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For Sale: Cabbage Patch Dolls, Pet Rocks

Originally posted 2005-01-04 23:16:00. Republished by Blog Post Promoter

Aha! See, the Blog Herald is asking the same question I did: Is 2005 the “Year of the Blog Backlash”?

Yaakov Menken of Cross-Currents — and my law firm’s Web host — asked me why I said that I was finally going to jump on the blogging bandwagon just as the wheels were beginning to wobble sickeningly. Well, this is the first time I’ve seen anyone validate that at all. (And Lord knows how terribly hard it is to validate whatever pops into your head on the Internet.)

Of course, I also said that about real estate 15 years ago…. ten years ago… five years ago…. Nonetheless, as I said below, if you think of it as a medium — and not a trend — I think you can’t go wrong.

I guess sooner or later we’ll know if we’re early adopters, Johnnies-come-lately or whatever it is that comes in the middle.

Best of 2010: Dough, a dear

Originally posted 2010-12-31 16:15:58. Republished by Blog Post Promoter

First posted August 11, 2010.

Pillsbury Doughboy

“TM” this, “TM” that….

The Stay-Puft Marshmallow Man wreaked some havoc in his time, but who would have thought that his inspiration — the Pillsbury Doughboy — would act the part of a veritable Gozer the Destroyer himself, at the expense of a funky new-age bakery?

A few weeks ago, the founder of a Salt Lake City-based bakery, My Dough Girl, got a letter from General Mills, the conglomerate that owns Pillsbury. To the 45-year-old entrepreneur’s surprise, the food giant had written to inform her she needed to change the name of her business — claiming it was too similar to Pillsbury’s famous doughboy mascot — or she risked facing legal action. Cromar decided, essentially, that was just the way the cookie crumbles. “I started baking cookies as a way to bring happiness to myself and others, so I really didn’t need this to become some canker on my existence,” Cromar said. “Plus, I just don’t have the resources to fight them.” The case marks the second time in recent weeks that a major corporation has taken issue with a small business over possible trademark infringement.

“The second time in recent weeks,” eh?  That must be awful.


Over here

Sit down, have a croissant.  Let’s talk about this. Dough boy, dough boy, dough boy… where have I heard that? Right — over here (right) — those guys. But while there are batches and batches of DOUGHBOY trademark registrations — some dead, but plenty alive — it does seem that Pilsbury is understandably sensitive about the use of the term in association with baked goods, made famous by its lovable mascot, POPPIN’ FRESH® !

Well actually, a bunch of POPPIN’ FRESH registrations seem to have gone stale, but evidently he’s still a doll (Reg. No. 72307131), and ain’t he? Anyway, back to his, uh, generic name — the DOUGHBOY thing.

Well before we even talk about whether a bakery called DOUGH GIRL is likely to be confused with a commercial baked goods company’s DOUGHBOY , did you notice the graphic on top up there?  How Pillsbury uses a “TM” instead of a ® symbol all over its site?

That is interesting, isn’t it?  Pillsbury does, after all, have a couple of registrations — though not exactly the ones you’d think:

  • Reg. No. 2832951 is for “Baking mix for cake,” in International Class 030 — Staple foods, baked goods, just what you’d think
  • Reg. No. 2764538 is for “Refrigerated dough.”  Same deal.
  • Reg. No. 2091501 is for “Clothing, namely, T-shirts [and boxer shorts].”  Class 25.  Well, sure.

Ok, still, that seems close enough, doesn’t it?  If I were Pillsbury I wouldn’t want anyone selling baked good using DOUGHBOY either, and I’ve got some good and famous registrations to help me stop them.  So why does the Pillsbury site utilize the TM — a common-law assertion of trademark rights, rather than an indication of federal trademark registration — instead of the “circle R”? Read More…

Eat hot cross buns!

Originally posted 2008-07-21 00:29:17. Republished by Blog Post Promoter



Billings Don’t Only Matter to Lawyers

Originally posted 2005-02-28 17:49:00. Republished by Blog Post Promoter

And trademark law does’t evidently matter all that much to the Billings Gazette. What a mess this story is! Here are some of the trademark law howlers in this one piece about a fairly routine trademark dispute:

  • “Actually, the Burkhartsmeiers have only filed for the trademarks. The federal government hasn’t granted them yet. “ NO! The government doesn’t “grant” trademarks. It protects them via the legal system and may even grant you a trademark application for your trouble. But trademarks are established by use, not by the government.
  • “After registering Coffee Mill and Coffee Mill Espresso & More in Montana, Morgan started filing for national registration last June. However, her computer crashed and she got caught up in running for the state Legislature. Now she’s trying again to protect her business names. ” NO! Business names are not trademarks! They can be trade names, but they may not be entitled to trademark protection.
  • “To truly protect a business name, a company has to register at the federal level and in each state for trademarks, trade names and service marks. ” NO! Truly ridiculous, and in some states, truly irrelevant.

Remember, I’m a media blogger. Someone’s got to speak trademark truth to power!

Follow the dancing baby

It is huge. Here’s the New York Times‘s coverage; here’s the Wall Street Journal; and here’s the actual 9th circuit opinion in Lenz v. Universal itself.  Everyone is explaining why the deal is so big, of course.  The key question was this:

Section 512(c)(3)(A)(v) requires a takedown notification to include a “statement that the complaining party has a good faith belief that the use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.” The parties dispute whether fair use is an authorization under the law as contemplated by the statute—which is so far as we know an issue of first impression in any circuit across the nation.

This is the offending video.  Fair use or not?   And the answer to the question is this:

We agree with the district court and hold that the statute unambiguously contemplates fair use as a use authorized by the law. Fair use is not just excused by the law, it is wholly authorized by the law. . . . Although the traditional approach is to view “fair use” as an affirmative defense, . . . it is better viewed as a right granted by the Copyright Act of 1976. Originally, as a judicial doctrine without any statutory basis, fair use was an infringement that was excused—this is presumably why it was treated as a defense. As a statutory doctrine, however, fair use is not an infringement. Thus, since the passage of the 1976 Act, fair use should no longer be considered an infringement to be excused; instead, it is logical to view fair use as a right. Regardless of how fair use is viewed, it is clear that the burden of proving fair use is always on the putative infringer.

That sounds right to me.  Read More…

The seven habits of highly annoying lawyers

Originally posted 2011-02-04 15:59:36. Republished by Blog Post Promoter

Or, perhaps, the companies that hire them.  Let’s see if we can find all seven in this highly effective — certainly highly earnest! — item from Mark Malek at the Tactical IP blog.

But first, while I haven’t looked into the facts here, but this item made me wonder:  Can we find the Seven Habits of Highly Annoying Lawyers in the typical overreaching cease-and-desist letter story?  I would say so:

  • Covey Habit 1: Be Proactive
    • Lawyer Habit 1:  Be a Prostitute
  • Covey Habit 2: Begin with the End in Mind
    • Lawyer Habit 2:  Begin with the Fee in Mind
  • Covey Habit 3: Put First Things First
    • Lawyer Habit 3:  Shop for the Right Jurisdiction First
  • Covey Habit 4: Think Win-Win
    • Lawyer Habit 4:  Think Win-Bankrupt Them
  • Covey Habit 5: Seek First to Understand, then to Be Understood
    • Lawyer Habit 5:  Seek First to Understand What You Can Get Away With, then Make Your Threat Understood
  • Covey Habit 6: Synergize
    • Lawyer Habit 6:  Sin
  • Covey Habit 7: Sharpen the Saw
    • Lawyer Habit 6:  Sharpen the Teeth

I’m feeling more effective already!  Okay, now to Mark’s probably unrelated, but highly enthusiastic — not to say excessively perky — offering about the Covey thing.

I just read a story on Tech Dirt regarding the publishers of the very famous book “Seven Habits of Highly Effective People” and it really hit home for me.  More on why in a bit.

Apparently, Franklin Covey, the publisher of the “Seven Habits” series of books has sent out a cease and desist (C&D) notice to Shlock Mercenary, an online webcomic.  Some more information about the C&D notice that Shlock Mercenary received can be found here.  Shlock Mercenary had been publishing an online webcomic “The Seven Habits of Highly Effective Pirates” for years, and just got on Franklin Covey’s radar.  From the sound of the C&D notice, Franklin Covey seems to assert that any use of the number “7” with “habit” is a violation of their trademark. . . .

One of tools that I used to teach the Junior Achievement class to my 10th graders was a video that outlined the Seven Habits of Highly Effective Teens.  I was impressed that everyone in my class had already read the book, and many of them took the lessons to heart.

I understand why, at times, sending out C&D notices may sometimes be warranted, but this didn’t seem like one of those times.  Then again, I do not have all the facts, so I do not want to sound judgmental….too late?  My point is that I think Franklin Covey should take this as an opportunity to teach.  One of the “habits” that is taught by the series is “think win-win.”  What if you start out thinking win-win, but it just doesn’t happen?  I guess that is what litigation is about.

Yes, and litigation is anything but win-win.  Right?  Well, check the box — what do you think?

We are the world

Originally posted 2008-08-21 11:59:14. Republished by Blog Post Promoter

Guiseppe Garibaldi of the Italian NavyA classic explanation, via the case method, of trademark law’s doctrine of foreign equivalents:

Affirming a Section 2(d) refusal, the Board found Applicant’s mark AMMIRAGLIA for “wines, sparkling wines, liqueurs,” likely to cause confusion with the registered mark FLAGSHIP for vodka. The Board concluded that AMMIRAGLIA means flagship in Italian, and it found no evidence that AMMIRAGLIA would not be translated by the ordinary American purchaser who is knowledgeable in the English and Italian languages. In re Marchesi de’ Frescobaldi Societa’ Agricola S.p.A., Serial No. 79021733 (August 11, 2008) [not precedential].

Plus, now you know how to say “flagship” in Italian!

“Life rights”? (Making things with life?)

Originally posted 2011-05-23 16:57:06. Republished by Blog Post Promoter

Pittsburgh Trademark Lawyer Daniel Corbett brings us an NBA star’s attempt at a four-point shot:

Post-relationship drama takes many forms, but federal court litigation under the Lanham Act isn’t typically one of them– unless you’re Miami Heat forward Chris Bosh.  Bosh recently filed suit against the producer of VH1′s “Basketball Wives,” which, as Bosh correctly notes, comprises about as many ex-wives and/or girlfriends as it does “basketball wives” in the term’s purest sense.

At any rate, Bosh is claiming that his ex-girlfriend and the mother of his child is violating his trademark, publicity, and “life rights” by using his name/likeness in connection with the show.  The lawsuit claims that  “[the show] provides these women with a vehicle and worldwide platform” to use the names of players without permission for commercial gain.”

Yes, “using the names . . . without permission for commercial gain” — that’s pretty much dog-bites-man in the IP / right of publicity arena these days.  That’s not blogworthy.

No, you guessed it:  The four-point-shot is the new and exciting proposed tort of “life rights”!  My first inclination, as a child of the ’60’s — no, I mean, really, I was a child then, not that I was born in the ’50’s but kept acting like a child in the ’60’s — was this:

But evidently, no.

Count on Mike Masnick, the source of Daniel’s story, to be all over this nonsense:

Beyond the standard “publicity rights” claims that are so popular these days due to bizarre and dangerous state laws, it seems that Bosh is going even further in claiming that this is also a violation of his “life rights,” claiming that you need a celebrity’s permission to portray them, which isn’t actually true. This seems to be a misreading of California’s publicity rights law.

To be honest, while this case will likely settle one way or the other, it actually seems like it could be a good case for establishing some case law that you don’t need a celebrity’s permission to talk or write about them, and you’re not violating their “publicity rights,” “life rights,” or trademark by appearing in a show based on your connection to them.

As the great Marv Albert would say, “Yuhsssss!”  Except in this case… “No.”

Unless maybe he did mean Lite Bright?

UPDATE:  Good, if somewhat overly credulous, analysis of a related lawsuit — this one by NBA star Gilbert Arenas — by David Fucillo.

LINE SCORE:  Air ball.

Laws don’t kill free speech, legislators do

Bar none

Originally posted 2009-07-22 16:11:12. Republished by Blog Post Promoter

Michael Atkins:

ATT Bars Design[University of Washington] School of Law Professor Sean O’Connor, guest blogging at Legal Satyriconwrites about AT&T’s trademark registration of the bars indicating cell phone signal strength (depicted left).

“The bars are purely functional representations of the strength of cell service and a standardized one at that,” he writes. “If anything were unworthy of being captured as a trademark, this should have been it.

Ok, well, maybe not anything, but the point is well taken.  More from O’Connor:

Fortunately, the PTO seems to have come to its senses and is going to cancel the mark.  But in the meantime, at&t continues to paste billboard all over the country with the “More bars in more places” campaign and the bars logo with “®” attached.  I understand that until the mark is fully cancelled, they probably have a right to keep using the “®”.  But I think it is shady and misleading at best, given the cancellation proceedings underway.

Well, you ain’t canceled till you’re canceled, but read his post, because he does a great job of addressing how corporations use dubious claims of IP rights as very sharp elbows to crowd out others for market position.  “You have to admire that kind of Machiavellian cunning,” he says.  “And it’s a testimony of the continuing power of high cost lawyers and blanket marketing campaigns.”  180px-Ayats_bravo_t-mobile

Well, all right, but it’s testimony to a damned good cell signal too, Professor!

After all, take it from a T-Mobile customer — you don’t see T-Mobile trying to  “own” the icon for robust cell coverage.  They were reduced to trying to corner the market for magenta.

“Domain Name Arbitration”: An Old Testament for a New Body of Law


The new UDRP Bible.

Internet law, “we” used to say, is a young man’s game.  We stopped saying it though — not because political correctness mandates that we say “young person,” though it does.

But no, “we” stopped saying it when we got old.  Wine ages well, but do lawyers?

Funny you should ask.

Now what we say (and we say it in all sincerity) is that lots of young lawyers get the Internet, but they’re still only young lawyers. On the other hand, an old, experienced, battle-scarred, been-there-done-that lawyer who also gets the Internet?  That’s a lawyer you hire!

I mean me, of course.  But how can I stand before Gerald M. Levine, master of UDRP domain name arbitration, who has just released the definitive guide to that topic?  It’s called Domain Name Arbitration: A practical guide to asserting and defending claims of cybersquatting under the Uniform Domain Name Dispute Resolution PolicyIt’s self-published, just like LIKELIHOOD OF CONFUSION, which means it’s a lot less expensive than if it were somebody-else published.  But it’s a darned fine book of words all the same.

That’s no surprise. Gerry Levine has been at this for a while; he was admitted to practice in New York the year I became a bar mitzvah.  That could in theory make him only little more than ten years older than your blogger, which is, yeah, old, for an “Internet lawyer.”  But actually Gerry’s way older than that — before law school Gerry he had already received a Ph.D in English Literature from NYU and taught for several years at Queens College at City University in New York.

Gerald M. Levine UDRP Expert

Veteran, yes, but not half as crusty as your blogger.

While I’m not sure why Gerry, who had been practicing litigation and ADR and working as an arbitrator for years before there was even such a thing as an Internet — heck, it may even have predated Al Gore’s bar mitzvah! — decided to develop a focus on UDRP practice in the middle of his second career, I’m glad he did. Read More…