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Fishy business

Originally posted 2008-02-10 23:19:28. Republished by Blog Post Promoter

Funny things happen to trademarks in the Casbah.  John Burgess at the Crossroads Arabia blog has a story about a recent incident of Saudi Arabia’s religious police overplaying their considerable hand in connection with the arrest of a Saudi woman for having coffee with a colleague at Starbucks.

Not our topic.  But this aside did grab me, considering the special attention Starbucks and its trademark adventures have gotten on this blog over the years:

Starbucks and the religious police have a bit of a history. When the company first arrived, its logo of a mermaid caused some consternation because some thought they could see breasts beneath all that hair. To avoid problems, Starbucks came up with another logo, a seahorse. [I do wonder how the police reacted when they learned that male seahorses give birth! Talk about ‘gender bending’!!] By 2003, however, the mermaid was back on the signs, cups, and napkins. What happened to occasion that, I haven’t a clue.

Perhaps she swam her way into their hearts, or their coffee cups.  Or, more likely, the heat was off — at least for a while.

Now the heat is back, albeit on questionable grounds.  You can be sure we will milk the story here for all it’s worth.

UPDATE:  Oddly enough, this story has perked up once again.  According to the And Far Away blog, the 1992-2010 Saudi Starbucks logo was not a seahorse, but this “a crown swimming in the sea” — here, you take a look:

The real story, though, says Roba Al-Assi, is the “chadorable” logo Starbucks al Saud is about to switch to — or, which, as she says in the post, she can only imagine….

I’m not sure all her commenter’s “get it” — maybe they hadn’t had their first cup yet.

NFL punts in “Big game”

Originally posted 2007-05-25 13:34:06. Republished by Blog Post Promoter

The NFL is a lot of things, but I never thought it was stupid. It turns out that it isn’t. The Sports Blognfl.jpg reports:

Remember that stupid effort by the NFL to trademark the phrase “Big Game,” even though everyone knows the phrase has, for more than a century, been used referring to the Cal-Stanford rivalry?

Well, the NFL has dropped its bid.

Smart.

UPDATE:  “Repeat after me: TRADEMARKS ARE NOT “WORD PATENTS”

Smocking it out

Originally posted 2007-05-21 18:21:57. Republished by Blog 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.

“Criticizing A Trademark Is Not Trademark Infringement”

Originally posted 2007-09-29 21:25:32. Republished by Blog Post Promoter

It’s free speech. This is a big step forward:

In a recent example of just how bizarre [trademark overreaching] has become, there was apparently a dispute over the trademark of the word “Freecycle” that’s been used by groups who promote reusing stuff that would otherwise be thrown out. There was an attempt to [register a] trademark [utilizing] the term, but not everyone was happy about it. One guy put up a website protesting the idea to [register] the term, and he got sued for trademark violations in using the mark in his criticism. Clearly, that’s way beyond the consumer protection purposes of trademark — but a district court actually agreed with the trademark holders, saying that the guy violated trademark law in “disparaging” the trademark. Luckily, the [9]th Circuit appeals court has now overturned the ruling, noting that there is little to no chance of confusion here over the mark. More importantly, the court pointed out that there is no such law against “disparaging” a trademark. That’s a good thing, too, or pretty much all criticism would be outlawed.

Thank you, Ninth Circuit. What’s astonishing, depressing and pathetic is that the mark owners won at the trial level. That’s the level at which small- and medium-sized business and individuals get slaughtered every day.

More here on this story.

Unlocking DRM in Switzerland

Originally posted 2007-12-02 22:50:06. Republished by Blog Post Promoter

Boing Boing:

Switzerland’s government has silently adopted a brutal copyright law based on America’s failed Digital Millennium Copyright Act — but with 50,000 signatures, the law can be reversed.

Switzerland’s new law criminalizes breaking digital locks — circumventing “digital rights management” technology — and telling other people how to break those locks. This means that even when you have the right to access a song, video, book or document, no one is allowed to show you how to get at the data. If the law says you’re allowed to — for example — convert a song you bought on iTunes to play it on a non-Apple player, you still can’t do so, because no one is allowed to make or sell or even give away a tool that helps you do this.

Because of Switzerland’s principal of direct democracy, this law can be overturned if 50,000 Swiss citizens sign a petition asking for it to be reconsidered. Here’s a petition that starts the ball rolling. Tell your friends! Link.

I mean, it’s Switzerland. They’re famous for their secrecy, their chocolate, their cheese. Leadership on intellectual property issues? Not so much, I think. But the story does point up one thing: DRM, and most of the IP regime enacted by legislatures in thrall to Hollywood, record companies and the like, is profoundly unpopular if it’s not ignored entirely by the populace.

Keyword advertising: Big IP pushing hard

Originally posted 2008-01-30 12:38:15. Republished by Blog Post Promoter

Paul Alan Levy has brought my attention to this development, which he rounds up at the Consumer Law & Policy Blog:

Corynne McSherry and Eric Goldman have posted a timely joint warning about an effort within the Trademark Litigation Committee of the American Bar Association to put forward a series of resolutions that are apparently designed to revive the hitherto unsuccessful litigation efforts by trademark owners to prevent their competitors (and occasionally critics) from using keyword advertising and similar techniques to promote comparative and critical advertising on search engines. Because of the important consumer benefits from rules that protect the ability of businesses to engage in truthful comparative advertising, Public Citizen has litigated that right over the years in a line of cases running from Virginia Pharmacy Bd. v. Virginia Consumers Council to our current cases challenging bar rules that unduly limit lawyer advertising in Florida and New York. . . .

I have participated in a number of bar meetings related to this issue, and the trademark owner interests on the plaintiff side of these cases admit that newspaper ads, billboards, and product placement would not violate anybody’s trademark. They have had a great deal of trouble, however, explaining why keyword advertising is any different from a trademark perspective.

Owners of “high equity” intellectual property including trademarks want nothing more or less than ownership of trademarks as rights in gross, European-style, meaning in part that nominative fair use or any fair use at all would be written out of American trademark law — along with some pretty important parts of the First Amendment. And that, of course, is the explanation.

Bad law. Bad.

Originally posted 2007-05-09 17:15:51. Republished by Blog Post Promoter

The HumanityEric Goldman picks this one up – lobbyist to Utah official:

“I don’t think they had thought it through, in terms of how it will affect the consumers’ interests,” he said. “We told them we’re not going to comply–we’re going to sue. They said, ‘Don’t sue–we get it, we’ve gone too far. Let us see if we can fix it or repeal it.’ “

These men can only be talking about one thing: The Utah Trademark Protection Act. Which can’t make itself go away too fast.

Famous marks doctrine dunked again

Originally posted 2008-03-03 11:13:08. Republished by Blog Post Promoter

Las Vegas Trademark Attorney reports that the Second Circuit has taken the “advice” of the New York Court of Appeals and rendered a final decision in the BUKHARA “famous marks doctrine” case.  Writing about the original Second Circuit opinion from last year, he says:

The court even acknowledged that its decision to reject the “famous marks” doctrine conflicts with the Ninth Circuit’s decision in Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d 1088, (9th Cir. 2004) which recognized the “famous marks” doctrine with respect to federal trademark rights, and goes against famed trademark treatise author J. Thomas McCarthy, who has apparently called the decision “embarrassing” (see write-up by Seattle Trademark Lawyer and contrasting write-up by Likelihood of Confusion). This circuit conflict alone leads some (myself included) to believe that a grant of certiorari from the U.S. Supreme Court is in the future.

Yeah, contrasting! It would be great if the Supremes would take this up.

Public Citizen pushes IP overreach back

Originally posted 2007-05-25 00:29:52. Republished by Blog Post Promoter

Greg Beck of Public Citizen writes in with litigation news (I’ve added the links):

Public Citizen filed a motion to dismiss a lawsuit in Florida by two affiliated informercial companies that are attempting to shut down negative reviews of their day trading software on the websites InfomercialRatings.com and InfomercialScams.com. The companies claimed that running a website where consumers can post reviews of their products constitutes trademark infringement and a variety of other wrongs, and sought triple damages and attorneys’ fees against the site’s owner. In its motion to dismiss, Public Citizen argues that the Arizona-based website operator is not subject to jurisdiction in Florida, that the websites are protected by the First Amendment, that posting reviews is not trademark infringement, and that the Communications Decency Act protects a website owner from liability for what users post on the site.

Well, yeah.  Especially these two:  “the websites are protected by the First Amendment, [and] posting reviews is not trademark infringement.”  Motion to dismiss?  I hope there’s a motion for sanctions in the pipeline.
It’s not infrequently possible to blind judges to what’s really going on by flashing a bunch of trademark registrations in front of them, usually in a big fat Exhibit A to a complaint.  Small businesses can’t keep up with the cost of defending their litigation activities, and are getting hammered by IP overreach.  This is one right-wing nut saying, thank God for Public Citizen on this issue.

We make those?

Originally posted 2007-05-17 10:52:29. Republished by Blog Post Promoter

Manufacturing

When is too much quality control over licensees a bad thing? When a trademark licensor gets sued for a defective product with its trademark on it. The trick, according to this article by two Chadbourne attorneys, is to exercise enough to quality control to appropriately manage your goodwill, without having liability imputed to you because of your supposed hands-on involvement.

Damaged China

Originally posted 2008-02-09 22:30:28. Republished by Blog Post Promoter

Michael Atkins looks at how China now calculates trademark infringement damages.

“I didn’t make him for you”

Originally posted 2007-03-01 14:25:14. Republished by Blog Post Promoter

Google is not a utility. Or an agent of the state, or a thing that owes anyone anything except to the extent they pay for it. At least for now. Eric Goldman has the decision from the U.S. Court for the District of Delaware, and the writeup.

UPDATE: Unrelated, but related:  the Google Censorship FAQ.