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INTA’s magic kingdom

This year’s annual meeting of the International Trademark Association was held in sunny Orlando, Florida, which in many respects is a very appropriate place for an association of trademarks to meet.  Orlando, of course, is the world’s epicenter of theme parks.  And the theme of themes is joyful, real-time, three-dimensional interaction with “intellectual property,” which for present purpose mostly means stuff born of copyright but transmogrified through the wonderful process of “branding” into trademarks.

Such undead creatures, of course, once so transformed can live forever as long as they justify their existence by bringing forth gold.  If so, they will be nurtured, grown and tended forever, and any threat to their health, or to their sustenance, will be brutally interdicted.  (Only in the event of a horrible accident of mutation — where, as a result of some regressive, non-adaptive feature, because of which their continued existence threatens the survival of the entire colony, will one of these creatures not only be allowed to die but, in fact — well, it is better not to speak of such things at all….) Read More…

Nominative fair use: The Second Circuit names names

Thurgood Marshall US Courthouse

Second Circuit

Nominative fair — the “unauthorized” use of a trademark as a trademark specifically to invoke the trademark, as opposed to its “non-trademark” use to describe the alleged infringer’s goods or services use — has now come East, courtesy of the Second Circuit Court of Appeals in International Information Systems Security Certification Consortium Inc. v. Security University LLC. 

Let’s call this bumbling, cumbersome caption by the short title, “Security University.”

The opinion (link here) (hat tip to Law360) is an important one for a couple of reasons, of which the ruling on nominative fair use is certainly the more important one.  As Bill Donahue’s Law360 piece explains:

The ruling came in a clash between a small IT security company called Security University LLC and the International Information Systems Security Certification Consortium Inc. over whether company misused the organization’s “Certified Information Systems Security Professional” certification mark in advertising its services.

In particular — get this — the defendant was going around calling one of its trainers a “Master” of this particular techie domain, and just wouldn’t stop:

ISC2 objects to some of 1 SU’s advertisements, run between 2010 and 2012, which, ISC2 argues, misleadingly suggested that SU’s instructor, Clement Dupuis, had attained some higher level of certification as a “Master CISSP” or “CISSP Master.” . . .

SU began using the term “Master” 1 in May 2010. On June 9, 2010, ISC2’s counsel wrote to Schneider asking that she cease using the phrase “Master CISSP” in SU’s advertisements. On June 13, 2010, Schneider emailed Marc Thompson, an employee of a third party entity that oversees seminars on ISC2’s behalf, stating that “SU will continue to use the word Master. Master Clement Dupuis is a Male Teacher [and] thus he is a Master according to the dictionary.”

“He is a Master according to the dictionary.”  

This was the point, as we have learned, at which it should have been clear that if this case were to be litigated, someone’s story was really, really going to stink up the place. Read More…

Adverference?

Originally posted 2009-01-22 13:31:48. Republished by Blog Post Promoter

"The Interloper" (Norman Rockwell)

"The Interloper" (Norman Rockwell)

Working from home today after a bruising few weeks at work (see yesterday’s post!), I finally figured out what was going on with banner ads on my Internet browsing.  It raises an interesting question about Internet-related copyright and trademark law.

We use a filtered Internet service at home.  This way we know that not only do our children not have access to or permission to use the Internet, but even if they “happen to” get to it anyway, the worst of the worst is not coming into our house.  This is good for the grownups too, of course.

I recently adjusted the filtering level on the service and by virtue of that change the filter now happens to block banner ads.  This I did not mind, because many such ads, especially on Yahoo! mail, are quite garish and often rather gross and, frankly, indecent.  After this change I also started seeing a filtering message in the place of familiar, and relatively high-class, banner ads on my favorite “big” blogs that feature ads, such as Instapundit. It was not a great aesthetic experience but I got used to it.

A little while later I had the jarring experience of realizing that ads for charity auctions on behalf of orthodox educational  institutions — including a client of mine! — and solicitations for fundraising on behalf of penurious young couples in Israel were appearing on that very same site, one of the most popular English-language blogs in the world!  Well, I would say Glenn Reynolds is pretty Jewish-friendly, to say the least, but this struck me as pretty odd.

instapundit-jewish-after-all

Once I could focus on the question, however, I realized what was going on:  My filtering service was reselling the filtered advertising real estate to advertisers interested in the orthodox Jewish Internet user market!

This seems to raise some interesting questions, doesn’t it?  Read More…

Bayer v. Belmora (the “FLANAX case”) – Petition for rehearing en banc

This Week in Law: “Never Mind”

Belatedly, and inexcusably — and, yet, does stuff this sparklingly brilliant ever get stale? — here’s the video of of my first (and only) appearance on Denise Howell’s This Week in Law all the way back on March 25, 2016 along with Kashmir Hill and old friend J. Michael Keyes.

The official blurb is, “What does privacy mean to you?  Free speech and artificial intelligence, the FBI may have help unlocking an encrypted iPhone, Hulk Hogan vs Gawker Media, Naruto and the monkey selfie rides again and more!”

You can download or subscribe at https://twit.tv/shows/this-week-in-law. If you do that sort of thing.

How bad is really bad IP blogging?

Originally posted 2014-08-11 18:52:37. Republished by Blog Post Promoter

I don’t like to call out other bloggers, but I do it sometimes.  People are gentle with my mistakes — Steve Feingold being the model of graciousness this week (as he always is, of course!) — usually.

Hand shredderBut if you write a blog and you jack it all up full of SEO juice and it then gets picked up by my daily Google Alert for “trademark” and then I poke around on your oddly-written Minnesota Attorney Blog blog where you have a category called “Minnesota Intellectual Property” — and hey, I know as well as anyone that they do intellectual property in Minnesota, so I’m not going to snark you out on that — and then I find that each post has this canned-SEO preface to it that says, Minneapolis Intellectual Property Attorneys,”… you know, just in case someone’s, like, searching for the phrase MINNESOTA INTELLECTUAL PROPERTY ATTORNEYS or something… and I click one of the two posts in this category by these “attorneys…”

It had better be good, brother.

So:

Trademarks do not have to be registered in order to be valid. The person who uses a mark in commerce first obtains a trademark on that mark. This mark indicates where a good or service came from. It shows the source. The person who obtains a trademark on a mark also obtains the right to prevent others from using that mark in commerce.

No.  Not good.

Not, not, not, not good.

I feel like Scott Greenfield.  But sometimes, somebody’s got to do it.

Not.  Good.

Minnesota Intellectual Property.

Attorneys.

Bad.

Rutgers, Archer and Me: Using Social Media to Power Your Business

By the time you read this I will be “presenting,” as we say, at a course in the “Small & Family Business ‘Unlock Your Potential’ Training Series entitled — yup — Using Social Media to Power Your Business which is co-sponsored by the Rutgers School of Business at Camden and my partners (law, not blog) at Archer & Greiner, P.C.

Now of course to do this right, I really should have powered registrations to this program more than the little bit I did a few days ago.  But first comes baking the doughnuts, you know — then selling them.  And thanks God, I had a lot of doughnuts to bake this week.

Thanks to social media?

Well, actually, yeah.  But the recounting of that specific story will have to abide our race’s conquest of other galaxies, I fear.

Anyway, that’s where I am Thursday, May 12, 2016 — the Camden County Boat House, to be specific —  nice, huh? — in case you’re looking for me.

Authorized?

Originally posted 2014-08-11 18:52:33. Republished by Blog Post Promoter

This better be, because The Force isn’t going to cut it for you these days!

Clothiers and disclosure


Interesting.  This, from the mysterious Julie Zerbo at her iconoclastic blog, The Fashion Law:

The newest group of potential outlaws in the fashion industry is not made up of tax evading Italian design houses. Instead, it is a slew of big-name brands and famous bloggers teaming up for promotional purposes that are consistently choosing to blatantly disregard the provisions of the Federal Trade Commission (“FTC”) Act.

Not up on the FTC Act? It is a federal law that aims to prevent unfair methods of competition, and misleading or deceptive acts or practices in the marketplace. In furtherance of this law, the FTC requires advertisers and endorsers to disclose material connections (think: payments or free products in exchange for representation of the brand, etc.) that they share so consumers can be made aware and make purchasing decisions accordingly. Thus, when a celebrity or influencer has been paid to endorse a product or service and they fail to disclose that fact, both the advertiser and endorser may be liable.

The most novel aspect of all of this is social media. Read More…

Free speech about trademarks and free speech

Speech about trademarks, trademark registrations and free speech have bubbled so verily to the top of the public imagination that it’s all over the official organ of free speech, the New York Times!

Well, okay, that’s a bit much, but it sounded good for a second, no?

Here’s what I’m talking about.  First, there was this:

That tweet gave birth, first, to a nice little conversation on Twitter involving Christine Haight Farley, who has definite and well-articulated views on the matter and ones which are worth hearing, and Marc Randazza, regarding whose virtually completely opposite opinion virtually the same can and hereby is said as well. But this is just the tip of the Times-y iceberg that’s forming. Read More…