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If infringement falls in a forest….

Framing the Marshall courthouseCan there be “infringement” of a trademark without confusion?

As she is so apt to do, and to do so well, Pamela Chestek asks that question in this post, entitled Infringement Without Confusion?, which is about something completely different from what I thought it was going to be about, because I know that, in New York at least, the answer can be yes.

That’s not the question Pamela is asking.  

But this is a great opportunity, and given the name of this blog and what I say up in the right-hand-corner there, a good place, to unpack a few things about this thing, and address what I thought she meant before proceeding to what she meant, as well as to what’s going on in the comments to her post.

  The … confusion on my part is not, in fact, irrelevant.

What was I thinking of when I read the question?  New York’s famous, or perhaps infamous, state-law tort of unfair competition by “wrongful misappropriation,” of course.  To wit:

In New York, the “essence of unfair competition . . . is the bad faith misappropriation of  the labors and expenditures of another, likely to cause confusion or to deceive purchasers as to the origin of the goods.” Nabisco, Inc. v. PF Brands, Inc., 50 F. Supp. 2d 188, 212 (S.D.N.Y. 1999). To assert an unfair competition claim, a plaintiff must demonstrate (1) a likelihood of confusion, and (2) the defendant’s bad faith. Kraft Gen. Foods, Inc. v. Allied Old English, Inc., 831 F. Supp. 123, 135 (S.D.N.Y. 1993). Unlike a claim for trademark infringement, proof of secondary meaning ,or, indeed, of a protectable mark at all) is not required. Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339, 364 (S.D.N.Y. 1998).

Ok, very nice.  But is “infringement without confusion” the same thing as “confusion without secondary meaning”?  

Well, how would it be different?  Once you’re dealing with logical dead-ends, after all, they start to look quite similar, and end up in more or less the same place.blivet the devils tuning fork After all, the premise of confusion is a baseline of association — in trademark law, we call that secondary meaning, or… a protectable mark.  

Same place.  

Indeed, pointier heads than that of LIKELIHOOD OF CONFUSION® have long pondered what the heck it means to have a likelihood of confusion without secondary meaning, or without a protectable mark.  

As one academic treatment of this odd creature put it,

Some legal theories, like the proverbial vampire, refuse to die. The common law tort of misappropriation is one such legal theory, and the recent Restatement (Third) of Unfair Competition (Restatement) may finally lead to the demise of this outdated cause of action.

Regrettably, the “recent” referred to in that quote was 1993.   Read More…

Reporters without Borders Nominates MBA for Freedom of Expression Blog Award

Originally posted 2014-11-26 12:58:01. Republished by Blog Post Promoter

mediabloggers-fixed_logoYesterday the Media Bloggers Association announced that it has been nominated for a “Freedom of Expression Blog Award.” You can read about the award here. You can vote for the MBA, and — entirely incidentally — thereby make me (the MBA’s lawyer) look a little good, here. Do!

Kane on Trademark Law – 6th Edition

Originally posted 2014-10-06 09:52:00. Republished by Blog Post Promoter

Kane on Trademark Law - 6th Edition

I’m biased in reviewing the 6th edition of the only comprehensive single-volume —

Well, there you go.  Bias number one:  As far as I can tell, Siegrun Kane’s Kane on Trademark Law: A Practitioner’s Guide is the definitive comprehensive single volume on trademark practice.  I have had my copy on hand at all times for over a decade.  When I learned that it had been updated in May 2014, I was pretty excited.

Bias number two:  I was excited because it was Siegrun Kane herself who mentioned it to me when I had the pleasure of seeing her, many years after we last worked together for a common client, early this year. That was when we both presented at the New York City Bar’s “Trademark Talk” CLE extravaganza, where she brought down the house.  So that’s (2) and (3), I guess:  We’re old colleagues, but although Siegrun is a legend in trademark law whereas I am something between a bad dream and a bit of gas, she is always unfailing gracious.  (As is her husband, David, whose picture is right there on the Wikipedia entry for “gracious.”)

So I’m all biased up, because I’m predisposed to liking this work, having always done so, and because I got a free new review copy of the 6th Edition because Siegrun asked them to send it to me.  But such bias is not, as we say in the trademark practitioner field, for nothing.  You have to have this book.

Wait:  Bias number four:  I’m writing for lawyers who have, and want to have, and like to have, books.  In other words, lawyers seriously interested in learning the answers to legal questions, and indeed identifying the right questions, thoroughly.  If you think you can learn how to be good at this by just doing text searches on Westlaw and Lexis —

Trademark lawyer Ron ColemanWell, you still need this book.  Because it’s one volume, and it’s all in there.  Perhaps it’s also in McCarthy’s treatise; but, frankly, who knows?  McCarthy is massive, it’s expensive, it’s full of forms you probably don’t want or need; and it’s got rust all over it.  Don’t get me wrong:  McCarthy’s treatise an encyclopedia of trademark law, really; if you ever need to know gobs and gobs of cases standing for this, that or the other proposition under the Lanham Act, you will want to have access to McCarthy, which you can cite like a court case.  It’s the black-letter dinosoropedia of trademark law.

But if you want to have one volume right at your side that allows you to scope out, in succinct, snappy prose organized along the lines that make sense in evaluating your client’s claims or defenses, this is the one.

Read More…

Speech and — more? — speech re Russ Feingold

Originally posted 2010-11-05 17:11:32. Republished by Blog Post Promoter

Don’t say they’re anything but — what’s the term? — “fair and balanced” over at Randazza’s Legal Satyricon blog when it comes to the post-mortem on the end of Russ Feingold’s present level of responsibility with respect to the public trough trust.

Focusing on the McCain-Feingold Incumbent Protection Act, one of his satyrs, J. DeVoy, writes:

Russell Feingold will be an ex-senator in January.  It’s not soon enough.  Feingold, half of the propulsion behind the McCain-Feingold Act that limited political speech and chipped away at your First Amendment protections, was never the reformer he portrayed himself to be.

McCain-Feingold has long been one of the outgoing Wisconsin senator’s hallmark achievements. . . .

So what if he initially voted against the Patriot Act, a token vote doomed to uselessness?  When it mattered, at election time, the only civil liberties that were worth defending were those that Russ Feingold found important – evinced by McCain-Feingold.

Here to help with fairness

Marco himself couldn’t take that sitting down, and ripostes, crying “Shame on Wisconsin” (a state I was just getting to like) and with not a small bit of overstatement, as follows:

In 2001, I watched as dissent began to be equated with disloyalty. Questioning became equated with sabotage. Standing up for what you believed in became equated with treason.

My fears unfolded as the Patriot Act was rolled out. Did anyone really believe that the government worked tirelessly to “protect us,” drafting the Patriot Act almost overnight? Or was this a wish list of authoritarian desires that had simply been waiting in a file marked “Do Not Release Until We Have a Good Excuse.”

I watched as 99 of Russ Feingold’s colleagues voted to pass this sweeping measure that changed what it meant to be an American.

There was what to complain about in the Patriot Act, as the Supreme Court ruled time and again, though little of it had to do with the curtailment of free speech — Marc’s “topic,” I always thought — and certainly not the curtailment of classic political speech, which was what made McCain-Feingold a true crime against the First Amendment.

But Marc’s post completely ignores McCain Feingold.  Now who, or what, would have put a gag on the likes of such a man such as to cause such conspicuous silence where there was, as they say, a “duty to speak”?

Grapes of Rath

Originally posted 2010-06-08 15:23:57. Republished by Blog Post Promoter

The Patently Obvious Blog reports that the Federal Circuit, still clinging to antique notions of national sovereignty, quaintly rules that although the U.S. is indeed a signatory to the Paris Convention (of course! Paris!), “the Paris Convention is not ‘self executing’ and thus has no direct effect on U.S. law.” In other words, Congress has to amend the Lanham Act to amend the Lanham Act. Evidently this “sovereignty” fetish applies to important matters like trademarks, not the death penalty and stuff.

Incidentally, the ruling means that a certain Dr. Rath (sounds like a James Bond nemesis, or maybe a very bad advice columnist, doesn’t it?) (and it doesn’t help that in German you pronounce it like “rot”) cannot obtain a trademark registration for his last name in the U.S. despite his holding a foreign registration.

One more reason why they laugh at us in Europe, I guess…

UPDATE:  See John Welch here.

MTA’s way or the highway

Originally posted 2009-09-02 16:31:48. Republished by Blog Post Promoter

I’ve been watching these guys at the MTA and their IP enforcement program for a while now.  Once was for a client, who, regrettably, didn’t want to fight.

  • I first picked up on this over four years ago, when I wrote,

The New York Times reported (yes, reg. req.) last week that New York’s Metropolitan Transit Authority is scrambling to enforce trademark rights in its wide array of iconography, including the famous alphanumeric train symbols known to all New Yorkers. . . .

Still and all, there is an interesting trademark policy issue in here somewhere. It’s one thing to say that services aren’t free and that even when, as in the case of the MTA, they succesfully address significant externalities, their costs should not be unduly disconnected from users. But it’s another thing to say that, however revenue-starved, a public institution (in the broad sense of the word) such as the MTA should restrict the public, much less the bloggy, enjoyment of a public iconography such as the train number symbols and the image of the classic subway token.

  • A few months later I reported on a “crackdown” by the MTA on unauthorized distribution of copyright-protected maps of the subway, and cited Bill Patry, who said, in a similar vein:

There is no statutory bar to protection for original subway maps, therefore. There should, though, be a common sense bar but that, like common decency, is apparently lacking.

  • Later in 2005 I saw the MTA’s overreaching finally exceed the breaking point, when it tried to register trademark rights in this original phrase (they were succesful, too).If you see something say something


What, really, is the point?  It’s just your (my) tax money at work.

  • In 2006 I noted a story reporting that — unlike a lot of other copyright, trademark and right-of-publicity owners who have not made a peep — the MTA made those masters of confusion, “Jews for Jesus,” stop using the transit symbols in their underground evangelizing, though in reality, they probably didn’t have to.
  • Then, most recently, I “covered” an item — involving official New York City family planning devices bearing a “subway theme,” regarding which I suggested, somewhat tongue in

cheek, that this would seem to undermine any secondary meaning connecting the subway route symbols and subway routes at all.

This suddenly came to my attention again, when, three weeks ago, the following comment appeared on that two year old post: Read More…

Hooters Overreaching on Trade "Dress": You can look but you’d better not touch

Originally posted 2005-01-27 09:21:00. Republished by Blog Post Promoter

IP News Blog at Pierce reports that the high-class joint Hooters has lost an attempt to claim trade dress rights in the colors worn by their high-class waitresses. What was this “trade dress”? According to Randall Zidones, who posted the item, “The girls at [competitor] Winghouse wore red shorts and white tank tops, similar to the orange shorts and white tank tops of the Hooters Girls.”

Orange shorts and white tank tops, “trade dress”? When will it end?

When judges stop it. Looks like one did.

UPDATE: She really did, bless her heart. According to the original news report picked up by Zidones, U.S. District Judge Anne C. Conway actually entered a directed verdict after Hooters put in their case! Not only that, but the defense’s counterclaim went to the jury and Hooters got socked with a $1.2 million jury verdict that the Hooters was in breach of an earlier agreement between it and Winghouse to settle all trademark claims. Terrific legal work by a gent named Don Conwell, a leader in the technology litigation bar, who practices in Florida.

Copyright’s absolute liability?

Originally posted 2009-08-18 13:58:00. Republished by Blog Post Promoter

Michael Ratoza of U.S. IP LAW reports (via @BeelJDPhD) on a case that issues a somewhat stunning ruling for those of us, such as LIKELIHOOD OF CONFUSION®, who have never really thought about the question of common-law indemnification for copyright infringement — or, worse, who have thought about it a little and assumed it must exist.

128298583190782500copycatIt doesn’t.  Maybe.

The story:  A builder was sued for copyright infringement for selling a house constructed on plans it had purchased from a third party but which, it turned out, had in fact been copied, without permission, from another set of plans which happened to have been protected by copyright owned by a competing developer.

In attempting to defend itself, the builder brought indemnification claims against the seller of the counterfeit plans. He argued that the seller committed fraud and misrepresentation in selling plans that the seller knew were wrongfully copied. The court dismissed the indemnification claims because there is no right of indemnity for copyright infringement.

The court pointed out that there is no indemnity right included in the Copyright Act, and that the Copyright Act preempts conflicting state law. As such, state indemnity law does not apply. In any event, it is federal common law, not state common law, that applies in a copyright proceeding. Federal common law is very limited and does not include the right of indemnity for violation of federal law.

Outside of the building context, this case raises anew the obvious problem faced by the buyer of goods that turn out to be counterfeit. How can the innocent buyer of counterfeit goods protect itself from liability when the seller fails to disclose that the sold goods were wrongfully copied?

And sellers usually will fail to disclose that sort of thing, after all.   Maybe.

I found this language a little odd:

The court pointed out that there is no indemnity right included in the Copyright Act, and that the Copyright Act preempts conflicting state law. As such, state indemnity law does not apply.

Well, wait.  If there is no indemnity right, there is nothing to preempt, is there, unless the Copyright Act explivity forbids indemnification (which it does not)?  It turns out, in fact, that I’m not the only one who sees it this way:

Unlike claims of contribution, courts have upheld state law claims for indemnification, arising out of state common law or statute. In Foley v. Luster,249 F.3d 1281 (11th Cir. 2001), the Eleventh Circuit upheld against a preemption argument, a state common law claim to indemnification. As with contribution claims in copyright cases, the right of indemnification was asserted as a cross-claim. After the plaintiffs settled , the cross-claim went forward, with a jury finding indemnification was required. A post-trial motion to dismiss on the ground of preemption was filed and denied. The Eleventh Circuit affirmed the denial, holding that the extra element test for preemption did not apply, allegedly, because indemnification “does not concern the rights of a copyright holder. Rather, it concerns the allocation of responsibility between copyright infringers.”  But that is true of contribution too, the right to which has been held preempted. . . .

This does not mean, however, that the right to indemnification for paying infringement damages is preempted. It is my opinion, such a right is not preempted because the right or remedy is not equivalent to any granted under the Copyright Act and does not arise under the Copyright Act: once payment is made to the copyright owner, the federal interest in extinguished.

That’s not just any opinion out there, disagreeing with the Eleventh Circuit’s rationale but agreeing with its holding — it’s Bill Patry‘s.

So, the case I first thought Michael was writing about was KBL Corp. v. Arnouts, 2009 WL 302060 (S.D.N.Y. 2009), from February of this year (opinion here).  Interestingly, the court there disagrees with Patry’s link between contribution and indemnifiction, citing Conrad v. Beck-Turek, Ltd., Inc., 891 F.Supp. 962, 966 (S.D.N.Y.1995), and after dispensing of the contribution argument analyzes the indemnifcation on its own merits.  But its rationale in denying indemnification is based on a peculiarity of New York indemnification law: Read More…

Exactly Wrong on Free Speech for New Media

Originally posted 2010-12-13 15:16:25. Republished by Blog Post Promoter

Via the permalink-less Kausfiles, a link to excerpts from (and suckup commentary about) remarks by CNN suit Jonathan Klein espousing the self-parodic, anti-democratic, anti-free-speech, and, yes, darn it, bad-for-the-children “MSM” concept that, well, alright, maybe we will let new kids play in our sandbox, as long as we can still decide who gets the secret decoder rings:

When the Jeff Gannon bomb exploded in the White House press room, where was the White House Correspondents’ Association? … I have a modest proposal for the White House Correspondents Association, whose annual black-tie gala I eagerly await next week: cancel the gala, and instead spend that time and energy creating standards–and enforcing them–for those who would call themselves White House correspondents.

Sheesh. The “Jeff Gannon bomb exploded”? How about the Helen Thomas bomb? Or is that okay ‘cuz she’s a freedom fighter?

Reality is stranger than… something

Originally posted 2011-07-12 17:46:52. Republished by Blog Post Promoter

The horror.

Larry Zerner does it again with his uniquely unique (if too infrequent — that’s a free tip, Larry) content.  This time it’s an article called, “5 Horrible Provisions You Might Find In A Reality Show Contract.”  A perfectly pleasant explanation, followed by a horrible example:

For those people who hear the siren’s song beckoning them to a reality show, I would caution them to be very careful.  Especially if you are already pursuing a career in the entertainment industry, there are many provisions in the reality show contract which can hinder your career, make your life miserable, or both.  Reality television show producers realize that so many people are desperate for a chance to be on television, they can make the contract completely lopsided. . . .

The reality show contract . . . contains a provision that allows the producers to present you in any way they want, even if it is completely untruthful, and you cannot sue them for that.  In theory, if the producer wants to edit the footage to make it look like you are a racist psychopath who gets his greatest pleasure from killing babies and raping nuns, they can do so, and there is nothing you can do about it.  So if you think that your appearance on the program will make you look good, keep in mind that you don’t control the footage, the producer does.

Which would explain why, from what I gather (I’ve never watched a reality show), no one really looks particularly good on a reality show.

Monkeys and copyright: On the issue of standing

Dennis Crouch:

Patent Litigator Andy Dhuey is also representing Photographer David John Slater who has been sued by the monkey Naruto for copyright infringement. In the 9th Circuit Brief, Dhuey writes:

A monkey, an animal-rights organization and a primatologist walk into federal court to sue for infringement of the monkey’s claimed copyright. What seems like the setup for a punchline is really happening. It should not be happening. Under Cetacean Community v. Bush, 386 F.3d 1169(9th Cir. 2004), dismissal of this action is required for lack of standing and failure to state a claim upon which relief can be granted. Monkey see, monkey sue is not good law – at least not in the Ninth Circuit.

More from ATL.

And there’s even more, in fact, from everyone all over the place, of course, but I like to link to blogs, so here’s also TechDirt, where Mike Slater wisely concludes, “PETA has even less of a right to the copyright in the photo than Slater — and Slater has none.”  And here’s LIKELIHOOD OF CONFUSION®’s own treatment of the controversy, courtesy of Matthew David Brozik, which precedes the present proceedings.

All very nice.  But if indeed it is a matter of standing, well, I think everyone is missing the point, which is thisRead More…

The Redskins appeal brief in Pro-Football v. Blackhorse