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Explicitly yours

American University Law ReviewTomorrow I will be on a panel called “Warning, the Following Material May Be Explicit: Addressing the Efficacy of §2(a) of the Lanham Act” as part of American University Law Review’s annual Federal Circuit Symposium. It’s being held at Arent Fox, whose web page promoting the event says:

The American University Law Review’s Volume 63 Federal Circuit Symposium will assess the Lanham Act’s section 2(a) bars to registration for immoral, scandalous, and disparaging marks. Prominent legal academics, practitioners, and a Trademark Trial and Appeal Board judge will discuss relevant cases, the provision’s varying effects, and its remaining value.

You can also register at the link and you should do that ASAP!

Obviously I will once again be discussing the Federal Circuit appeal by our client, Asian-American musical performing ensemble group The Slants, from the TTAB decision affirming the denial of a trademark registration for THE SLANTS on the ground that they are Asian-Americans.

I had the opportunity to present on this topic in Cleveland exactly a month ago.  That, however, was an hour of stand-up; this is a panel, which mostly features sitting and nodding.  My fellow panelists are Jim Bikoff from Silverberg, Goldman & Bikoff LLP, Professor Michael Bressman of Vanderbilt Law School and — yes, Finnegan again! – Doug Rettew of Finnegan, Henderson, Farabow, Garrett & Dunner.  The program starts at 1:00 PM with my panel, which will last from 1:00-2:30.

The second panel features my friend Professor Christine Farley from American, TTAB Judge Linda Kuczma, and Professor Sarah Hinchliffe, visiting professor at William and Mary Law School. Arent Fox’s resident rock starPamela Deese, will act in all things as moderator.

As interesting as that is, my real point is that you are not exempt from attending this event just because you think you already heard “this” in Cleveland.

This Isn’t One, Either. Heavens, No.

Originally posted 2005-02-17 00:04:00. Republished by Blog Post Promoter

Bill Heinze’s I/P Updates blog reports about a trademark registration you can see at the erstwhile movie pirating website LokiTorrent.com. You get a message that says “There are websites that provide legal downloads. This is not one of them.” The site is the property of the good people at the MPAA.  And it ought to: Downloading someone else’s movie is just plain stealing. Even if the MPAA is against it.

Clients sometimes ask whether the infringing website they’re steaming about can ever fall like an overripe fruit into their hot little hands. Yep. It can.

Welcome, Blogads clickers

Originally posted 2005-01-04 10:03:00. Republished by Blog Post Promoter

I’m stuck in a monthlong marketing campaign on Blogads. The rates are really favorable but the diminishing returns are sick-making. So having “spent” the money (well, pledged it — do you think Amex reads blogs?), we may as well drive some traffic to here, the law firm’s new blog.

I have joked that the wheels are about to come off the blogging wagon — blogs are now so cool I’m afraid they’re no longer cool at all. If everyone has one, who wants one? But as a phenomenon of communication, in the sense of information exchange, they are not going away. What’s good (for me) is that the legal issues of blogging aren’t going away either. They will only increase. Not everyone is interested in more communication — not if it’s a threat to their franchise. That means people will attempt to utilize (or no less likely abuse) the law and the courts in order to compete unfairly. And that’s something we have demonstrated we can do something about. (And sometimes we can’t, even if down the line courts acknowledge, well, maybe we were right….) One of the reasons I left my my old firm two years ago and founded this office was so that I could spend more time working the leading edge of Internet-related law. I’m happy that we’re succeeding, at least somewhat.

We also do house closings. Baby steps, man, baby steps. At least our real estate associate is a blogger.

Anyway, a number of bloggers whose names you must know (I like the sound of that) are banding together to form the Media Bloggers Association. More associations means more lawsuits! It’s all good.

UPDATE: A reader asked me about the old firm, Gibney Anthony & Flaherty, in New York. It was a warm, friendly breakup. We are still friends, still work together, and I am still on their letterhead as “counsel.” So don’t get upset.

“Dear Licensor” — Part II

Originally posted 2011-08-19 10:37:54. Republished by Blog Post Promoter

Dear John Letter

Permission: Casey Berry

Last spring I excerpted from and linked to an article by my friends Richard Bergovoy (of the Licensing Law Blog) and Oliver Herzfeld (of Beanstalk) concerning the dizzying concept of a trademark licensee gone bankrupt.  Now I’m told that Part II is out and about as well.

Here’s a highlight:

Richard Bergovoy

Richard Bergovoy

If Licensee Seeks to Assume and the Licensor Objects

The licensor may believe that the licensee or its proposed assignee are incapable of properly performing the license agreement. One of the fundamental principles of U.S. trademark law is that a licensor must control the quality of the goods and services provided by the licensee under the licensed mark. This rule is designed to fulfill the public policy objective of consumer protection, in that trademark laws help prevent the public from being misled as to the quality of branded products and services. A prohibited “assignment in gross of a mark” or other failure to maintain quality control standards could give rise to a so-called “naked license” claim. The consequences of such a claim can be quite severe. In particular, “a court may find that the trademark owner has abandoned the trademark, in which case the owner would be estopped from asserting rights to the trademark.” To prevent such damage from occurring, the licensor may object to a licensee’s assumption or assumption and assigument of a license agreement on the following four grounds …

The four grounds, and the rest of the article, can be found here.

EFF backs eBay in Tiffany spat

Originally posted 2008-12-05 00:01:56. Republished by Blog Post Promoter

See, we don’t agree with Public Citizen all the time!  Read on, via the Electronic Frontier Foundation (EFF):

[EFF] along with Public Citizen and Public Knowledge urged a U.S. court of appeals Wednesday to reject jewelry-maker Tiffany’s attempt to rewrite trademark law and create new barriers for online commerce and communication. . . .

“Millions of Americans use sites like eBay and craigslist to buy and sell goods,” said EFF Senior Intellectual Property Attorney Michael Kwun. “If Tiffany had its way, sites like eBay would be responsible for figuring out whether items its users are selling — items eBay itself never sees — are authentic or counterfeit. That’s an impossible task.”

It is?  Where are the metrics for “impossible”?  Can we start with nearly half a billion dollars in quarterly profits in the third quarter of this year? How do you get from that to “impossible”?

Here’s the EFF amicus brief.  Lots of talk about “burdens,” and “impossible,” but no data.  Yes, as a general rule the burden of proof is on the plaintiff in civil matters, but hasn’t Tiffany shifted that burden by coming forward with the undisputed claim that massive amounts of counterfeit merchandise is being sold on eBay?

Now take a look at the amicus brief of the International Anti-Counterfeiting Coalition (IACC), written by my friend David Bernstein and his partner Bruce Keller and counsel Michael Potenza. Read More…

Tons of tweeting

Yes, it is measured in tons.  You never heard of guano?

Anyway, here’s what the blog’s official Twitter account, @likely2confuse had to say over the last few months, along with a few topical tweets via @roncoleman:

IP’s Ancien Régime

L'Droit, c'est moi

L’Droit, c’est moi

Instapundit linked to an abstract of a law journal article called “IP in a World Without Scarcity” by Mark Lemley at Stanford.  Fun fact from his Stanford bio page:  “His works have been cited 140 times by courts, including seven United States Supreme Court opinions, and over 9,500 times in books and law review articles.”  Well, Mark, that’s all very nice, but now you’ve made the big time!

Here’s an excerpt of the excerpt:

Things are valuable because they are scarce. The more abundant they become, they cheaper they become. But a series of technological changes is underway that promises to end scarcity as we know it for a wide variety of goods. The Internet is the most obvious example, because the change there is furthest along. The Internet has reduced the cost of production and distribution of informational content effectively to zero. In many cases it has also dramatically reduced the cost of producing that content. And it has changed the way in which information is distributed, separating the creators of content from the distributors. . . .

The role of IP in such a world is both controverted and critically important. IP rights are designed to artificially replicate scarcity where it would not otherwise exist. In its simplest form, IP law takes public goods that would otherwise be available to all and artificially restricts their distribution. It makes ideas scarce, because then we can bring them into the economy and charge for them, and economics knows how to deal with scarce things. So on one view – the classical view of IP law – a world in which all the value resides in information is a world in which we need IP everywhere, controlling rights over everything, or no one will get paid to create. That has been the response of IP law to the Internet so far. . . .

But that response is problematic for a couple of reasons. First, it doesn’t seem to be working. . . . Second, even if we could use IP to rein in all this low-cost production and distribution of stuff, we may not want to. The point of IP has always been, not to raise prices and reduce consumption for its own sake, but to encourage people to create things when they otherwise wouldn’t. More and more evidence casts doubt on the link between IP and creation, however. Empirical evidence suggests that offering money may actually stifle rather than drive creativity among individuals. Economic evidence suggests that quite often it is competition, not the lure of monopoly, that drives corporate innovation. The Internet may have spawned unprecedented piracy, but it has also given rise to the creation of more works of all types than ever before in history, often by multiple orders of magnitude. . . .

Far from necessitating more IP protection, then, the development of cost-reducing technologies may actually weaken the case for IP. If people are intrinsically motivated to create, as they seem to be, the easier it is to create and distribute content, the more content is likely to be available even in the absence of IP. And if the point of IP is to encourage either the creation or the distribution of that content, cost-reducing technologies may actually mean we have less, not more, need for IP.

If you’ve been with me — and certainly if you’ve been with me for long — much of this will sound familiar.  I’m not saying I was the first one to say it, which would be preposterous.  In fact, I used to believe very strongly in the moral rectitude of IP “enforcement,” or, rather, anything someone who owned IP asserted was enforcement of that IP.

I have since come to understand how many false premises that formulation contains.

Read More…

Your Twitter ways frighten me

Originally posted 2011-05-12 20:43:28. Republished by Blog Post Promoter

Passaic Memorial Park - Spring 2011

I followed a couple of hundred people on Twitter so you don’t have to!  Here are topical tweets I’ve enlightened twitterkind with via @roncoleman since the last time I rounded these up ’round the Ides of March:

Really, what else would you even need to know?

Google adwords hell breaks loose. Yay!

Originally posted 2009-05-14 20:25:11. Republished by Blog Post Promoter

The Google / ad words / trademarks story, long a mainstay of LIKELIHOOD OF CONFUSION®, may end up needing a blog of its own, so don’t be surprised if you see less and less coverage of it here.  (I just resent stories that outgrow me.)  We’re almost there.  But first, this, from Search Engine Journal:

Google plans to open up trademarked [sic] keywords to AdWords advertisers in June according to Michael Orey of Business Week. Beginning June 4th, companies will be able to bid on the brand names of their competition, which will heat up the AdWords listings throughout Google and lead to head to head battles in the SERPs over branded product, service and company names.

And litigation, litigation, litigation!  Yay!  And guess who’s Defendant Number One?:

Diversion:  Threat or menace?

Diversion: Threat or menace?

Firepond, a software company in Texas, has filed a class-action suit against Google claiming its AdWords service profits by encouraging companies to impinge on one another’s trademarks.

Firepond claims that Google’s sale of its brand name to its competitors amounts to trademark violation because people searching for “Firepond” end up clicking on the sponsored links of other companies, “thereby confusing Internet users and diverting a percentage of such users from [Firepond] and enjoying and benefiting from all the goodwill and ‘buyer’s momentum’ associated with” its trademark, the suit read.

That’s Texas, by the way.  Ask my friend Walter about Texas as a place to file lawsuits.  Here’s the complaint.  So, what’s going to happen?  If it weren’t for the fact that the case involves both Texas and judges, I would rely entirely on the sober analysis of Eric Goldman — who at least tells us what should happen:

This is a well-structured lawsuit that squarely raises the long-contentious debate over the legitimacy of selling trademarked keywords. (I won’t recap that debate here, but I still think this article of mine best explains why plaintiffs’ whining about competitive diversion from search ads is fundamentally misguided). Should this lawsuit reach a final judgment on the merits, we will have a very important answer about what search engines and other keyword sellers can and can’t do.

But, I don’t think this lawsuit will give us that answer because the judge is very unlikely to certify the class. As we saw in the Vulcan Golf lawsuit, where the court denied class certification over Google’s domain name parking program, trademark issues are just too complicated and individualized for class adjudication.  Every trademark is different, the identity of each competitive (or other) advertiser is different, every AdWords ad copy is different, the informational needs of every trademark owner’s customers are different (for more on this, see Hearts on Fire’s complicated standard for evaluating consumer confusion), trademark defenses are idiosyncratic, etc. Perhaps the reason no one has sought a trademark class action over AdWords before is that it probably can’t be done.

Really, why bother even thinking when Eric has everything figured out so squarely?  Well, because of Texas.  And judges.  Both of those being what they are.  Yay!

A breath of fresh air!

Originally posted 2011-03-30 21:30:45. Republished by Blog Post Promoter

The Cascade Mountains

Other mountains, somewhere else. Seen from indoors.

Sometimes you just get to enjoy the view.  Ain’t I an environmentalist too?  Here, courtesy of the Salt Lake Tribune, is nature at its vicious, and revealing, best:

Utah environmental activist Jeff Salt has been quarreling for two years with the green network started by Bobby Kennedy, son of the late Sen. Robert F. Kennedy.

Now, with the help of one of Houston’s most prominent business law firms, he’s taking on Kennedy’s Waterkeeper Alliance directly in a countersuit, claiming it has no right to stop him from calling himself the Great Salt Lakekeeper.

The case, which Salt and his attorneys declined to discuss, is not the sort of thing you might expect from environmentalists fighting for cleaner water, land and air.

Oh, it’s not, huh?

Have these people ever met Bobby Kennedy?

 

Blawg Review #2

Originally posted 2005-04-17 19:20:00. Republished by Blog Post Promoter

Welcome to the sophomore edition of the Blawg Review. We assume you have brought your sharpened, #2 lead pencils, your registration card, and a valise full of small, unmarked bills. So let’s begin with a some light stretching, shall we?

First, let’s talk about what we’re not going to do — that is, crash the system by showing how, like, iconoclastic we can be with our “carnival.” No, counselor. No antipopes here; we have enough trouble with the Ninth Circuit! We’re blawgers, dammit. And to paraphrase St. Kingsfield, if you come in here with a head full of mush, I promise, you will leave linking like a blawger!

Now, down to cases, as they say. And do I have to keep saying “blawg”? I don’t think they can make me.

LAW BLOG BY THE BAY
The mysterious “SF Attorney” of the Legal Commentary blog (don’t worry, his blah-blog name balances out his exotic real last name — good move!) sends in this link in which the California Supreme Court diddles with the ancient and venerable doctrines of contract and — suprise — decides they aren’t exactly really contracts so much, after all. SFA describes his blog as a “Discussion of all things legal and not-so-legal.” Yes, he’s leaving his options open — but his mastery of the niceties of the California Practice is not for nothing. And hell, give him credit: His blog description didn’t use the words “rant” or “random.” If your wandering briefcase ever points you towards the Pacific, you must take a look at how this gent dices and slices West Coast exotica such as the California SLAPP law. As far as I know, SF Lawyer wants to remain anonymous, but you can email him from the blog.

JUST ANOTHER JUSTICE
Moving from the city where the ground shakes to Notes from the Legal Underground, Evan Schaeffer sends in this item, a pre-publication review, based on a press kit, of the new magazine Justice that will debut on June 21. Evan’s kind of shy about expressing his opinion about this magazine, so you may have to read his review really closely to figure out his subtle take. The post is called “Justice is for Morons.” Frankly, Evan may be onto something. The home page at Justice does make Steve Brill sound like Learned Hand. Incidentally, if you like this “carnival” atmosphere — and Evan does – check out his roundup of law school hijinx on the web. They’re not just dunking those judicial wigs into inkwells any more, believe you me! No wonder they’re so tired. And so uptight – maybe not — about rankings!

DON’T CONFUSE ME WITH DELAY
Did we say hijinx? Well, reading the editorial pages, you’d think nothing could be higher or jinxier than Tom Delay and his friends, so lucky for us JMoore of JurisPundit gets political this week. He’s challenging the conventional wisdom that Texas has been horribly gerrymandered by the GOP. JMoore finds that not only is the alleged gerrymandering no worse than California is gerrymandered for the Democrats, but that actually the Texas congressional caucus isn’t hardly any different from the state’s Republican / Democratic split at large. Take a look — this is good, thoughtful law blogging for a guy with two consecutive capital letters in one name.

RAP TALK JUMPS SHARK; JAG BLOG AWAG
On the other hand, blogs with three consecutive capital letters can be quite fine, if somewhat suggestive, too. The JAG Central blog — “The world’s first weblog devoted to military justice and military law issues” — this week demonstrates that it is, indeed, all that, and links to a story
in which U.S. Senator Bill “Major” Nelson publicly uses the word “dissing” as a way of describing how he believes the Bush Administration is treating the United Nations. “Dissing” is evidently a word found in a charming urban subcultural patois of some kind — found in Florida, perhaps? — which term, we have learned, is meant as a (much needed!) shorthand for “failing to show a requisite amount of respect.” It’s the sort of nuanced, articulate style of argumentation you’d expect from a member of the world’s most exclusive club.

STAMP OF STUPIDITY
Back Cali-way, SoCalLawBlog tells us about how the D.C. Circuit has affirmed that the failure to put a postage stamp on a routine mailing to the U.S. Copyright Office should indeed cost the “once mighty” MGM studio $10 million. The good news is, they’ve got a plan to make it back.

THE LAW BLOG ANSCHLUSS
Moving from fiction to documentaries, Professor Larry Ribstein’s Idioblog asks the obvious question: What with all these law blogs and stuff, wither the law reviews? Even a better qeustion when you consider that some law schools are actually giving the competition enough rope to hang them with! This is definitely the topic of the moment.

Okay, then, fine, Ribstein’s not the first one to ask it, but frankly he’s the first one who looks quite this natty in a suit and has an endowed chair in a law school to ask it: “What, then, is the future of student edited law reviews? In a prior post I defended them along Hayekian lines — they ‘let a million flowers bloom.’ [Uh oh -- that makes one Lenin and one Mao allusion in a post about a libertarian! -- Sorry! ed.] But now blogs can do that, much faster, and without the perversities of the law review selection and editing process we all love to hate.”

CHICKS IN THE STACKS
Okay, he’s also the first one to defend law reviews as against blogs along Hayekian lines. Not, as Jeremy Richey reminds us, that there’s anything wrong with that. But it does make you — or at least it, or something vaguely like it, makes Gordon Smith and Christine Hurt think … as they do so well on their Conglomerate blog … about what an all-female law school might look like, and why.

NO FEE LUNCH
But how free-marketish, really, should the legal profession be? It is, after all — as demonstrated by brainy, bloggy practioners like David Swanner – a learned profession, not a furshlugginer business. That’s why David Giacalone of the f/k/a/ blog reminds us not to jump so fast to the world of “alternative billing” arrangements, “value pricing” and the like, whose evangelists glibly “offer the easily-tempted lawyer a paradise of premium clients and fees, with increased profits, while never probing the ethical and fiduciary duties of the lawyer to insure that the client is fully informed, treated fairly (and without manipulation) and, in the end, charged a fee that is reasonable for competent and diligent services.” As Giacalone, whose blog has a haiku motif, might put it:

Fiduciary
Lawyer, client, counselor

Okay, I’m not sure that’s exactly what he meant. But I do think he would take some heart from this posting on an anonymous blog called Opinionistas about the humanity of corporate practice, vel non.

USE ME

Along similar, if somewhat less prosaic lines — okay, a lot less prosaic lines — David Jacobson’s External Insights blog just wants to “help[] businesses make good decisions.” Including lawyers. In this post he talks about the “usability” of firm systems. In law firms, David would like us to be really clear on where to plug these darned things in. He might want to start with George’s Employment Blog, which talks about the whole making-it-work thing as applied to blogs, blogging, business and bald-faced alliteration. It’s a pretty handy employer’s guide to understanding how this New Thing is going to affect your business and your relationship with your busy, thoughtful and bloggy employees.

BLOGGING FOR THE RECORD

Evan Brown blogs regularly about cases involving the Internet. And that’s why his blog is called Internet Cases. If you’ve read this far, you should be putting Evan’s feed into your RSS reader. Last week he wrote about a case from North Carolina that gives a good example of what not to say on one’s weblog. Stuff like, you know, “I’m going to drop a boulder onto the highway.” That is, if you’re going to go ahead and do it.

Well, it’s been a long night, and I have more Passover cleaning to do plus a motion in Queens tomorrow. Hope you enjoyed the “carnival,” but please finish the hot dogs outside until after the holiday. (The buns, the buns!) Blawg Review has information about next week’s host, and instructions for how to get your law blog posts reviewed in upcoming issues. And readers: Your stubs are good at next week’s show, being held at the Appellate Law and Practice blog, followed the week after by the Law & Entrepreneurship blog by the same Gordon Smith referred to above and a cast of law students. They blog, you decide!

Have a happy and kosher Passover!

A catalog of errors

Tsubaki chainsTo register a trademark you need to provide the Patent and Trademark Office with something called a “specimen.”  The definition of “specimen” under the PTO’s rules, besides providing one reason that it’s better to be a PTO examining attorney than a doctor, is “a label, tag, or container for the goods, or a display associated with the goods.”  What could be a better specimen, you’d think, then a catalog, then?

Just about anything, actually.

A while ago I wrote a “threat? or menace?” post about the terrifying dangers of do-it-yourself trademark registrations.  My main point was that people are mistaken if they believe they have “succeeded” in the process of trademark registration if they ultimately snag that handsome certificate from the Patent and Trademark Office with its shiny seal, knighting them Sir Registered of Trademark.

The true test of a trademark registration is not how it looks in a frame on the wall.  It is how well that registration protects the registrant’s trademark rights.  That, in turn, is a function of what it is made of.  So unless you’re very lucky, you need a lawyer who knows trademark law to guide you through the application process to ensure that the registration is made of the right stuff.

On the other hand, yeah, you do want to get that registration!  And — amateur or professional — you’re not going to get it by submitting a catalog as a specimen.  I first wrote about this case further down in the procedural chain; now John Welch reports:

Trademark Rule 2.61(b) states that “[a] trademark specimen is a label, tag, or container for the goods, or a display associated with the goods.” TMEP § 904.03(g) explains that a qualifying “display” will essentially comprise “point-of-sale material such as banners, shelf-talkers, window displays, menus, and similar devices.” Tsubaki argued that its catalogs are acceptable as specimens because they satisfied the requirement set forth in TMEP §904.03(h) that they “offer to accept orders and provide instructions on how to place an order.” Examining Attorney Michele-Lynn Swain maintained that the catalogs do not contain the necessary ordering information and therefore are mere advertisements for the goods.

The TTAB agreed, writing as follows in In re U.S. Tsubaki, Inc., Serial No. 85267349 (March 7, 2014):

After reviewing applicant’s catalogs, prospective customers are not yet at the point of purchase and would need to contact applicant to obtain additional information. It is only after obtaining such information, which is not provided on the specimens, that the purchaser would be in a position to make a purchasing decision. The specimens simply do not contain adequate information for making a decision to purchase the goods and placing an order…. The mere listing of telephone numbers for corporate headquarters and a website URL does not turn what is otherwise an ordinary advertisement into a point-of-sale display or a “display used in association with the goods” and, thus, into a valid specimen showing technical trademark use.

Well, rules is rules, it seems.  And the rules is that a “display” has to be at the “point of sale.”  That, the rules say, constitutes the use in commerce required by Section 45 of the Trademark Act, which, oddly enough, does not (as the opinion points out in a footnote) require the same thing for “service marks” — only for trademarks, classically conceived as relating to tangible goods. Read More…