Archive by Author

In your head

Originally posted 2008-02-27 23:49:29. Republished by Blog Post Promoter

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.”

confusion.jpg

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

Originally posted 2007-11-27 15:03:27. Republished by Blog Post Promoter

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

Originally posted 2007-10-19 12:32:22. Republished by Blog Post Promoter

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

Originally posted 2008-01-30 20:27:13. Republished by Blog Post Promoter

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

Originally posted 2007-08-31 00:28:28. Republished by Blog Post Promoter

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?

Originally posted 2008-01-31 11:43:10. Republished by Blog Post Promoter

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

Originally posted 2007-10-23 00:22:32. Republished by Blog Post Promoter

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.

Hey, 19

Originally posted 2008-02-02 20:27:33. Republished by Blog Post Promoter

product-19.jpgMore on the dumb trademark-abuse story of the season (we’ve dealt with the SUPER BOWL and trademark overkill here and here already). Now there’s this SUPERcilious beaut [link to 2008 story is gone — RDC]:

After the Lakers won two straight NBA titles in the late-80’s, their coach Pat Riley trademarked the phrase “three-peat” so he could cash in on merchandising associated with their third straight crown. The Pistons took them out in the Finals, though, and Riles had to wait for the Bulls to achieve the feat before seeing any return on his craftiness.

The Patriots spit on that history. The New York Post reports this morning that the team has filed paperwork to patent trademark the phrases “19-0″ and “19-0 Perfect Season” in advance of this Sunday’s Super Bowl matchup with the New York Giants. And, lest you think they waited until they were in the title tilt before moving forward, the team actually filed the applications three days before the AFC Championship game was played. The Pats say that the move is strictly business and not motivated by arrogance.

Nor by the remotest understanding trademark law. We’ve already dealt with the sorry concept of seeking registration of free-floating catchphrases and similar nonsense. Hat tip to Nick Daly, who writes, “I was watching NY1 this morning and Pat Kiernan covered this story, saying “if they can trademark a number, then I want 5.” The number “5,” or five numbers? After all, if you can own the trademark to any you shouldn’t have a limit. We’re not running out of them or anything — unless you including running out of “fives,” 19’s or, perhaps, googols.

UPDATE:  Read and enjoy this law review article:  “OPPORTUNISTIC TRADEMARKING [sic] OF SLOGANS: IT’S NO CLOWN ISSUE, BRO.”

Must-read IP

Originally posted 2007-12-17 17:46:21. Republished by Blog Post Promoter

The TTABlog designates as “Recommended Reading” Scot Duvall on the The Trademark Dilution Revision Act of 2006.  From John’s description, he makes the Act all kinds of “balanced” and stuff.  Maybe I’ve been too harsh.

Foiled again

Originally posted 2007-10-10 23:53:07. Republished by Blog Post Promoter

The TTABlog mourns the sporting demise of the Chicago Cubs’ season, alluding to the “curse of the Billy Goat”:

Now, I’m not sure I follow exactly — John Welch (left) being a proper Bostonian and all — but I have Marty Schwimmer (center) figured for a Mets fan (if anything)… and that’s harsh enough. And me, well, I am a Yankees fan, son of a Yankees fan. Even the billy goat beard (long gone) didn’t prevent the bad baseball demons of subterranean Chicago from attaching themselves to me for deposit in the Big Apple.

So far so good for Welch, then; not so good for us New Yorkers. Whatever bad mazal we brought from Chicago, well, somehow, so far, it hasn’t followed John.

Reproducing book covers?

Originally posted 2008-02-18 22:41:24. Republished by Blog Post Promoter

Nolo’s Patent, Copyright, and Trademark Blog engages a common type of inquiry:

Dear Rich: I have a question. I’m starting a literary website and I’d like to put up a lot of book covers. Do I have to get permission from the book publishers?

I’m so glad you asked.

And I’m so glad Rich Stim answered! You (and your clients) will be too.