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Petroliam Nasional Berhard to SCOTUS: Gimme shelter

Did the 9th Circuit miss a spot?

In December 2013 I wrote, mostly cribbing from Jane Coleman‘s commentary, about the very dubious Ninth Circuit decision in Petroliam Nasional Berhad v. GoDaddy.com (9th Cir. Dec. 4, 2013) that declared the existential impossibility of a claim for contributory liability based on the Anticybersquatting Consumer Protection Act (ACPA).  The bottom line, I wrote then, was that “Unfortunately the Ninth Circuit went beyond dictum here, it seems, affirmatively deciding a question it didn’t have to and doing so with unfortunately overbroad language that’s likely to cause a lot of litigation confusion.”

Reasonably enough, then, given the view of the matter around my house, Petroliam Nasional Berhad has filed a Petition for Certiorari to the Supreme Court.  The question presented:

Do the normal rules for contributory trademark infringement set forth in Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982) apply to trademark infringement by “cybersquatting” under Section 43(d) of the Lanham Trademark Act?

That’s a nice way to present it, I think.  The summary of argument:

In rare cases, a federal court decides an important federal question in a way that conflicts with relevant decisions of this Court. This is such a case, as the court below held that there is no contributory liability for trademark infringement committed in violation of Section 43(d) of the Lanham Act. This approach conflicts with  longstanding contributory liability principles that have guided this Court and other federal courts for more than 30 years. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982) (holding that there is a cause of action for contributory trademark infringement under the Lanham Act.). And it contradicts this Court’s well established precedent that “when Congress creates a tort action, it legislates against the legal background of ordinary tort related vicarious liability rules and consequently intends its legislation to incorporate those rules.” Meyer v. Holley, 537 U.S. 280,285 (2003).

And, if you will, the meat of it:

The Ninth Circuit’s opinion thus misapprehends Section 32(D)(iii) – quoted above – which only exempts from liability the registration or maintenance of a domain name by a registrar “absent a showing of bad faith intent to profit from such registration or maintenance of the domain name.” More importantly, it contradicts the plain language of the statute which shows that Congress did intend for there to be contributory liability for cybersquatting in violation of Section 43(d), albeit subject to the narrow exception in Section 32(D)(iii). And the legislative history of Section 32(D)(iii) confirms what the statute’s plain language makes clear, namely, that Congress was codifying an existing limitation on secondary liability for cybersquatting. See 1999 WL 594571 (Leg.Hist.), S. Rep. 106 140, at 11 (Section 32(D)(iii)’s intended effect was “codifying current case law limiting the secondary liability of domain name registrars and registries for the act of registration of a domain name.”). Neither the language of the statute nor the legislative history supports the Ninth Circuit’s conclusion that Congress intended to eliminate secondary liability altogether.

Secondary Trademark Liability

It’s all in here!

The plain-language point being this:  It’s clear that there is no liability for domain registrars, secondary or otherwise, under the ACPA arising out of their simple execution of the “rote” function of domain registration.  But under the Ninth Circuit’s opinion in Petroliam Nasional Berhardnothing a registrar could do, no matter how beyond this “ministerial” registration function, could result in secondary liability for any party based on an underlying violation of the ACPA. While that wasn’t even close to the dumbest thing a circuit court said about IP law in 2013 (this is), there doesn’t seem to be any reason for the Circuit Court to have said it.  And yes, there are plenty of good reasons for it not to have said that.  Jane explains it all, if you don’t follow.

Still, it’s hard to see how the petitioner gets the Supremes’ attention on this, because the outcome appears to have been right.  As far as I can tell, there isn’t a very good factual hook to justify reversal, and the Court of Courts isn’t in the business of tidying up messes like the one the 9th made here.  (Whose business, exactly, it is to do that is not entirely clear.)

Bully, all the same, and best of luck to Perry Clark, counsel for petitioner, who has ample experience to appreciate the uphillness of his battle.

THE SLANTS — Federal Circuit brief

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.

I enjoy being a trademark lawyer

Originally posted 2009-03-27 17:28:28. Republished by Blog Post Promoter

John Welch at the TTABlog® has up what even he acknowledges is an “excit[ing]” post, in which he both imagines himself a woman and quotes this lively Trademark Trial and Appeals Board opinion excerpt concerning the resolution of the Chippendale’s dancer-boy trademark appeal I discussed a while back:

The TTAB appeal was a washout

The TTAB appeal was a washout

Judge David Bucher . . . asked “what purpose is served by prosecuting this application in light of applicant’s [incontestable] registration,” particularly in light of the burden it placed on the PTO? “Trademark Examining Attorneys laboring under demanding production requirements cannot afford to be time travelers, and few have advanced degrees in dramaturgy and theatre arts.”

Nonetheless, he found that the subject mark “would appear to be an original creation and an immediately recognizable symbol belonging to applicant alone, and hence, inherently distinctive.”

Judge Bucher accepted [drama iconology expert] Dr. Shteir’s conclusion that “the expectations of the all-female audience to whom the show was originally presented are critical to our decision herein.”

Yay for Judge Bucher!  Unfortunately for Chippendale’s, however, as well as LIKELIHOOD OF CONFUSION®, which opined that the seedy purveyor of undercooked beefcake should (not “would,” Mr. Welch!) win this one, the ellipsis above elides the words, “in a lively dissent.”

See John’s blog for learned analysis of the opinion, as well as thoughtful consideration of the practical lawyering and IP-strategy issues originally addressed in the comments here.

How Tweet it is

Originally posted 2010-09-15 21:15:29. Republished by Blog Post Promoter

A little topical tweeting music from the last few weeks via @roncoleman:

You could do worse than to check these out.

And away we go!

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?