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Cease-and-Desist letters as self-executing copyright bombs

Originally posted 2007-10-13 23:50:07. Republished by Blog Post Promoter

Techdirt reports (thanks, Pennywit!) on a law firm that tells recipients of its questionable “C&D” letters that if they dare post them, they’ll be liable for copyright infringement. This is the law firm, and this is the letter. And this is the response. (And here’s the definitive treatment, via the Citizen Media Law Project).

A very good lawyer taught me, as a young pup, that you should never put anything on your legal stationery you’re not prepared to use, or see the other side use, as an exhibit to a motion — i.e., ask yourself, “What will the judge think when he reads this?” Now the question is a lot broader, as is the advice: Don’t write a so-called “lawyer’s letter” that you’re not prepared for the whole world to see.

Some more homey advice: Don’t make threats you can’t back up. And don’t try making a bomb just to have it blow up in your face.

UPDATE:  The other shoe drops.  Are you moved?  Pennywit writes:  “I’m actually quite surprised at the intense personal tone of parts of it; wouldn’t even a minimum amount of professionalism mandate a certain detachment?”

TTABlog Celebrates Third Anniversary

Originally posted 2013-05-13 23:09:01. Republished by Blog Post Promoter

Three years of KEEPING TABS ON THE TTAB® — well spent, John Welch!

Bad for the Juice: The TTAB’s phantom tag

Originally posted 2015-05-13 15:50:58. Republished by Blog Post Promoter

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…

Kissing trademark rights goodbye?

Originally posted 2008-05-25 19:50:54. Republished by Blog Post Promoter

Hershey muffin pan


Eric Johnson‘s Pixelization blog has a sweet insight into a sticky trademark mess that Hershey’s could be, theoretically, getting itself into:

It’s a Hershey’s-brand three-compartment silicone muffin pan. When you bake muffins in this pan, they come out – adorably, of course – in the shape of oversized Hershey’s chocolate bars – complete with the Hershey’s name and logo intaglioed in the shape of the finished muffin. The imprint of the Hershey’s name and logo is substantially the same as what one finds on a Hershey’s milk chocolate bar, after the foil is unwrapped.

Clearly, if you buy this muffin pan, there is an implied license to use it to make muffins with the Hershey’s logo. That is, there is an implied trademark license. But, as you might expect, Hershey’s exercises no control over the muffins you make with their logo in the pan you purchased.

Thus, this looks like a case of “naked licensing” – a fast way for a trademark owner to be involuntarily stripped of trademark rights.


“Intaglioed” — nice! But, get it? You’re making stuff that officially, permissively, persuasively says HERSHEY’S on it in official lettering and the usually IP-crazy nuts over Hershey’s have no idea what on God’s green earth you’re putting out there with their name on it! Eric elaborates:

The packaging for the muffin pan – identified as a “Hershey’s Licensed Product” – contains this legend: “THE HERSHEY’S TRADEMARKS AND TRADE DRESS ARE USED UNDER LICENSE.” This prophylactic spray of legalese is steeped in irony. How could Hershey’s put such care into making sure the muffin pan manufacturer had a license and would declare the same, yet witlessly end up issuing a license to all muffin-pan buyers to start churning out food items under the Hershey’s brand?

Ironic, indeed. My first inclination is to say, “Aw, come on!” But he’s right, isn’t he? There’s no limit on how much stuff you can put out with your official Hershey’s trademark-imprinter-on-food-thingy; indeed, how could they place a limit on the consumer’s use? And nowadays, corporations and “IP equity owners” don’t ever just have a little fun with trademarks, or let anyone else do so, either — precisely because doing so just might be construed as abandoning one’s rights!

As Eric points out, the irony, again, is that this device is meant to act as an affirmative brand-building device. Of course, in the scheme of things, it just may be shown to be a whimsical, fun kitchen toy that “no reasonable person” would think was a license to manufacture competing products with the HERSHEY’S mark.

Maybe. But Hershey’s would certainly have it coming to them if someone asserted this this as proof of abandonment [UPDATE:  or, as Rebecca Tushnet suggests, “self-dilution”] as a defense to some kind of infringement action. One can imagine such a defense at least raising a fact issue for purposes of avoiding a summary judgment or defeating an easy likelihood of success showing on an application for preliminary injunction. It would be interesting indeed to demonstrate too that Eric’s example is not the only one of Hershey doing more or less the same thing with its (great) food-borne trademarks. So, you never know.

The chocolate’s too darned sweet, too.

Counterfeit Chic: Knockoff News 67

Originally posted 2010-08-10 17:08:47. Republished by Blog Post Promoter

Read it and laugh. Or cry. Definitely laugh or cry.

Then read this really good article on Counterfeit Chic which stands for the proposition that designers shouldn’t use their own names on their labels. Then laugh. Or, cry.

Update on Lady Voldemort

Originally posted 2011-09-09 10:52:08. Republished by Blog Post Promoter

We first wrote about her lawsuit against a fansite operator here. Sam Bayard has the latest. 

Twelve commandments?

Originally posted 2007-05-08 11:37:14. Republished by Blog Post Promoter

Something — someone? — called Aviva Directory, or Directory Aviva, has posted an article called “12 Important U.S. Laws Every Blogger Needs to Know.”

It’s quite good. Hat tip to Walter Olson.

Eat your words

Originally posted 2007-10-23 00:07:45. Republished by Blog Post Promoter

Or, rather, someone else — who can really use a meal — will.

Piggy Lady Rowling

Originally posted 2007-11-01 17:01:29. Republished by Blog Post Promoter

Dudley_eatingBill Patry is on the mark regarding the Harry Potter magnate’s lawsuit against Steve Vander Ark, a fellow who dared publish a print version of a popular Harry Potter compendium. First, a quote from Rowling, the Patry’s commentary:

I hope one day to write the definitive Harry Potter encyclopedia, which will include all the material that never made it into the novels, and …I will give the royalties from this book to charity. I cannot, therefore, approve of ‘companion books’ or ‘encyclopedias’ that seek to preempt my definitive Potter reference book for their authors’ own personal gain.

She doesn’t add, no doubt because it is not the case, that the profits will go to charity, only her royalties. Such a shame, such a misguided monopolistic effort to wring every nickel possible out of a franchise that has brought untold wealth to Ms. Rowling and her licensees. Does she really think that any fan would not buy her Lexicon even if they already had Mr. Vander Ark’s?

Patry then analyzes one entry, about the accio spell, and concludes, “I haven’t spent a lot of time on the site and so don’t know if there is other material that might be infringing, but I don’t see how a list of spells with this type of commentary is anything other than fair use.”

Me, neither. Writes a good children’s book, but in the penumbras and emanations she’s quite the moral poseur, is Lady Rowling. I wonder what “house” of Hogwarts she belongs in?

The trendiest of trends

Originally posted 2011-05-05 17:33:57. Republished by Blog Post Promoter

View from Mt. Holyoke - Thomas Cole“Green trademarks” that is. Green-themed, green-related, green to go, green for action! Well, trends aren’t just for marketers — you can find them in the media too. First, Susan Scafidi — trend-tracker extraordinaire, and, as you will see, a trend-maker too. This was on her awesomely chic blog but refers to an interview she did that was published in a Milwaukee newspaper on April 21st:

Eco-friendly fashion has escaped the confines of shapeless, formless, colorless sack dresses and ugly earth sandals to become a major fashion trend, with cutting-edge retailers like Barney’s New York shouting, “Don’t Panic! It’s Organic!” and celebrities adding their names to labels that promise sustainable, recycled, natural, biodegradable, cruelty-free, fair trade fashion fixes. With the text on some hang tags longer than an editorial in an alternative weekly and the British Advertising Standards Authority cracking down on unsustainable claims regarding “sustainable” cotton, Milwaukee Journal Sentinel reporter Lori Price asked your favorite law prof whether U.S. law offers any specific regulations regarding green clothing claims.

That should just about do it right there! But nope. Two days later, here’s the big trademark story on Ad Age:

Getting ready well in advance for today’s Earth Day events, marketers bombarded the Patent and Trademark Office last year for green-themed marks, leading to a 10% spike in trademark filings over 2006, according to a report released by the law firm Dechert.

According to the annual report “Trends in Trademarks,” filings for new trademarks last year topped 300,000, setting a record buoyed by interest in environmentalism. The previous record was 289,000 filings, set in 2000 during the internet boom.

Now that’s a trend!  Articles about eco-trademarks.

Now… “an interest in environmentalism,” eh? Let me suggest an inconvenient truth: Trademarks are about gelt. That’s what the article quoting Susan is about — the fact that there is (gasp!) no regulation over claims of “greenness” made on the stuff people sell you. As Susan says:

“The law hasn’t caught up with eco or organic, so frankly, it’s still easy to be green,” said Susan Scafidi, a visiting professor at Fordham Law School, who teaches fashion law. “So long as you are not defrauding the consumer, you can say anything, and so long as no one complains, you can do anything.”

Actually, it sounds like the law has caught up pretty well, no? At least until some legislator or interest group finds a way to catch up with it and… “buoy” some governmental “interest.”