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New York ethics rules trimmed back

Chinatown and north, Manhattan

Originally posted 2007-07-27 09:47:19. Republished by Blog Post Promoter

PI lawyers, in the vanguard, push back at the new New York disciplinary rules on attorney advertising — which were already considerably more modest than first proposed — and win:

Alexander & Catalano, the Syracuse, N.Y., personal injury firm that challenged the constitutionality of the advertising restrictions, had previously run ads calling its lawyers “heavy hitters” and showing them towering over downtown office buildings or sprinting at impossible speeds to help clients….Northern District of New York Judge Frederick J. Scullin ruled that the state had largely failed to show that its wholesale prohibitions of certain kinds of content had advanced its interest in protecting the public from misleading lawyer advertisements. Moreover, he said, the state had failed to show less onerous means could not achieve the same ends.

“Defendants have failed to produce any evidence that measures short of categorical bans would not have sufficed to remedy the perceived risks of such advertising being misleading,” the judge wrote in Alexander & Catalano v. Cahill, 07 Civ. 117. “There is nothing in the record to suggest that a disclaimer would have been ineffective.”

Along with the bans on nicknames and nonlegal characteristics, prohibitions on active client testimonials, portrayals of judges and fictitious law firms and the use of Internet pop-up ads were also struck down as unconstitutional in Scullin’s decision.

Just imagine how the original proposed changes would have fared.  That doesn’t mean that firm monikers such as “heavy hitters” aren’t just awful.  But if you want tacky lawyers, that should be your choice, regardless of how horrifying it is to the wig-and-breeches set (like LIKELLIHOOD OF CONFUSION).  The profession isn’t what it used to be, after all.

Getting intellectual about intellectual property

Originally posted 2008-02-08 10:19:17. Republished by Blog Post Promoter.

Eric Schmidt:

Richard Stallman, founder of the Free Software Foundation, and creator of the GNU Public License (GPL) was also present. Stallman is known for his outspoken political beliefs and his attention to semantics. He … took issue with “intellectual property,” a term he considers propagandistic and misleading.Stallman’s argument is that copyright, patents, trademark, and trade secret laws are quite different from each other. Copyright and patent law both spring from the same clause in the Constitution, while unfair competition (trademark and trade secrets) derive from common law and statute. Perhaps Stallman is concerned that use of the term “intellectual property” is one of the reasons we now have sui generis protection for boat hull designs and plants. The more broadly the term is used, the more broadly the right of legal protection is interpreted, and the more likely courts are to expand the scope of property rights in the expression of ideas. In a conversation after the panel discussion, he forwarded the notion that the term also distorts public understanding of the separate concepts involved.

On that last point about public understanding, Eric, I wouldn’t sweat it.  Most people have no idea what we mean by the term, and I’ve even had attorneys ask me “what’s new these days in intellectual properties?”  But I do agree with Stallman that the phrase is misleading, and really loaded — I don’t know if I’d go so far as to say propagandistic! — with meaning it does not deserve.  Not only is this because intellectual property law contains so much that is so stupid, either, but merely because so much of what is protected is something quite undeserving of being associated with the lofty concept of intellection.

The eBay Euro-crackup

Originally posted 2007-12-04 11:51:11. Republished by Blog Post Promoter

Associated Press:

France’s auction watchdog is taking eBay to court, arguing the Internet auctioneer does not do enough to protect consumers.

The regulatory authority, called the Council of Sales, said Monday that eBay’s French site should be held to the same standards as France’s auction houses, which need a special permit from authorities, partly to ensure consumers are protected.

In a statement, eBay’s French branch,, said the legal action was “totally unjust.” The French site has argued for years that it should not be subject to the same regulations as France’s auctioneers.

It has argued for years, and profited for years, on the sale of counterfeit merchandise.  American courts may not care, but these days Europe matters in the world of commerce.  eBay has to start paying serious attention.

Manchester Cathedral, you’re driving me crazy

Originally posted 2007-06-14 11:42:55. Republished by Blog Post Promoter

Manchester Cathedral, Winchester Cathedral — same thing. We’ve written in the past — well, not us, there is only just me here; sorry — about the dubious concept of trademark rights in building exteriors. Now Bill Patry writes about a proposed copyright lawsuit by the Church of England, which does not object to violence against Jews, who have it coming to them, but gets the vapors over virtual gunfights being depicted in its magnificent hallowed (and hollow) halls:

Manchester Cathedral

Various UK sources ran stories yesterday about the Church of England’s pique over Sony’s Playstation 3 alleged replication of the interior of the Manchester Cathedral as a dropback in a gunfight in the game “Resistance: The Fall of Man. (HT to Bruce C. in the frozen north). Andrew Mills has a fantastic, very detailed piece on the story, here, including a YouTube link to the sequence in question.

The Church of England has threatened to sue Sony after the Japanese company used Manchester Cathedral as the backdrop to the gunfight in the PlayStation 3 game Resistance: The Fall of Man.

It could have a case, lawyers say.

In general, [however], the outside of a well-known building is not considered to be protected under the law, Tom Frederikse, an intellectual property specialist with Clintons, the law firm, said.

Patry points out that under Section 120(a) of the Copyright Act, U.S. law, which does protect copyright in archtectural works, nonetheless explicitly permits “the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.” He notes that the question of whether the interior of a building could be “ordinary visible from a public space” is one he had not considered, and he’s considered a lot. Of course the building is publicly accessible, as he points out, but it seems a bit churlish to reward the building’s owner for making its space accessible by deeming that space itself “public” and thereby denuding him of rights he otherwise would have.

Well, that’s American law, anyway. Read More…

In your head

Rebecca Tushnet:

Trademark dilution is a cause of action for interfering with the uniqueness of a trademark. For example, consumers would probably not think that “Kodak soap” was produced by the makers of Kodak cameras, but its presence in the market would diminish the uniqueness of the original Kodak mark. Trademark owners think dilution is harmful but have had difficulty explaining why. . . .

Though the cognitive theory of dilution is internally consistent and appeals to the authority of science, it does not rest on sufficient empirical evidence to justify its adoption. Moreover, the harms it identifies do not generally come from commercial competitors but from free speech about trademarked products. As a result, even a limited dilution law should be held unconstitutional under current First Amendment commercial-speech doctrine.

Tell it, Rebecca! This is from the abstract of an article in the Texas Law Review called — bless her! — “Gone in 60 Milliseconds: Trademark Law and Cognitive Science.”


So in the article itself, does Rebecca at least suggest we apply this reasoning to the utterly bogus concept of “initial interest confusion”?! YES!! I have been saying this for years: The concept of initial interest confusion is utterly unsupported by anything remotely looking like empirical evidence. So will judges addicted to this nonsense care now that a scholarly article has been written to make this argument? Uh…. um…. maybe. Some day.

I’ll certainly give them the opportunity.

So there is hope, no? Always bright-eyed hope. Hat tip to the Neuroethics and Law Blog.

Ruff times for Vuitton

Chewy Vuitton

IP Law Chat reports that LVMH has lost its appeal (decision here) of the “Chewy Vuitton” decision. Here’s an interesting sidelight, and one that may have reverberations beyond this case:

[T]he strength and distinctiveness of the LOUIS VUITTON mark worked against Louis Vuitton in the context of its dilution by blurring claim, making it more likely that a parody (at least an obvious one) will not impair the distinctiveness of the famous mark.

Clients like this — Europeans — must be foaming at the mouth about this one, because European “industrial property” law works entirely differently. But the Fourth Circuit didn’t even throw LVMH a bone.

UPDATE:  I’m reminded that I predicted a reversal.  Me, wrong.

Biting the hand that feeds you

The Trademark Troll, a blog written by former Harley Davidson IP counsel Dick Troll, comments on the S&L Vitamins case:

Almost every case involving the sale of unauthorized but genuine goods is a case where a brand owner is asking the courts to become an enforcer for the brand owner – against the brand owner’s own customers!!…

If the Internet retailer is success full then SOMEBODY is ordering more tanning lotion from Australian Gold. So what does Australian Gold do? Dig deeply into the ordering patterns of its distributors to find anomalies? Or book the orders. That is, until retailer and distributors who are not part of the informal distribution channel start to complain.

Nice perspective.

UPDATE: “Suing your customers and dismantling your marketing network.”

IP piggies

Ars Technica:

Not content with the current (and already massive) statutory damages allowed under copyright law, the RIAA is pushing to expand the provision. The issue is compilations, which now are treated as a single work. In the RIAA’s perfect world, each copied track would count as a separate act of infringement, meaning that a copying a ten-song CD evenpig_2_md.gif one time could end up costing a defendant $1.5 million if done willfully. Sound fair? Proportional? Necessary? Not really, but that doesn’t mean it won’t become law.

The change to statutory damages is contained in the PRO-IP Act that is currently up for consideration in Congress. We’ve reported on the bill before, noting that Google’s top copyright lawyer (and the man who wrote a seven-volume treatise on the subject of copyright law), William Patry, called the bill the most “outrageously gluttonous IP bill ever introduced in the US.”

Out. Of. Control.

Should we be doing something?

More digital law

It’s the fingers again. By now you heard about the dispute about the “thumbs up” “trademark” claim being bandied with respect to Roger Ebert, the movie reviewer. A trademark in “thumbs up”? Yes, I was mighty skeptical. Now the Chicago Tribune interviews IP lawyer E. Leonard Rubin (e-ven his name says high-tech IP!) and he explains it all:

Q: So if Richard Roeper or his new semipermanent guest host, Robert Wilonsky, flashes a thumbs-up sign, Ebert could sue him?

A: In the opinion of intellectual property/entertainment lawyer E. Leonard Rubin, no. Ebert and Siskel trademarked the “thumbs up”/”thumbs down” catchphrases in relation to movies, and “Two Thumbs Up” has become a powerful identifier for the show as well as a potent marketing tool for the studios. But the gesture of raising or lowering thumbs to indicate approval or disapproval dates back to ancient Rome, so it’s not original and cannot be trademarked.

I agree with E. (I’d like to think someone of his stature wouldn’t use “trademark” as a verb and will ascribe that to some editor at the Trib coming back to the office after a long lunch across the street.) So what about the fuss we made a while ago about the Jay-Z / Diamond Dallas silly hand gesture dustup? Would the same reasoning apply?

It would — only the result might well be different, because (despite the sarcasm displayed at the time here) unlike the thumbs up / thumbs down gesture, the particular combination of joints at issue in the rapper-wrestler case seems relatively novel and, for its utter incomprehensibility, pleasantly arbitrary — as a good trademark should be.

Bad for the Juice: The TTAB’s phantom tag

New York Yankees LogoNo, not that Juice.  He’s got enough trouble already.  (And no, not the Juice that has this guy all in a froth either.)  I write, rather, about the too-clever-by-half would-be parodists recently sluiced through the ringer by a family-size panel of the TTAB in a case reported by, of course, John Welch, to wit:

An augmented panel (seven judges) of the TTAB sustained an opposition to registration of the mark THE HOUSE THAT JUICE BUILT for T-shirts, baseball caps, hats, jackets and sweatshirts, the mark “THE HOUSE THAT JUICE BUILT” for mugs, and the design mark shown immediately below for “T-shirts, baseball caps, hats, jackets and sweatshirts,” finding the first two marks likely to cause dilution-by-blurring of the Yankees’ registered marks THE HOUSE THAT RUTH BUILT and the third likely to dilute its “Top Hat” design mark. The Board declined to consider applicant’s parody defense in its Section 43(c) analysis, because applicant asserted an intention to use the opposed marks as source indicators, which by definition is not a noncommercial use or a “fair use” exempted from a dilution claim. New York Yankees Partnership v. IET Products and Services, Inc., Opposition No. 91189692 (May 8, 2015) [precedential].

Juice BuiltThere’s a lot going on here, and John methodically mows through this Murderer’s Row of trademark jurisprudence at his post.  What John is too delicate to mention is the central gag here:  The house that “juice built,” see, is the house that “juice” — steroids — built.  As the decision notes,

Applicant makes clear that it selected its THE HOUSE THAT JUICE BUILT mark to evoke Opposer’s famous mark for parodic purposes.  Applicant’s President, Steven Lore, testified that its marks “play off of the idea that steroids are a player on MLB teams and the Yankees.”

“A player…” Lots of inside-baseball type lingo in this case.  But by now, hopefully, you get the joke.  In any event, I recommend John’s post just to help you remember a whole bunch of trademark law or to learn what you never did, as I do whenever I read his blog. I was, however, particularly interested in this bit: Read More…

Dimming star?

Ann Althouse:

Starbucks used to seem like a luxury brand, and now it feels like a fallback when you can’t get to the real thing.

Ouch. (Via Instapundit.) Ann sees it happening in the automated coffee machines in the shops. But could it have to do with branding incoherence typified by this?
Cobranding hell

Goldman on Ticketmaster

Eric’s Technology & Marketing Law Blog asks whether “the public interest got screwed” in the recent big win for Ticketmaster down in Alabama against RMS, a company whose software outsmarted Ticketmaster’s sales system. Copyright infringement was a lynchpin of the holding.

Ticketmaster-LogoI was once consulted on a similar case and I was hoping that it was that same former client that lost this one — because the son of a gun stiffed me on my fee! But because of that experience and the analytical framework I ended up working through while considering similar issues, I’m sympathetic to the defendant there, and to Eric’s take on it, too:

It’s easy to point at RMS and its customers as the bad guys. After all, they are trying to get an unfair advantage in the first-come, first-served allocation of scarce tickets for their economic benefit, with the result that later comers have to pay more to get the same tickets.

But what about Ticketmaster’s role in this situation? They haven’t designed a technologically gaming-resistant allocation of tickets, so they need legal help to solve that deficiency. I also remain suspicious about Ticketmaster’s incentives here, both in setting prices and in policing against ticket allocation gaming. Their motives may not be nearly so consumer-friendly as they try to portray.

Well, no company is as consumer-friendly as it likes to portray itself. But Ticketmaster? Go ahead and Google it. It’s not pretty. On the other hand, is a company really obligated to “design[] a technologically gaming-resistant” business model before it can have recourse to the law to enforce its rights? I don’t think Eric means that, either. Read, as they say, the whole thing, though.