LIKELIHOOD OF CONFUSION®

Originally posted 2007-07-25 01:01:52. Republished by Old Post Promoter

Boing Boing reports that the English have done something impossible in our own country: Turned back an effort to extend copyright for, all practical purposes, ever — 95 years:

This is the first time that I know of, in the history of the world, that any country has given up on extended copyright terms. In the US, the Supreme Court found that 98 percent of the works in copyright were “orphans” with no visible owner and no way to clear them and bring them back into the world. Extending copyright dooms nearly every author’s life’s work to obscurity and disappearance, in order to make a few more pennies for the tiny minority of millionaire artists like Cliff Richards (and billionaires like Paul McCartney).

It gives one hope. (On the other hand… Cliff Richards?)

Originally posted 2006-07-24 23:58:10. Republished by Old Post Promoter

Money, that is.  It’s just that some people just don’t want to talk about what they’re doing with it.  Thanks, Senator McCain!

I’ve been known to sound the alarm about the rush to register trademarks, and all the more so to register anticipated trademarks.  I argue that — oh, forget it, even I’m tired of saying this over and over again.   Here’s what I said, one of the times I said it:

Yes man?

For well over nine out of ten new businesses, the odds of your idea sinking or swimming on the strength of a trademark are slim indeed, and slim too is the war chest most entrepreneurs bring to the battle of free enterprise. Prove to yourself and the world that you have a business plan, a product or service that people want, the ability to deliver it and to scale it up, the capitalization to fertilize all that and the smile of Providence on your efforts. If in the process you develop something worth protecting as a trademark, that mark has already been storing up goodwill and secondary meaning and is enforceable as against infringers under state law and Section 43(a) of the Lanham Act. If it would be a good, business-justifiable use of what is still early-stage capital to register your trademark at this point, by all means do it.

So there’s that.   On the other hand, what exactly kind of advice is … this?!:

Some lawyers will get all excited and encourage (demand!) that you register your trademark. This involves paying a bunch of money, filing a bunch of forms and earning an ® after your name instead of the ™. While the ® does give you some benefits by the time you get to court, it doesn’t actually increase the value of your trademark. And you can wait. So, when you come up with a great name, just ™ it.

It doesn’t sound so different, does it?  Well, it was written by the icon, human trademark Seth Godin™, famous on the Internet for being famous, whose name I hear all the time and seems to be a guru of some sort though I missed class the day when they taught us why.   Well, I think Seth Godin™ is pretty much just about right there.

But Seth Godin™’s bit of advice comes to me via my very agitated friend Steve Baird at the Duets Blog, who is not at all happy with Godin on Trademark.  Steve promised, in fact, to have at that last excerpt in a later post (which he did do — here).  But for the moment, it suffices for him to take umbrage, and hard, at the suggestion by Godin that trademarks are a tad overused here on the Internet:

If we’re in the idea business, how to protect those ideas?

One way is to misuse trademark law. With the help of search engines, greedy lawyers who charge by the letter are busy sending claim letters to anyone who even comes close to using a word or phrase they believe their client ‘owns’. News flash: trademark law is designed to make it clear who makes a good or a service. It’s a mark we put on something we create to indicate the source of the thing, not the inventor of a word or even a symbol. They didn’t invent trademark law to prevent me from putting a picture of your cricket team’s logo on my blog. They invented it to make it clear who was selling you something (a mark for trade = trademark).

“Misuse”?!  Steve says like this:

While there are certainly some greedy trademark lawyers in the world, and some that overreach on behalf of their client brand owners, even honorable and ethical trademark attorneys worth their hourly rate know that federal protection against dilution for truly famous marks was added to U.S. trademark law about fifteen years ago. At least for marks satisfying the difficult fame standard, these kinds of trademarks come darn close to owning the brand name in gross, that is, in connection with any goods or services.

Yes, Steve is more accurate than Seth Godin™, who seems to be more editorializing when he says “misuse” than he is describing the actual state of the law.  Steve makes an important point.  It’s one that he made in the seminar on LIKELIHOOD OF CONFUSION in which we both participated (and to which he invited me–thanks again!)(UPDATE:  PowerPoints here!) last week in Minneapolis, and which kind of made me lose the color in my face (the color in my hair is already gone) when I heard him say it:

With respect to what trademark law was designed for, and while I don’t consider this to be a news flash any longer, well prior to dilution protection being added, U.S. trademark law was amended to make clear that much more than confusion as to source is covered. All the way back in 1962 the Lanham Trademark Act was amended by striking language requiring confusion, mistake or deception of “purchasers as to the source of origin of such goods and services.” Moreover, a much broader scope of confusion protection was codified in 1989 in Lanham Act Section 43(a), which protects against trademark likelihood of confusion not only as to source, but as to affiliation, connection, sponsorship, association, and/or approval. This additional scope of trademark protection makes perfect sense given the current commercial realities of trademark licensing, franchises, co-branding, affiliate marketing, and OEM relationships.

He’s right, again.  No, it’s not a news flash, but sometimes… Steve, you’ll see.  When you get old, you … you forget, sometimes.  But indeed, today’s trademark law, both in the statute and in the cases, truly reflects “the current commercial realities of trademark licensing, franchises, co-branding, affiliate marketing, and OEM relationships.”

But of course I got my color back.  (The face color only.)  Because to make his legal point, Steve makes Seth Godin™ and LIKELIHOOD OF CONFUSION®’s policy point.  And when I read his words closely, the pondering of them brought me back to that golden mean between Steve and Seth Godin™ … which I mean is probably closer to the latter. Read More »

But can you, really, dance to it?  Alan Wexelblat says yes, but the copyright part?  Some pretty complicated steps:

I think that modern dance music, particularly the mash-up [based on DJs who use various technologies such as turntables, mixers, and effects boxes to produce sounds using two or more original recordings], is one of the most Copyfight-challenging and lively art forms out there. And since it has hit the mainstream media, finally, I expect to see more public culture clashes over it this year. . .

The notion that DJ/remixers are just blindly copying or reusing without innovation is just flat-out wrong. Apprentices may copy without much added skill, much as apprentice painters sit and copy masterwork paintings for hours on end to learn their craft. But as they learn they also learn to add their own creative elements and styles, producing new works that are based on the source material in the way so many art forms of past decades have done.

Alex makes it clear in this post that he’s planning an extensive exploration–musical as well as legal–into this mashy business.  (If he’s already begun that beguine I can’t find it on his blog, which is to blog navigation what I am to Terpsichore.)

I hope he tells us when it’s over, and what the answers are.

Originally posted 2007-01-25 00:10:33. Republished by Old Post Promoter

Michael Atkins explains how ads that reinforce geographic indicators have their limitations.

Originally posted 2006-12-18 20:43:18. Republished by Old Post Promoter

… of brand managers, gang aft agley.

UPDATE: But wait, there’s… more?

Michael Atkins asks the musical question:  Where have all the good (rock band) names gone?

P.S:  Not here.

Originally posted 2007-05-21 18:21:57. Republished by Old Post Promoter

Ben Manevitz updates us on the Diane van Furstenburg “you stole my smock” litigation. Ben’s take: “As a litigator, I’m going to give everyone involved in any litigation the secret! the best piece of advice ever! Ready? Here: Shut Up!”

Easy advice to give, but darn it, I like to say “smock”!  Smock, smock, smock, smock, smock, smock.

Originally posted 2009-04-14 11:20:40. Republished by Old Post Promoter

Only Marco Randazza can put certain things in certain ways — and on those occasions when he’s actually right (like when he’s discussing law and not politics! ), man, he’s right on. Well, he’s right on today.

As Marco explains in his not-quite-safe-for-work post, a man called Morgan, whose name only ironically reminds us of an investment bank, posted what is at best a lame, and at worst a tinfoil-hat-special, gripe site about our benevolent rulers at Goldman Sachs. Morgan’s “mistake” — actually, the smartest thing he ever did by virtue of the big – firm, big – institution ham – handedness demonstrated here — was registering the domain names www.goldmansachs666.com and www.goldmansachs13.com — Goldman Sachs plus The Beast, of course, and Goldman Sachs plus unlucky-13 — so they would forward to his rant-a-thon. Let’s pick it up from the middle and relatively quotable part of Marco’s post:

With Morgan’s blog plodding along in obscurity, enter John A. Squires of Chadbourne and Parke, LLP. Now this guy has an impressive background: He was top of his class in law school, on his law school’s moot court team, on law review, and an Order of the Coif inductee. Sounds like a pretty smart guy, no? Smart enough to become co-chair of the intellectual property practice at a major law firm. Smart enough that he “is widely recognized in both the financial services and technology sectors as one of the country’s top experts on the issue of patent-eligible technologies.”

Nevertheless, he put his name to one of the dumbest trademark demand letters I have ever read. Go ahead, click it. If you practice trademark law, don’t drink any liquids while reading or you’ll shoot them out your nose as you’re laughing and then you might have to change your shirt.

This letter seems to anecdotally confirm two things I’ve preached for years:

1) Patent guys don’t necessarily know trademark law,

2) A lawyer who doesn’t understand public relations is only half a lawyer.

I’m just guessing here, but I’m reasonably certain that Mr. Squires did know better. This demand letter just screams “reluctantly written to shut a client up.” Patent lawyer or not, the guy had to know that his trademark claims were just plain stupid.

Not just “public relations,” but the magic of Internet-threat-letter-negative-leverage!

When will they ever learn?

More good stuff at Marco’s place, plus, in the comments, interesting insight on the legal career paths of the rich and famous.

UPDATE: “As of April 17, GoldmanSachs666.com has received more than 236,000 hits.’

Originally posted 2007-09-10 20:59:34. Republished by Old Post Promoter

Blawg Review #125 is at, and about the concept of, “Real Lawyers Have Blogs.”

A little pointy-headed? Maybe. Bit of the old inside baseball, perhaps? Perhaps.

But if you’re considering dipping a toe into the blawgy muck, there is some good larnin’ to be had.

Louis Vuitton Malletier and its lawyers demonstrate how to make sure a few seconds of what they say is trademark dilution get a lot less diluted–they’re suing Hyundai over this commercial played at the Super Bowl.  Now, concentrate:

I’m not trying to hide the ball.  Far from it; take a look below and to the right–there’s your tort right there.  Now Marty Schwimmer, who also picked up this story (and who has posted a copy of the complaint), demands of readers, “Spot The Lawsuit In This Commercial — (‘)(‘) <- me rolling my eyes.”  Is Marty right?  Is this civil action just an air ball?

The complaint is easy to make fun of, both as a legal matter and on sort of flat-footed “common sense” grounds.  (Come on, it’s just a second or two on the screen!  Come on, now everyone’s going to just see the commercial over and over again!)  But that’s not entirely the same as saying it’s indefensible.*  In fact, I think that while LVMH is shooting aggressively from beyond the three-point line, it is doing what it has to make sure its trademark rights don’t fade away.

Tarnishment -- Something might rub off?

First, though, let’s put the two dilution claims (federal and New York), which are the real meat here, aside.  As I will urge below, there is a colorable, and arguably very winnable, argument for them.  But first, the shootaround:  Yes, it is time for me to put on my Professor Pendatic hat, unable as ever to resist needling good lawyers who have clients I’d also like to have and fully aware of my own lack of game, about the double-dribbles in their submissions.

The technical foul here is the fact that, besides trademark dilution, LVMH also sued Hyundai on three other legal theories:  false designation of origin under Lanham Act’s section 42; common law trademark infringement under New York law trademark law; and infringement of LVMH’s registered trademarks.

A little practitioner’s hint:   The last count in a multi-count commercial complaint can be viewed as meritless, mere ballast, about 95% of the time.  I don’t believe in ballast, but lots of lawyers (about 95% of them) do.  And as a trademark litigator who often represents defendants, when I see that the registered trademark infringement claim is the last one in the complaint, that tells me, “Oh, good, so there’s no trademark infringement here, at least.”  And of course there isn’t; Hyundai doesn’t sell or offer either cars or basketballs bearing anything likely to be confused with an LVMH registered mark, plus a million other reasons.

Hey, wait though–what about the other two trademark claims?  How about the section 42 and New York unfair competition claims, which are counts three and four?  Well, sorry kids, but you can’t have three last counts!  Only one can be the lastest.  And big-boy trademark registration infringement, being usually the proudest and loudest thing you can sue an infringer for, as a matter of dignity obviously insisted on being discreetly tucked away at the end–damned to sitting next to the ad damnums but at least not exposed to the glare up front.

But if that’s the case, then why still throw in the other two non-registration-based trademark claims at all?

To answer that question, children, you’ll have to ask one of the other 95% of lawyers.

Now, having said all that, we are left with the dilution claims.  So what justification can there be for filing this lawsuit at all?

Well, what is dilution, after all?   Read More »

Originally posted 2009-03-26 11:03:23. Republished by Old Post Promoter

Virtually Blind, a blog by Benjamin Duranske focusing on legal issues in virtual reality, reports (via IBLS):

Second Life’s ‘Aimee Weber’ (Alyssa LaRoche) recently became the first avatar with a registered trademark. The application for the registered mark was filed February 18, 2007 approved for publication July 7, and published for opposition August 14. According to ‘Weber,’ no opposition was filed, and she plans to immediately begin using the mark. In a sea of often silly metaverse firsts, this one could well signal a trend. ‘Weber’ runs a respected design studio in-world, has one of the most recognizable avatars in Second Life, and literally wrote the book on Second Life content creation. And now she gets to wear “TM” bling too.

A trademarked [sic] avatar, though novel, shouldn’t really be a surprise. McDonald’s trademarked Ronald, so there is no reason an avatar — for many users, a computer generated representation of their brand — could not also be trademarked. The rather distinct appearance of avatar ‘Aimee Weber’ is indisputably identified with the brand. And ‘Aimee Weber’ is as much a Second Life icon as she is a person you chat with at a virtual coffee shop or hire for design work; the little “TM” just makes that official.

Well, isn’t it the ® that makes it official?  Why, “TM”’s aren’t official at all!  Anyway, I do appreciate the Ronald McDonald analogy.  But I just want readers to be clear that while Aimee Weber is essentially an alter ego for real person Alyssa LaRoche, by Ronald there isn’t really a traveling hamburger clown.  Take it from me.  They wouldn’t lie about why Ronald never returned my fan mail.

It does make you wonder if everyone’s “avatar” should be registered as a trademark, too, even if they’re not so virtual-worldy.  Brand equity’s not for nothing, you know!  So?

I wouldn’t lose any sleep over that.  Some of us are inimitable, and so are our animated versions.  Besides, as Alyssa LaRoche told Duranske, “It’s a general move to protect my brand. We haven’t seen any problems yet, but prior to the trademark [registration], we wouldn’t have been as well protected if somebody wanted to plaster my image all over an unrelated product.”  Right.  So, when we start seeing bad people passing off unrelated goods and services as those of LOC, we’ll have to consider our options.

Walter Olson is seeking “reports from the field” on the subject of law school clinics:

If blogging has been lighter than usual, one reason is that I’ve been racing forward on my new book on law schools and their influence, tentatively entitled Schools for Misrule: Legal Academia and an Overlawyered America, which is in the catalogue for Winter/Spring (a year hence) from Encounter Books. I reached first draft in December and am rapidly whipping that rough copy into something closer to final shape.

My original nickname for the book was Ten Bad Ideas from the Law Schools — and How They Changed The World. We decided to go with something a little more dignified, but the book still tries to answer the underlying question of why so many bad ideas — and certain kinds of bad ideas, especially — keep emerging from the law schools. . . .

One of my chapters takes up the now-ubiquitous phenomenon of law school clinics in which students represent outside clients, sometimes in “cause” litigation and sometimes not. I trace the origins of this movement (a big philanthropic push from the Ford Foundation made the difference), the resistance it met from law-school traditionalists and its eventual triumph, as well as some of its present-day manifestations, which are not always those foreseen by the circa-1970 visionaries who started the programs. The chapter is pretty good as is, I think, but I’d like to add a little more illustrative detail about the clinics, especially vignettes from the early years shedding light on what it was expected they would accomplish in changing society (a subject that isn’t as well documented on the web as I’d like). Responses can be made in comments or by email to editor – at – overlawyered – dot – com.

“I’d like to add a little more illustrative detail about the clinics, especially vignettes from the early years shedding light on what it was expected they would accomplish in changing society”–that’s certainly an interesting question.  Around 1970 I wasn’t even doing such a good job of changing my t-shirt.  But if anyone that crust does read this blog and has any insights, let Walter know.

Originally posted 2008-03-11 11:29:52. Republished by Old Post Promoter

Victoria Pynchon collects and reflects on some of the recent thinking about whether patent litigation makes any sense for anyone besides patent ligitators.

Originally posted 2005-03-12 23:26:00. Republished by Old Post Promoter

This is an important decision, called Heidle v. The Prospect Reef Resort, Ltd. and reported by the fine Internet Cases website. Read Evan Brown’s treatment. The bottom line: The mere fact that someone has an Internet website in a given jurisdiction doesn’t mean that you pull out the well-known analysis in Zippo Manufacturing Co. v. Zippo Dot Com, Inc. and start figuring whether that website is passive,” “active,” or “interactive.”

Not if it’s just a personal injury case, as it was in Heidle.

In other words, the widely held (not widely held by lawyers with an Internet practice but among others) belief that a Web presence gives rise to essentially world-wide jurisdiction for almost any other thing takes another hit. Not surprising, because the issue of personal jurisdiction is a constitutional one. Some of the Constitution must still be left.

Originally posted 2008-01-04 12:22:50. Republished by Old Post Promoter

Instapundit reports about England shutting down a blogger for “inciting racial hatred” — which is illegal.  At least it is when it’s against certain “races.”

In case you ever harbored any doubts about the wisdom of the American Revolution.

Originally posted 2005-09-02 11:51:24. Republished by Old Post Promoter

Here’s a “sneak preview” that was excerpted [when this item was first posted] from a paper to be delivered at Emory University’s Conference on Free Culture & the Digital Library in October 2005.  The Free Expression Policy Project. We get a little mention. The article, credited to the Free Expression Policy Project (FEPP) at the Brennan Center for Justice at NYU (no individual author appears to be named — that must be an oversight) is pretty darned interesting, too. Its conclusion:

Although FEPP’s research methodology was not scientific, and those contributing to the Chilling Effects database or participating in our survey, interviews, and focus groups were to a large extent self-selected, we can nevertheless draw some significant conclusions from the research.

First, whatever the precise percentage of meritless cease and desist letters may be, substantial numbers of them do state weak-to-nonexistent claims, or seek to suppress material that would qualify for a fair use or First Amendment defense. Recipients who do not acquiesce in the demands in these letters are often successful, and are not sued. Even without legal representation (and we found no strong correlation between legal representation and refusal to acquiesce in a copyright or trademark owner’s demands), a non-acquiescent response often ended the controversy. But despite the fact that cease and desist letters are often empty threats, many recipients are cowed into acquiescing, and the validity of their fair use or First Amendment defense is never tested.

Section 512 letters have markedly different effects. By conditioning immunity from suit on compliance, the statute creates very strong incentives for ISPs and search engine companies to remove material merely on the “good faith” representation that it is infringing. As Google’s experience with Scientology reflects, §512 has tremendous potential as a censorship tool for anyone seeking to suppress criticism. We saw other examples of this phenomenon in the take-down letters targeting the New York Times parody correction page, Durango Bill, Roger Loomis’s Mormon discussion site, the Chick cartoons parodist, and newsgroup postings about Star’s Edge International. The mere fact that in our typical year (2004), take-down letters greatly outnumbered cease-and-desist letters on the Chilling Effects site suggests how pervasive their use has become.

…

Increased community support and pro-bono legal assistance are also needed. The experiences of painter Joy Garnett, the National Debate blog, and fan sites such as Caroline in the City suggest that online communities can be critical in helping those targeted by cease and desist or take-down letters.

…

Accurate knowledge of fair use, awareness of its importance, and determination not to let it wither despite its unpredictability are essential elements of free culture, especially in the digital age.

I was not previously familiar with FEPP. Naturally, I liked this article; I’m very big on fair use.  Unfortunately, a look at their website is disappointing. They appear, like certain people we know, to be “First Amendment absolutists” — here objecting righteously to those who object to a “balanced” presentation of terrorism at the World Trade Center site, hysterically arguing that the exercise of editorial discretion with respect to an exhibit there amounts to “the stifling of all free expression at Ground Zero, ironically, [which] would accomplish just what the terrorists sought – a trampling of the very freedoms that form the foundation of our democracy.”

So, throughout the site, the theme is the old “censorship is bad; information wants to be free” theme you’d expect from the “Brennan Center” at NYU, without knowing anything else about it. Okay, so these guys are “copyfighters,” right? Well, not exactly. Also like certain people we know, my freedom to play with your copyrighted works — which is to be extended, for example, to those who sample music , or just plain steal it. This, however, doesn’t extend to the politically incorrect private use of copyright, such as in the case of the Family Entertainment and Copyright Act. That is to be opposed, not on copyright grounds, but because “”censorship under the guise of child protection has traditionally been, and continues to be, a convenient excuse for not educating children – about media, critical thinking, and moral values.” Not surprsingly, Internet filtering — almost reactively — is also objectionable.

Censorship? This is my house! The First Amendment has nothing to say about what I show my kids. Would the Brennan Center also object if I TIVO-fast-forwarded through the commercials to spare my six year olds exposure to Madison Avenue’s never-ended sexathon o’ salesmanship? Or is it an even bigger problem that (in fact) I don’t even have a TV in my house?

Disappointing, but not surprising. And while I disagree strongly with the silly “de-link Instapundit” movement (conservatives don’t believe in that sort of nonsense), it’s not hard to understand why a lot of people are sick and tired of the hypocrisy of this Greenwich Village brand of whose-ox-is-being-gored, would-be First Amendment “zealots.”

Doctors (J.D.) Detroit?

Should a law school be tendering seven figures of money to a minor league baseball team for stadium naming rights?  That is certainly a novel question.

I tackled the whole concept of branding, memory and stadium names in the context of the Mets’ Citi Field deal a few years ago–but a bank is one thing.  Heck, these guys know how to make record profits just by threatening to go out of business!  So who am I to say?

But a law school?  That’s something I know a little about!

And… with all due respect… should the law school that does that be Thomas M. Cooley Law School in Michigan?  Well, perhaps if it would be any school it would be Cooley, which has always marched to the sound of a different drummer.

A very, very different drummer.  I once wrote an article, or perhaps just a short roundup-type item, about Cooley when I was contributing editor for Student Lawyer magazine, but I can’t get my hands on the cuneiform tablets just now.  I do remember that it was the school that actually did things “the old fashioned way”–they actually admitted two or three times the number of students who were really going to make it through law school, and they actually kicked out people who couldn’t cut it.  So, yes, they have always been very funky, original and daring over there.

And in that context, now let’s see the Wall Street Journal Law Blog and the stadium story:

According to the NLJ, the law school will pay just shy of $1.5 million to the Lansing Lugnuts (a single-A affiliate of the Toronto Blue Jays) in return for the naming rights for 11 years. What used to be called Oldsmobile Park is now, just like that, Cooley Law School Stadium.

Much of the coverage was, well, critical of the decision in a way that didn’t necessarily seem unfair. To summarize the skeptics’ main question: What’s a law school not exactly at Harvard’s level doing throwing money at a baseball stadium in the middle of a severe economic downturn?

For a little help, we chatted today with Don LeDuc, the dean of the law school to ask him what about the deal, and to give him a chance to answer his critics.

Hey Don. So tell us about the deal.

The agreement we have with the Lugnuts has two elements, a marketing element and also an amenities element. Along with the name recognition, you also get some amenities at the park. We’ll be doing a sort of extended version of what we used to do at Comerica Park, where the Tigers play, in which we matched up students with alumni working in Detroit and all went to a ballgame. We’ll be doing that with the Lugnuts too. We’ll also do some community outreach at the stadium, too, in which we’ll take kids from Lansing to a game. Read More »

Originally posted 2008-09-26 12:43:33. Republished by Old Post Promoter

Let’s get apolitically political here (via Instapundit, Mr. Diversity himself):

An informal national coalition of Internet pioneers and users with widely divergent political views will issue a letter Friday morning calling on John McCain and Barack Obama to open the remaining debates completely to the public domain.

As Lawrence Lessig, a law professor and letter-signer put it, “Copyright, in my view, is essential and important, in some places. This isn’t one.”

Given how pre-programmed candidates are at debates, the issues won’t be as compelling as they are regarding other copyrighted works, but the principle at stake is still an important one.