, and treacherous too.

Of course I can’t eat in either of those places, and kosher burger wars tend to be resolved far more peacefully, and without recourse to suggestions of regicide.  But don’t get me started about the chicken…

The whole world is a nail.

Now Marty Schwimmer isn’t a hammer, because he does trademarks and not patents, see.  So this post connecting Michael Jackson and intellectual property is not proof that Michael Jackson’s death is a nail!

(Single-glove-tip on the actual patent to Andie Schwartz!)

Leafy, green and non-infringing.

Real judicial fiber here — cleans the whole system out, right down the line.

Via @EricGoldman, by way of TechDirt.

Ruling Imagination:

I may be a minority, but I find it odd to think a literary character, rather than the work he appears in, can be copyrighted. Nonetheless, the judge hearing J.D. Salinger’s lawsuit seeking to block publication of 60 Years Later: Coming Through the Rye apparently thinks Holden Caulfield is “a portrait by words.” Funny, I might think of Catcher in the Rye as analogous to a painting, but the character himself?

Holden Caulfield is a cultural icon of adolescent alienation (or at least was at one time). Can no creative work employ him as a symbol with resonance for an entire generation without J.D. Salinger’s permission (that, by all appearances, he would never grant)?

I’ve long argued here that the law does not, and should not be read to, forbid making cultural reference to the intellectual property of another — even creatively or commercially.   If it did, or it were, that would pretty much be the end of culture, after all, wouldn’t it?

We know that J. D. Salinger couldn’t care less about that.  He’s got his, after all — and the link above, a little further down in the post, demonstrates just where he got it.

But hey.  All morons hate it when you call them a moron.

One hopes that judges, however, do care.  People always think something’s all true.  But we count on judges to follow these subtle distinctions.

Hat tip to @CopyrightLaw.

UPDATE:  More on copyright and creativity (hat tip to Glenn Reynolds).

The Media Bloggers Association president, Bob Cox, is all over the story regarding the Federal Trade Commission’s brand new Guides on Endorsements and Testimonials, which, as Bob explains, will certainly affect bloggers.  In fact, one of the examples given of a testimonial in the proposed revisions, found here, is of a product review written by a blogger.

I made my views known on this a while ago:  I’m against this sort of regulation, which I think is an unconstitutional restriction on free speech, kittens or not.  And I think most consumers — from a policy perspective, enough of “most” — can figure this sort of stuff out for themselves by now.

UPDATE:  Great minds think alike.

Miss Trials is a new blog, or sub-blog or something (I can’t make heads or tails of the navigation) on a site called Halogen Life.  It’s written by Kelly Taylor — “a reformed politico, fashion writer and aspiring lead counsel for a major house of style.”

That’s her aspiration, yet she’s blogging?  Good luck with that!

Anyway, Kelly says that litigation is threatening to really rock the fashion business:

Not everyone in fashion supports a legal overhaul — designer Rick Owens has said he takes copycatting as a compliment. The industry, in part, thrives on knocking off garments. Unique, commercially successful designs do not come cheap. Top fashion designers can pull in millions a year for their work. One way lower market retailers keep costs down is by hiring cheaper design talent to simply translate the latest runway looks into marketable ready-to-wear pieces. Meryl Streep as Vogue editrix Anna Wintour — I mean — fictional Runway magazine editor Miranda Priestly in The Devil Wears Prada broke it down best when she tracked the origin of her assistant’s frumpy sweater from Oscar de la Renta gowns to a Casual Corner clearance bin. Frequently, the inspiration is vague, like mimicking a trendy silhouette or color. The problems arise when the line between inspiration and duplication blur.

Artistic integrity isn’t the only factor in play — exclusivity is a crucial part of the luxury industry. Sartorial snobbery is rampant in many knock-off allegations. Some designers have gone so far as to say that they don’t want plebeians affording their highly-publicized pieces — they’re to be donned by the elite of the world, not, as Versace’s CEO put it, “young girls who can put the designer handbag of their dreams on their arm with less than 300 Euros.”

Is copying a piece down to the smallest detail morally wrong? Absolutely. Should those companies be sued? Probably. But the ramifications of opening the door to a litany of design infringement suits could put a serious damper on mass-market clothing chains. Taking high fashion trends and making them affordable and accessible is nothing new in the apparel industry. Nothing can prevent designers from taking to court to defend their work, but the industry as a whole might want to be wary about eating its young.

Arguing for long-term perspective as a damper on litigation? Good luck with that, too!  Hat tip to @walterolson.

(Part 1 is here.)

So.  In light of the decision in the Thomas-Rasset case, which I first rounded up in part 1 of this first-ever two-part LIKELIHOOD OF CONFUSION® odyssey, now I ask:  How does a jury of supposedly ordinary and sensible people becomes twelve angry persons and so profoundly abandon common sense in IP cases (even if it the whole thing looks really hilarious to some folks)?  How do they allow themselves to buy into these never-never-land valuations of damages, whether statutory or otherwise?

I don’t know.  But as what was a grueling week melts away, it is time to relax a little, and do what litigators love to do best:  Tell “war stories.”

Now, I’ve picked juries in many kinds of cases, from wrongful termination and commercial to copyright and trademark cases.  I may not have always chosen wisely, but my record is not too shabby, overall.  Frankly I believe my jurors were pretty darned reasonable and intelligent people, quite to the contrary of all the cynicism, and not just because of the outcomes I’ve gotten — mostly.   I never demonstrate a lack of respect to jurors such as by praising their patriotism or, more to the point, lying to them, regarding which so many of my colleagues have no such scruples.  And that is because, besides the fact that I aspire to practice in an ethical manner, I do respect the jury.

This includes the one jury I truly “lost,” namely the one I had in Central Islip, New York, last January, which I discuss in greater detail below.  They seemed to me, when we completed voir dire, to be a perfectly fine bunch, and maybe even a little better for my side than my adversary’s.  What happened to them along the way I still don’t understand.  But in the succeeding months I have had to admit that jurors’ willingness to treat other peoples’ lives with what can only be described as disdain, and other peoples’ life’s savings as Monopoly money, raises serious questions about the jury system.

Noodling about juries is certainly common, but usually focuses on areas such as personal injury and products liability law, where big, bad corporate America is footing the bill for arbitrary impositions of an ugly form of wealth expropriation via class warfare and political expediency.  In fact, a very similar thing may be happening in intellectual property law, except that, as a general rule, the class warfare aspect of the game is trending in favor of the Haves, which are finding trademark and copyright to be usually very decent substitutes for the laborious and expensive effort of reconsidering obsolete business models.  Both trends are bad news for free enterprise and economic growth.

Now, on the one hand, I was very impressed when we spoke with the jury in Phoenix after the Designer Skin v. S & L Vitamins case. This is a practice that varies from court to court; some resolutely forbid this debriefing, but lawyers love them. The District of Arizona jury returned a verdict of copyright infringement for my client’s use of what were claimed to be original images of the Designer Skin tanning lotion company on my client’s “unauthorized” tanning lotion reseller website. This verdict appeared eminently reasonable to me notwithstanding my advocacy to the contrary, given the evidence and the rulings. Read More »

A lot of people, including judges, lawyers and civilians, don’t seem to really understand what statutory damages are all about.  They are not supposed to be a windfall (discussed more here).  But just tell that to the jury that awarded “infinity dollars” — practically — to the Lords of Music for what was indeed knowing copyright infringement of two dozen songs, and to the person on whose head the jury just laid that award.

I’m not an “information wants to be free” nutter, and musical compositions aren’t “information” anyway except to the most heartless utilitarian, but Stan Schroeder (presumably no nutter either, but probably to my left on this issue) hits it right on the head:

In one of the most ridiculous verdicts I’ve seen, the jury decided that Jammie Thomas-Rasset, the first woman who was charged with copyright infringement and offered to settle but decided to fight the RIAA, is guilty and owes the recording industry 1.92 million dollars, or $80,000 per song.

As we mentioned in our original article, Jammie’s case was full of holes, and she probably would have done better if she had just settled with the RIAA. But what’s striking here is the amount of money awarded to the recording industry for infringing the copyright for just one song.

It reminds me of a recent Penny Arcade comic which mocks Microsoft’s Zune Pass, which offers unlimited selection of music for 15 dollars per month; since time never ends, this technically amounts to infinity dollars. Since the music is DRMed, if you ever stop paying, you lose all your music.

It’s just a joke, but it makes a good point. How much is one song worth to you? How much is it worth to the author? How much is it worth to the recording industry? You can push arguments to favor each side, and ultimately you can always claim that a song never fully loses its value and it can therefore be set to an arbitrary, insanely high amount of money.

The problem with this approach is that it results in cases like the one against Jammie Thomas-Rasset, who now has (there are indications that the RIAA is still willing to settle with a much lower amount of money, but it’s irrelevant; what’s important is the principle of the matter) to pay 1.92 million dollars for infringing the copyright of 24 songs.

In a word, it’s stupid.

As this fine roundup of the legal issues from the EFF explains, there are lots of problems with this outcome, including a two-pronged constitutional one — is this unconstitutionally excessive, and is there a different standard on that question when it comes to statutory damages? — as well as the whole issue of what has happened to statutory damages in the hands of the Copyright Congress.  Of course, there’s the fact that, as Fred von Lohmann explains, “I assume these arguments will first be submitted to the trial judge in post-trial motions. After all, this judge has already indicated that he found the previous $220,000 award to be “unprecedented and oppressive.”

Seems that way, doesn’t it?  (Part II is here.)

There ought to be clones

President Obama is suffering from the right-of-publicity blues again.  And now maybe we understand why he wants an intellectual property counterfeiting expert on the Supreme Court — this could rise to the level of an international incident already, Jack!

A blog called Cloned In China explains it all in (ironic as it is to say) inimitable fashion:

We all know Obama uses Blackberry phone, and right now the China shanzhai phone maker haff-comm is using this information to promote their new shanzhai phone blockberry 9500 and has Obama’s figure appeared in this phone’s poster with a slogan “Obama have Blackberry, I have blockberry”. sounds pretty funny, but we don’t know whether Obama have got paid as the “spokesman”.  Probably not, after all blockberry has a little difference with Blackberry.

Yeah, probably not.  Have got paid, that is.

This is the first time I have really felt as if I were publishing spam as a post.  Which is not fair.  I think Cloned in China’s English is more than a few notches above my Mandarin.  But I just keep wanted to see what they charge for all the highest quality online prescriptions… direct to my door!

And, yeah, “BlackBerry” (RIM, that is) probably does indeed have a little “difference” with “BlockBerry” (”Haff-Comm,” that is).

So to speak.

Hot Property

Evan Brown reports on a California appellate case holding that, in that state at least, a domain name is not something a judgment creditor can have “turned over” as an asset of the debtor:

The provision in California law allowing turnover of property limits itself to tangible property that can be “levied upon by taking it into custody.” Looking to the case of Network Solutions, Inc. v. Umbro International, Inc., 529 S.E.2d 80 (Va. 2000), the court held that a domain name registration is not property, but merely supplies the intangible contractual right to use a unique domain name for a specified period of time. Even if the registration were property, it was not something that could be taken into custody.

It’s easy to miss this part of the equation quoted by Evan:  “a domain name registration . . .  merely supplies the intangible contractual right to use a unique domain name for a specified period of time.” In other words, it’s a license with an option to renew.

Of course, there’s no reason the California “turnover” statute has to limit assets subject to execution to tangible ones, though you have to think there’s some political reason that it actually does.  There are certainly plenty of people, and plenty of interested non-natural persons, in that state who understand the value of income streams and other benefits that may inure from holding a license or other intangible interest.  In fact, it may well be the case that those same people–do I have to spell it out?–are the ones who, if this decision stands, may find themselves in Sacramento asking the legislature there to amend the statute so it specifically applies to domain names.

Ah, you ask, what good will that do a judgment creditor if the Network Solutions is still an accurate description of the interest controlled by a domain nomain holder?  No matter how California law treats it, you can’t shackle a domain name and cart it over to some place it doesn’t really want to be, now can you?

Can you?

The Canadian Trademark Blog reports that People for the Ethical Treatment of Animals (PETA), the extremist anti-protein group,

has launched a new “spoof” website in its stated bid to convince the Vancouver Organizing Committee (VANOC) that it should help in the campaign to end the Canadian seal hunt.

PETA?  Spoof website?

Rather ironic, no?

TechLaw is one of the gazillion places reporting on what Facebook is allowing trademark owners –owners of registered trademark , that is — to do in order to prevent their marks from being squatted when, at the stroke of midnight Friday night Eastern time, the Great Facebook Vanity URL Land Rush begins.

Facebook has a simple policy to allow registrants to pre-populate the literal word element of their marks to prevent, um, visagesquatting, I guess.

Like TechLaw’s Amy Bivens, I am just going to lay out, public-service-like, the links registered-trademark owners such as LIKELIHOOD OF CONFUSION® (yes, of course I submitted it!) are using for this phacially phundamental prophylaxis.  What’s not to like?  Here:

Links:

Facebook’s form for trademark owners to block mark registration.

Facebook’s IP infringement notification form.

No twit.

Venkat Balasubramani hits one square over the firewall and argues that Tony La Russa’s legal claims against Twitter look tenuous.

I used to think I was a little bit on top of things and stuff, but, really, I just don’t know.  Did I ever foresee the intersection of the concepts embracing both Tony LaRussa and Twitter?  Maybe I have to just sit back, try my little-league cases and leave all this big-league stuff to you young folks, what with all that newfangled night baseball and designating hitters on the infield-tubes.

Anyway, it’s like this — evidently one of those Tweetmark infringements, or what have you:

The complaint [link] contains causes of action for: 1 trademark infringement/false designation of origin, 2 cybersquatting/ACPA violations, and 3 emotional/privacy torts. Mr. La Russa’s claims are not terribly strong for several reasons. As an initial matter, as pointed out by Mashable, the obviously fake Mr. La Russa profile only had 4 followers before it was disabled. La Russa will be hard pressed to show that any appreciable number of people were exposed to the Fake La Russa’s tweets. This doesn’t necessarily fatally undermine La Russa’s claims, but it will affect his damages if any. So what to make of the claims themselves?

Venkat, for his part, makes a nice little article out of them.  [Insert baseball metaphor divided by Internet metaphor here.]  He also has a couple of pieces of crackerjack advice for the Twitter nine, legal-wise:

If there’s an easy short term lesson in this whole episode for Twitter, it would be two things. First, respond to all complaints. (At least as a matter of customer service.) La Russa’s lawyer said he tried to tackle the issue with Twitter and received “no response.” Second, set up a complaint procedure (a la eBay’s VeRO). If you set up a procedure and a complainant does not avail him or herself of it, that’s your first line of defense right there. Also, a complaint procedure will bolster Twitter’s argument that it was not aware of any infringements by users and will be a potential defense against liability.

Well, it’s a nice idea, but I would assume they’re following the Microsoft / Google (i.e., Western Division) model of “customer service” when it comes to the Complaint Department, Venkat, wherein tobacco juice is considered a “response.”

Still, good eye.  After all, [insert mangled baseball / social networking malapropism punchline here].

Play ball!  Wi-fi!

UPDATE:  I thought baseball was the one game where there were no ties?

I didn’t have a chance to mention that last month, the order denying the legal challenge to the Washington Redskin’s use of its trademark American Indian logo was upheld.

Now I have a chance!

And do the unhappy Indians have a chance?  They think they do.

Slashdot:

The_Pey writes “Recently, an application was pulled from the Apple App Store because of its name. The game in question, Edge, reportedly infringes on the the trademark rights of Tim Langdell to the name Edge. The unfortunate aspect to this whole affair is that Tim is broadly enforcing rights to the name, whether or not he has actually created a game entitled Edge. Much of the history of the trademark ownership is being reported in Tim’s wikipedia entry by a user “cheridavis” who bears a lot of similarity namewise to Tim’s wife, Cheri Davis Langdell.

Well, there they go again.  (Via Ed.)   Believe me, I never even touch my own Wikipedia entry — and this despite the fact that there’s not a word of truth about me in it. But patching together an ersatz trademark wickstory?  Bad form, unless, of course, Cheri Davis Langdell is telling the truth, in which case, what the heck?  As Hillel said, If I am not for myself, who will be for me?

Assuming, of course, that she is “me.”  She, that is.  Is really Cheri Davis.

Langdell, that is.

And, anyway, if she’s fibbing, well, at least she’s signing her name to it, and is prepared to account for herself, presumably. That certainly beats, to my mind, doing the same thing but doing anonymously.

Not a significant source of fruity nutrition or berry things

Walter Olson:

“Plaintiff did not explain why she could not reasonably have figured this out at any point during the four years she alleged she bought Cap’n Crunch with Crunchberries in reliance on defendant’s fraud.”

Figured out … what?  You have to click the link to find out.  Let’s just say that CRUNCH BERRIES is a trademark and not a generic term.

Next lawsuit?  Couple sues for misrepresentation, claims to have been married at sea by Cap’n Crunch himself, who, it turns out, is not an actual Cap’n.

There’s been a lot of talk about U.S. Circuit Court Judge Sotomayor’s nomination to the Supreme Court by President Obama in the context his controversial emphasis on “empathy” as a desirable quality in a judicial nominee.  Well, check out this empathetic note from  Counterfeit Chic:

Counterfeit Chic knew that Sonia Sotomayor’s nomination to the Supreme Court was a historic moment — but it just gets better and better.  According to the National Law Journal, Sotomayor’s years in practice were spent fighting fakes, in particular for Italian luxury label Fendi.

So who needs confirmation hearings?

Well, really!  There’s more, lots of it:

Sotomayor spent eight years at New York firm Pavia & Harcourt, where she represented Italian luxury goods retailer Fendi in its fight against knockoff handbags bearing the designer’s logo. Fendi was one of Sotomayor’s major clients when she was an associate and later a partner specializing in intellectual property litigation.

Sotomayor worked at the firm between 1984 to 1992, following a stint as an assistant district attorney in New York City and before her appointment to the U.S. District Court for the Southern District of New York by President George H.W. Bush.

Actually pretty impressive — and an exciting prospect, the idea of a judge in the highest of places who actually has hands-on intellectual property experience and maybe a little passion for the topic too.  Maybe even fiery passion:

With Sotomayor in charge, the firm decided in 1986 to stage a bonfire – to be known as the “Fendi Burn” – in the parking lot of the Tavern on the Green restaurant. There was a catch, however: the New York Fire Department refused to permit it.

So the firm decided on the next best thing, crushing the items in garbage trucks, in an event that came to be known as the “Fendi Crush.”

“In the presence of the press…we threw masses and masses of handbags, shoes, and other items into these garbage trucks,” Pavia recalled today. “It was the pinnacle of our achievement, and Sonia was the principal doer.”

Identity politics are an unfortunate basis for choosing a judicial nominee.  But “identity” professional experience is quite another thing, because, of course, that is professional experience.  Right now the judiciary suffers from a serious lack of genuine professional experience in, and thorough understanding of, the trademarks field, and never has it been needed more.

I would like to think that just as as a former prosecutor, Judge Sotomayor is no “pro-prosecution judge,” there is no reason to believe that as a former IP-rights enforcer, she would necessarily be a reactively “pro-rights-holder” justice, either.

Engaging now in the the gross exercise of tallying up “who won?” scores in IP cases — usually not a meaningful analysis over a relatively small universe — the results are mixed, as they should be.   Blogger Michael Cohen reports on one case in which she did, in fact, rule in favor of a copyright holder.  But there are many cases and a great deal of intellectual power on display in them.  She voted to affirm the decision in a case reported on here, PRL USA Holdings v. U.S. Polo Ass’n, Inc., which favored the putative infringer, but the key issue there was the rules of evidence, not trademark; but in Playtex Products, Inc. v. Georgia-Pacific Corp., 390 F.3d 158 (2d Cir. 2004), she did indeed uphold a lower court ruling rejecting an infringement claim, holding that

Turning to the question of whether “Quilted Northern Moist-Ones” is, when presented as a whole, confusingly similar to “Wet Ones,” we agree with the district court that it is not. Though “moist” and “wet” are almost synonymous, the words are dissimilar in sound and appearance. There are also differences in the way the products are “packaged and presented to consumers.”

Of course, plenty of judges can and do perfectly good LIKELIHOOD OF CONFUSION analysis, even if others are too lazy to bother.  But a justice who has herself  “squeezed the Charmin” at some point could make a difference in the future development of trademark law, which to no small extent the judiciary — acting largely in an unjustifiable legislative vacuum, as Cory Doctorow and others have argued for a long time — has left hopelessly unraveled.

Considering all this, the Sotomayor nomination is an exciting development for trademark lawyers, trademark owners and people who wish the first two categories would leave them alone so they can compete in the free market.

UPDATE:  Walter Olson finds himself magnetically drawn to this display of Likelihood of Attraction.  And so he should, for there is little that is  “conservative” or “free market” about the current state of affairs in trademark and copyright law.

UPDATE EVEN:  Mike Atkins has more.

Remember the lawsuit pitting the Naked Cowboy against the Mars candy people?

Well, the Cowboy rides again — out in the direction of that sunset into which he rode (bareback), in fact, filing suit against Clear Channel, alleging that one of their radio stations misappropriated his mark.  No, not the marks that you’d expect a naked cowboy to complain about — I don’t care how tough your skin is, pod’ner, that’s gonna leave a mark — but trademarks.  Of course.

UPDATE:  More, far more, from Ryan Gile.

I will be off the grid due to the two-day observance of the Jewish festival of Shavuoth, the celebration of the Revelation that made the Jews the “chosen nation,” starting tonight through Saturday night.

I’ll be back next week, and will continue to reveal all.

“I have always wanted to have a neighbor just like you,” crooned Mr. Rogers for all those afternoons.

Well, evidentially it’s mutual, and then some.  Michael Kinsell, it seems, has always wanted to be a neighbor, just like — I mean, just like — Mr. Rogers:

PBS is accusing a San Diego teenager of “falsely claiming association” with the network and Mister Rogers’ Neighborhood. He is selling tickets for a May 31 gala event where, according to a news release by his publicist, he will present himself as successor to the late Fred Rogers.

Managing to be even creepier than the original

Michael Kinsell, who told Current he is 18, said he has produced six episodes of a new show, Michael’s Enchanted Neighborhood.

Kinsell described the benefit event, to be held at the California Center for the Arts, Escondido, as a tribute to Rogers that will raise funds for “children’s public television” and, he hopes, for his own new show.

He said he invited members of Rogers’ family to receive a Children’s Hero Award in Rogers’ honor and said he will give $10,000 in mid-June to Family Communications Inc., Rogers’ production company in Pittsburgh.

In a complaint this month to the California Attorney General’s office obtained by Current, PBS says that Kinsell, with event publicity falsely associating himself with PBS and Rogers, could divert funds to his nonprofit from the network and Rogers’ company.

“Kind of our way,” huh?  The juxtaposition of Eddie Murphy and a Mr. Rogers wannabe is odd enough, but his tossing out of various names best known for TV fame in decades past is odder still.

Actually, let’s go back to “odd enough.”

Reached over the weekend, PBS spokesperson Jan McNamara said, “PBS has no affiliation with Michael Kinsell.” The network’s complaint states that both PBS and Family Communications have “spoken personally” with Michael Kinsell and sent him cease-and-desist letters.

“This event may set a record of the biggest celebrity turnout in the history for San Diego,” said the event’s website.Kinsell said that he was “not at liberty” to say who would appear at the gala, but “foundation supporters” include Bette Midler, Tom Hanks, Sally Field, Barbara Eden and Eddie Murphy. “That’s kind of our way of saying they will be on stage that night, but scheduling stars is difficult,” he added.

Not in my neighborhood, thanks.

We see again that the ill-defined “scandalous” criterion for rejecting trademark registration applications — and not merely those involving hot-button ethnic slurs — lives, as John Welch reports (not safe for work, and, really, for home either — why not just read my nice version right here?):

In the Board’s latest Section 2(a) rulings, Applicant RK Netmedia failed in its attempt to register [certain] marks . . . for “entertainment services in the nature of photographic images, pictures, video and audio recordings,and information regarding adult oriented subject matter transmitted through a global computer network.”  The Board concluded that the marks “would be offensive to a substantial composite of the general public and [are] therefore prohibited by Section 2.” In re RK Netmedia, Inc., Serial Nos. 77060742 and 77060766 (May 21, 2009) [not precedential].

Marc Randazza (well-regarded First Amendment lawyer and blogmaster of The Legal Satyricon) argued on behalf of Applicant that the word [making up part of the mark sought to be registered] is not scandalous “in the context of the marketplace as applied to only the goods or services in the application for registration.”

The Board, however, took a different view of the precedents: “we hold that the determination of whether a term is scandalous or immoral is determined by the perceptions held by a substantial composite of the general public, not merely applicant’s customers or potential customers.”

Marc is always the gamer on this issue, and you can hardly blame him for having a devil of a time figuring out what exactly the rationale is behind scandalousness in the PTO — it’s a logical mess, in which political correctness as to certain matters seems very much to be an unspoken criterion.

You can blame him, though, for trying to register dirty trademarks.  I do!

Cyberlaw Central has Blawg Review #213.  The theme is “Towel Day.”

You have to be there, I guess.  With a towel.

Towel Day, 1978

Cartier sued Apple last week, and before I had a chance to figure it out, they either un-sued them or announced that they were about to withdraw the complaint, which isn’t even available yet on the Southern District of New York’s PACER system.   As the Wall Street Journal explains, “The suit alleged that two applications for the iPhone infringed on the trademark for the luxury brand’s Tank watches.”   Per CNET News:

At the heart of Cartier’s infringement claim was a pair of apps called Fake Watch and Fake Watch Gold Edition. The apps are made by Digitopolis Game Studio, which interestingly enough, was not named in the lawsuit.

Filed in the U.S. District Court in Manhattan, the lawsuit claimed the applications give people the ability to tell time on the iPhone and iPod Touch with a display that simulates famous wristwatches.

Jonathan Lagarenne, Cartier’s lawyer, said the lawsuit would be withdrawn because the company was satisfied that Apple had removed the apps from the store.

That Jonathan Lagarenne is pretty darned effective!  Brings a lawsuit against a major technology manufacturer based, presumably, on contributory infringement, without even, “interestingly enough,” naming the alleged direct infringer, and gets results so fast that he and the rest of his Fox Rothschild colleagues are already riding into the sunset, back to Jersey across the George Washington Bridge!  (More here.)

It is odd, though, isn’t it?  You may not have thought that Cartier would necessarily hire a Philadelphia law firm for, well, for any reason… much less someone out of their crack “Princeton,” New Jersey office (actually kind of only near Princeton)… whose firm bio, while beaucoup impressive, doesn’t exactly scream “litigation” and who has appeared in only three prior cases in the Southern District and five in the District of New Jersey — ever  … to file a lawsuit in federal court in New York against — gulp — not just anyone, but Apple.  Again:

Cartier’s lawyer . . .  said the lawsuit would be withdrawn because the company was satisfied that Apple had removed the apps from the store.

An odd choice of words, don’t you think?  Of course it’s not a direct quote.  But “satisfied…” and “removed” (when?) … and “from the store” — were the apps” ever really “in the [Apple] store”?  Aren’t these third-party “apps”?

Why do I have a feeling we’re not getting the whole story here?

We’ve all seen rapid capitulation, though not likely by Apple in a case such as this.  You can hardly imagine Apple, not known for being a soft litigation touch, wanting to establish a precedent that it rolls over based on novel third-party liability claims, can you?

And on the Cartier side, well, running to announce that you’ve “withdrawn” a lawsuit against a sophisticated, wealthy adversary because, “Hey, we made our point,” without filing a stipulation of settlement or, well, anything…  How do you know your offending “app” isn’t just back in the stores the day after you “withdraw”?

It’s not as if Fox Rothschild doesn’t sometimes have a funny way of resolving trademark infringement lawsuits where it represents the plaintiff, after all.  And this is a funny way.  “Withdrawn”?  That’s not usually a synonym for “winning,” is it?

No, you just don’t see this every day.  Why, from the timing of it all I’d almost think Cartier had gotten a Rule 11 letter threatening to bring down holy hell if the case wasn’t “withdrawn,” as they’d say in Cartier-talk, tout-de-suite.  I haven’t seen the complaint, such that I could suggest my own little take on that (not that Cartier has asked me lately), nor proof of any such threat.  But it sure is odd.

Live and learn, I guess.  Live and learn.