Originally posted 2005-11-17 13:29:55. Republished by Blog Post Promoter
Distasteful? Or just an honest day’s work for the town on the make?
Originally posted 2005-11-17 13:29:55. Republished by Blog Post Promoter
Distasteful? Or just an honest day’s work for the town on the make?
Originally posted 2007-03-21 19:12:17. Republished by Blog Post Promoter
In a dramatic acceleration of the seven-year sales decline that has battered the music industry, compact-disc sales for the first three months of this year plunged 20% from a year earlier, the latest sign of the seismic shift in the way consumers acquire music.
At least don’t tell me anymore that file-sharing leads to more music purchases — an argument that never held any water. But let’s deal with the new world. Despite keeping innumerable lawyers in silk undergarments with its sue-every-sophomore litigation approach, the music industry will never put this genie back in the bottle and return us to a time when you had to buy a whole album to get the one good song. Michael Arrington argues that this is good news, because it’s time for a long-overdue swing of the pendulum:
The faster music labels realize their massively profitable days are over, the better it will be for them, as well as the bands they represent and us, their customers. Digital music sales are not going to make up for lost revenue. Suing their customer base is not going to make up for lost revenue. In fact, absolutely nothing is going to make up that lost revenue. The industry, revenue-wise, is going to continue to shrink.
Can he be anything but right?
UPDATE: Instapundit picks up the story.
Originally posted 2006-01-22 12:59:35. Republished by Blog Post Promoter
I was on a panel called “Trademark Rights vs. Free Speech” at the Fall 2000 INTA Trademarks in Cyberspace Conference with Marty Schwimmer and David Bernstein. (Five years later I’m still glowing from the reflected brilliance!) The moderator was IP superstar Brendan O’Rourke, who cruelly, on-the-record, and correctly reminded me, “Ron, you lost the Jews for Jesus case, okay? Okay?” Yeah, well, okay. But that doesn’t mean the next guy–in this case, Google–has to! The “Jews for Jesus Whistle Blower” writes, at his Jews for Jesus blog:
Google has a few more days to respond to Jews for Jesus’ lawsuit over the rights to a blog. I bet Jews for Jesus is praying ferverently (and keeping their collective fingers crossed) that Google will give in. What is the likelihood that Google will set a precedent that all anyone has to do is sue Google and they’ll give in? Seems to me that Google is principled. And if they are willing to defend themselves against the government, there’s a good chance they’ll defend themselves against Jews for Jesus.
If Google doesn’t give in, will Jews for Jesus wilt? How much money do they have to pursue the control of a simple blog?
WB, they have plenty of money, and, as you cannily point out, they’re using this litigation to raise more. Jews for Jesus claimed (off the record) during the Brodsky litigation to have raised more in sympathetic donations than they spent on Thelen Reid’s legal fees. We’ll never know if that was true, but it’s food for thought.
As far as the “other side” went, although Steve Brodsky was the sole defendant and there was nothing but the most casual (well, and virtual) link between him and Rabbi Toviah Singer, certainly the two were aligned sympathetically. Rabbi Singer later told me that as a result of the controversy and the traffic that was generated as a result of the publicity for his website, a number of Messianic Jews (i.e., Christians with gefilte fish) returned to the Jewish fold. Maybe he was able to raise a dollar or too himself.
It is fair enough to say that the litigation was more helpful for J4J than it was for either Steve Brodsky, Rabbi singer or anti-J4J missionaries. The real loser, of course, was the law of trademark infringement, which still has not fully recovered. The most egregious aspect of J4J’s arguments on this point (as opposed to the even worse arguments–such as the cooked up “commercial use”–in the opinion) is the very premise that there is, with respect to these website cases, anything even approximating LIKELIHOOD OF CONFUSION.
As we put it in the Third Circuit brief which, among others, future Supreme Court justice Samuel Alito by all indications did not read (although he was on the panel that rubber-stamped the District Court decision with one sentence of affirmation):
Liability under the Lanham Act requires a showing, inter alia, of likelihood of confusion as to source. Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225, 1228 (3d Cir. 1978). But, appellee has submitted no admissible proof to support a finding that confusion is likely.
. . .
[I]t takes virtually no time for even self-described “unsophisticated” users to quickly realize they are at Mr. Brodsky’s site, not that of appellee. The honesty of the non-confusing message on Mr. Brodsky’s website is in stark contrast to the defendant’s website in Planned Parenthood:
Because the words on the top of the page load first, the user is first greeted solely with the “Welcome to the Planned Parenthood Page!” It is highly likely that an Internet user will still believe that she has found plaintiff’s web site at that point.
42 U.S.P.Q.2d at 1438. That kind of confusion is simply impossible in the case of Mr. Brodsky’s website . . . In response to this argument, the District Court found that an individual may be a sophisticated consumer of the Internet but may be an unsophisticated consumer of information about religious organizations. Such a user may find his or her way to the Defendant Internet site and then be confused; the Defendant Internet site advocates views antithetical to those of the Plaintiff Organization.
The last two clauses in the excerpt above constitute a non-sequitur. They also make no sense in the context of the actual website at issue, which explicitly states its opposition to “the Jews for Jesus cult” and disclaims any affiliation with appellee. Concluding that Mr. Brodsky is not part of a Jews for Jesus organization does not require any particular “sophistication.” It only requires the ability to read.
In fact, the courts routinely define “sophistication” in much less “sophisticated” terms than did the court below, where a simple grasp of the obvious is all that is required to negate confusion. Thus, in Girls Scouts v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 1231 (S.D.N.Y. 1969), the court ruled that “rational analysis” precluded confusion about whether the Girl Scouts were the source of a poster depicting a pregnant girl in the well-known uniform of the Girl Scouts appearing with the caveat “BE PREPARED.” Similarly, in Stop the Olympic Prison v. United States Olympic Committee, supra, 489 F. Supp. at 1123, a poster reading “Stop the Olympic Prison” was held not to violate the trademark of the United States Olympic Committee. The court reasoned as follows:
On the basis of its own examination of the poster, the Court finds it extremely unlikely that anyone would presume it to have been produced, sponsored or in any way authorized by the U.S.O.C. While at a fleeting glance, someone might conceivably mistake it for a poster advertising the Olympics, nobody could conceivably retain such a misconception long enough to do any harm: for example, there is no danger that anyone would purchase or display it as such.
Id. . . . As in Girl Scouts and Olympic Prison, no rational person could believe that Mr. Brodsky’s message was in any way affiliated with appellee. The District Court nonetheless held that confusion is likely because Mr. Brodsky’s site is “related” to that of appellee [and that the use of the trademark was in fact more, not less, protected for this reason, on fair use grounds!-- RDC]. The court below inexplicably rejected the inescapable conclusion that consumers can dispel any confusion if they merely trouble to read Mr. Brodsky’s message, the way Chellathurai, Kalstein and Sanchez did.
If you’re still with me, here’s a last nail from the Third Circuit reply brief:
In defending the District Court’s likelihood of confusion analysis, appellee comes again to its prized exhibits: the three “confusion affidavits” of Chellathurai, Kalstein and Sanchez. There is little left to debate regarding whether these affidavits demonstrate confusion, or, more likely, the absence of confusion. This Court will simply have to read them. A076, A080, A257. Appellee suggests that the District Court found “initial interest confusion” here. Opp. Brief. at 37. But this doctrine is mentioned nowhere in the opinion below. Developed in a sales context, it has been applied only where “a potential purchaser is initially confused [such that] the [senior seller] may be precluded from further consideration.”
Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546 (Fed. Cir. 1990) (emphasis added). Thus it does not apply here. In fact, in Girl Scouts the Southern District of New York rejected transient confusion as proof of trademark harm in a social-commentary context:
Even if we hypothesize that some viewers might at first believe that the subject of the poster is actually a pregnant Girl Scout, it is highly doubtful that any such impression would be more than momentary or that any viewer would conclude that the Girl Scouts had printed or distributed the poster.
304 F. Supp. at 1231. As the Girl Scouts court recognized, ephemeral moments of confusion that do not threaten to divert sales are not evidence of actionable harm under the Lanham Act. Real harm must be shown to overcome the constitutional protection of free speech:
No evidence is found anywhere in the record before the court that the poster has to date damaged the plaintiff in any way. No facts are presented to show that contributions to the organization have fallen off, that members have resigned, that recruits have failed to join, that sales . . . have decreased, or that voluntary workers have dissociated themselves or declined to support the honorable work of the organization.
Id. at 1235. Similarly, there is no evidence in this case of any actionable or even discernible harm that appellee has suffered as a result of Mr. Brodsky’s website. Even the court below admitted that the publicity surrounding this dispute was, far from harmful, undoubtedly a boon for appellee. A436-37. And all three supposedly confused affiants found their way to appellee’s website, undeterred by Steven Brodsky and more zealous than ever in their devotion to appellee. In fact, their reports to appellee negate the suggestion of confusion; again from Girl Scouts:
[I]ndignation is not confusion. To the contrary, the indignation of those who [reported the offending use] would appear to make it clear that they feel that the Girl Scouts are being unfairly put upon, not that the Girl Scouts are the manufacturers or distributors of the object of indignation.
Id. at 1231. This passage perfectly describes the three “confusion” affidavits here: indignant, yes, but certain that appellee was not the source of Mr. Brodsky’s website. They were not confused.
They were not confused. Unfortunately, a lot of people were, and are–about what the Lanham Act is, and is not, meant to protect, and don’t get this key point: Indignation is not confusion. We can survive that, as long as too many of them aren’t judges.
It’s a good bet, as Whistle Blower suggests, that Google will get a better hearing than lone idealist Steve Brodsky did in his case, and not just because it is better heeled. (My old firm, Pitney Hardin, handled the Brodsky litigation pro bono.) And the issues are somewhat different.
Still, Whistle Blower says that the Reverend David Brickner, the pleasant, non-Jewish head of Jews for Jesus, thinks this is the second coming of the Brodsky case. Jews for Jesus attorneys Thelen Reid probably hope so (though perhaps not every Thelen Ried partner is singing from the same sheet of music on the topic of God and intellectual property). WB beleives that from a legal point of view this seems like somewhat wishful thinking. (Not to mention the fact that this case was filed in the federal court in New York, not New Jersey, and that Judge Lechner of the former court has retired and moved onto bigger and better things.)
Then again, the Rev. Brickner’s statement is hardly the first instance of wishful confusion to eminate from the the precincts of Jews for Jesus–not hardly.
Originally posted 2007-03-30 10:57:45. Republished by Blog Post Promoter
On March 19, Utah Governor Jon Huntsman, Jr. signed a bill into law that bans some forms of key word advertising. The Trademark Protection Act, SB 236, establishes a new type of mark called an Electronic Registration Mark. Once a mark is electronically registered, the statute prohibits use of the Electronic Registration Mark to trigger advertising for a business, goods, or services of the same class as those represented by the Electronic Registration Mark.
Wow. I will admit this: For years I have been arguing that this field is so far out from what Congressman Lanham could ever have had in mind when he introduced our modern trademark law shortly after World War II that legislators, not courts, should decide how the Act should apply to keyword advertising. So I don’t have a huge problem with the concept.
My problems, however, are these:
Hm. Utah, of all places, too. Who knew?
UPDATE: Since this post first went up in 2007, Eric Goldman addressed the issue here (2009) and then, in the context of the 1-800 Contacts, Inc. v. Lens.com, Inc. case out of the District of Utah, wrote this:
[1-800 Contacts] flip-flopped on the Utah legislature’s efforts to ban keyword advertising, helping to kibosh the first law and then trying to sneak in a second law that favored their interests–aided by the fact that their in-house lobbyist is also a legislator and voted in favor of the bill her employer advocated. Yet, on its site, 1-800 Contacts claims “1-800 CONTACTS engages on public policy issues related to ocular health and the right of contact lens wearers to choose where they fill their prescriptions. We have not and will not get involved in public policy outside of the scope of this interest.” Sorry, I’m going to have to call BS on that.
Originally posted 2006-01-03 12:39:59. Republished by Blog Post Promoter
Seems Sony contracted with local graffiti artists to plaster urban space in seven cities with caricatures of children playing with video toys. The ads don’t carry any product names or the Sony brand name. The strategy was to simulate street art to deliver a commercial message about the fun of video products.
What Sony might have considered edgy and out there the city of Philadelphia as well as anti-graffiti organizations, for instance, considered out of line and against the law. Sony had not applied for the mandatory licensing and zone approval. Unofficially signs are being defaced and there could be official fines and other legal action. In New York, street folks have covered over the Sony “ad” with stickers saying “Corporate vandals not welcome.”
What the heck, they’ve been vandalizing the music industry for this long, anyway — what’s a few placards at this point?
Originally posted 2006-08-22 11:49:08. Republished by Blog Post Promoter
A Shenzhen company has been fined for sending bulk junk email in what is believed to be the first case of its kind in China where more than 50 billion spam messages are received a year, state media said on Tuesday.
I would love for someone to explain to me why so much Chinese spam comes in in Chinese characters. I know that practically most people are Chinese, but most would-be customers of spammers aren’t. Is it too much for me to insist that information about … all those spammy things… be written in good old-fashioned American?
This will teach ‘em.
Originally posted 2006-09-22 11:26:37. Republished by Blog Post Promoter
G. Mathew Lombard reviews an important article in the INTA Bulletin on the reemergence, or perhaps emergence in full for the first time, of viable claims for fraud on the PTO in trademark applications:
Specifically, the article discusses the adoption of a new “bright line” test for fraud on the USPTO. Under the test, an applicant is presumed to have committed fraud on the PTO for including in the specification of goods or services particular products or services on which the trademark is not actually used. This same rule is applied to Section 8 and 15 filings and Section 9 renewals.
He cites what he describes as the “seminal case” of Medinol Ltd. v. Neuro Vasx Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003) and analyzes the whole topic, with lots of case citations, in law review fashion. The focus, he says, is on over-inclusive descriptions of goods and services. He says the TTAB remains less moved by stale specimens or not-too-exact dates of first use in applications, and urges that the TTAB not hold practitioners’ feet to the fire over failure to disclose similar third party uses: “As likelihood of confusion (the similarity of two marks) is a subjective standard [based on ] 13 factors, it would be difficult for the Board to conclude that the applicant has committed fraud – especially since the Examining Attorney conducts her own search for similar marks” – simply by omitting such a mark.
His analysis suggests to me that in “growing” this doctrine, the TTAB is more inclined to punish overreaching counsel representing ambitious, large companies who (a) should know better and (b) are bowling for big bucks, rather than lay people and general practitioners who may inject a little fudge into the trademark applications. This is as it should be, though that fudge can cause a lot of problems, too — cancelling an improvidently granted mark that was, for example, never even used, so that your client can register his own bona fide mark that is confusingly similar to a sham registration, can be a costly and time-consuming mess. But that, and the crisp fall air, is what keeps even cranky trademark lawyers young and spry, isn’t it?
Originally posted 2007-01-22 00:11:58. Republished by Blog Post Promoter
They did the deed, or filed le writ, in France, where their chances of success — based on the last few years of pro-mark-owner decisions, plus the creeping incoherence of U.S. jurisprudence on trademark use on the Internet — are far better. We’ve thought about this topic before (PDF), if I haven’t mentioned that lately, and as skeptical as I am of the use of trademark law as a way to control distribution channels, I believe this is a cause of action that can fly — mainly because the big stinker in online auctions of luxury goods is that most of them are counterfeits.
“Too big a market to police,” cries eBay — I’ve been in the room when they’ve said this. Ah, yes, perhaps — but not at those profit margins (link added January 23rd). He who creates the problem, and profits from the problem, and controls the technology that perpetuates the problem, is the one who should bear the cost of solving the problem.
UPDATE: Vuitton wins, eBay not so much.
Originally posted 2007-01-24 16:18:46. Republished by Blog Post Promoter
Chinese Communist Party chief Hu Jintao has vowed to “purify” the Internet, state media reported on Wednesday, describing a top-level meeting that discussed ways to master the countrys sprawling, unruly online population. . . .
Hu, a strait-laced communist with little sympathy for cultural relaxation, did not directly mention censorship.
But he made it clear that the Communist Party was looking to ensure it keeps control of China’s Internet users, often more interested in salacious pictures, bloodthirsty games and political scandal than Marxist lessons.
Don’t kid yourself: This could be a very big deal. China can’t be competitive as anything other than a source of slave labor if it shuts down the Internet, Cuba-style — and it wants to be. On the other hand, its leaders do not want to cede political control along with economic control, which history has proved to be a very difficult task.
Incidentally, I take the stated concern with morality, as understood by the bourgeois among us — “We must promote civilized running and use of the Internet and purify the Internet environment” — at face value. It’s not an illegitimate concern, issues of power apart. The Internet is, or perhaps more accurately encompasses many things including, a moral cesspool. Free societies have by and large surrendered to this risk, preferring the very real risk of social harm to what they regard as the intolerable cost of censorship. How China goes about making its way on this issue, regardless of our view of it, will be objectively interesting and will matter beyond the borders of Middle Earth.
Originally posted 2005-12-04 21:49:42. Republished by Blog Post Promoter
It wasn’t your cache files — if indeed anyone checks in here regularly (traffic logs say they do) — nor, unfortunately, a trial. We’ve been gone for a while because of a death in the family. Now we’re back.
Here are some trademark-related and other topical links to think about while we get back up to speed:
UPDATE: Another interesting review at Blawgreview.com.
Plaintiffs, who had previously licensed their trademark to defendants in return for the payment of a 5% royalty rate, filed suit in federal court alleging, among other things, violation of the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. 1125(d). Defendants moved to dismiss for lack of subject matter jurisdiction, and the court granted the motion. It found that the case presented merely “a state law contract dispute, not one involving substantive questions of federal law.”
The court ruled that the only dispute between the parties was over the nonpayment of the agreed-upon royalty. Because defendants had been authorized to use plaintiffs’ trademark, the court held, there could be no bad faith intent to profit from the mark. Accordingly, without a valid claim under the ACPA, there was no federal question, and the court was without subject matter jurisdiction.
Reasonable minds may differ as to whether this holding was correct. Doesn’t it seem that if the royalties weren’t being paid, then the use of the trademark was not, as the court concluded, authorized? In other words, wasn’t payment of royalties a necessary condition of authorization? To bring it under the language of the ACPA, doesn’t it seem like continuing to use a trademark as a domain name without paying for it would be in bad faith?
Originally posted 2007-04-11 02:36:24. Republished by Blog Post Promoter
Check out the 55th edition of Counterfeit Chic’s Knockoff News!
Originally posted 2007-02-04 13:48:04. Republished by Blog Post Promoter
Originally uploaded by Likelihood of Confusion.
I was in Israel last week. In Israel there is more capacity for confusion, and for clarity, than anywhere else. You can see my abbreviated travelogue by clicking on this picture of the city walls of Jerusalem, overlooking the very gate of Hades (appropriate for a litigator).