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Strumming their fate

Originally posted 2006-06-06 20:39:18. Republished by Blog Post Promoter

Gibson Les Paul Guitar

The Les Paul Guitar

We blogged a while ago about the Les Paul guitar lawsuit, based on the idea that the shape of the Les Paul guitar was a trademark of Gibson Guitars when the District of Tennessee declined to agree with that idea. Now it’s been finally resolved, and the winner isn’t Gibson — the Supreme Court denied to hear their appeal from the Sixth Circuit Court of Appeals, which affirmed the decision. The Baltimore Sun reports:

William D. Coston, a Venable LLP attorney who represented Paul Reed Smith in the case, said the appellate court ruling and the Supreme Court’s refusal to hear the case further clarify trademark restrictions on product shape.

“The law says to win a trademark case you have to show a likelihood of confusion,” Coston said. “Gibson was forced to concede that no one would ever be confused at the point of sale.”

Steve Duvall, a sales associate at Music-Go-Around in Cockeysville, said many companies have mimicked the Les Paul style.

“For the longest time, Gibson overlooked it,” he said. But with the popularity of the Paul Reed Smith’s Singlecut, “the company had really broken into the same market.”

Point of sale, not “initial interest,” is what governs confusion? What a concept!

Changing the IP Mentality

Originally posted 2012-06-22 14:07:19. Republished by Blog Post Promoter

Mark V.B. Partridge, a partner at the firm that bears the name of my old trademark professor and author of the Guiding Rights Blog [link is dead – RDC], has written a very important piece for the [non]billable hour blog. Here’s my favorite suggestion:

2. Eliminate rights in gross mentality

My second change, admittedly related to the first, would be to eliminate the “rights in gross” mentality. By this, I mean the notion that a trademark creates an absolute and exclusive right. One sees this tendency on both sides of the rights issue. A trademark owner may have the view that no one else may use its mark for any purpose. The junior user may believe there is no infringement if the mark it adopts is not identical to another’s trademark.

I don’t think there’s a single bigger problem in trademarks than this mentality. It is not necessarily an unreasonable view for trademark owners to have; they pour millions or even more into the “brand equity” represented by a trademark. But that should not, and does not, change what a trademark is supposed to be. Unfortunately, the flowering of federal trademark dilution law has cut in exactly the opposite direction of this would-be change — and I don’t see it getting better.

Blawg Review!!!

Originally posted 2011-05-25 15:33:57. Republished by Blog Post Promoter

How did I miss this? Happy century of weeks!

I actually hadn’t.  Here’s where we’re really up to, though!

King Kong meets Godzilla

Originally posted 2014-04-22 21:57:10. Republished by Blog Post Promoter

Via Drudge — unleases a whopper:

Microsoft on Tuesday launches a fierce attack on Google over its “cavalier” approach to copyright, accusing the internet company of exploiting books, music, films and television programmes without permission.Tom Rubin, associate general counsel for Microsoft, will say in a speech in New York that while authors and publishers find it hard to cover costs, “companies that create no content of their own, and make money solely on the back of other people’s content, are raking in billions through advertising and initial public offerings”.

Mr Rubin’s remarks, presaged in an article in Tuesday’s Financial Times, come as Google faces criticism and legal pressure from media companies over services allowing users to search online for books, films, television programmes and news. Viacom, the US media group, instructed YouTube, which Google owns, to remove 100,000 clips of copyright material.

Okay, so there’s a touch of irony here:

You see, Microsoft excels at marketing. They don’t excel at innovation. In fact, very little of what Microsoft has to offer is truly innovative. There is a tendency to come late to the game and snatch up an idea and build on it, perhaps years after the concept has hit the market, and call it their own. They market themselves as innovators and do a degree they are. Their innovation comes in the spit and polish and not in the technological breakthrough itself.

Examples of this go way back …

Arguably, Google has innovated more — with its search engine technology and the applications it has spun off them, and in the way it has changed the face of how people use their (and others’) computers — than Microsoft ever will. What commercial reality is motivating this attack, then? Read More…

What’s A Library, and What Is Google Going to do to It?

Originally posted 2005-08-19 16:32:51. Republished by Blog Post Promoter

Discussed with intelligence and insight at the Derivate Work blog.

Semaphores and metales

Originally posted 2013-05-09 14:32:26. Republished by Blog Post Promoter

The CraftsmanTwo kinds of analogy, as scrambled by an old and dear friend. Evidently, there is another kind. John Welch writes about a TTAB decision cancelling trademark registrations based on the petitioners use of the mark, for purposes of avoiding a defense of abandonment against the putative senior user, that is not quite trademark use but is “analogous to trademark use.”

John writes about the rather thin reed on which the TTAB places the weight of this cancellation for the mark “ALS IK KAN” — Finnish for “All I Can” — by noting that the Board seemed to have done all it could to return the ownership of the mark to a lineal descendant of the senior user. I would have liked to hear more from John about this entire concept of “analogous to trademark use” use. Maybe I will.

Is your blog anti-otherly-abled?

Originally posted 2011-07-15 00:16:13. Republished by Blog Post Promoter

Scott Kirwin explains why it might be.

Stop making cents

Originally posted 2006-11-12 00:11:30. Republished by Blog Post Promoter

penniesVia AdSense, that is. Phillip Lennsen reports that that’s what Google told this blogger, whose blog contains the word “GOOGLE” in its URL. The company cut off his AdSense feed. The Big G later relented, probably realizing there wasn’t much genericization risk (Google’s current, and belated, obsession) here and — because I know their trademark people are top-notch — recognizing brand-healthy nominative fair use when they see it.

This Isn’t One, Either. Heavens, No.

Originally posted 2009-09-30 23:33:12. 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 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’ 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.

Abhoring a vacuum

Originally posted 2007-04-05 00:22:52. Republished by Blog Post Promoter

electrolux-oldRebecca Tushnet’s 43(B)log writes about a recent decision in the U.S. District Court for the Eastern District of New York — “Nothing sues like an Electrolux”:

If you sue a competitor for false advertising for telling people that your products infringe its IP rights, you can expect some IP counterclaims. And that’s what happened here. . . .

Trade dress infringement dominated the case, which provides a nice illustration of the three principles I tell my students are key in §43(a) trade dress cases: (1) the plaintiff’s ability to select and define elements of its claimed trade dress based on what it is that the defendant copied; (2) the key role of functionality and the tensions between refusing to protect functional features and protecting overall nonfunctional dress; and (3) the role of word/house marks in fending off confusion. Because of the factual uncertainty surrounding issues of protectability and confusion, the court denied summary judgment to both parties. . . .

My feeling is that Electrolux got a pass on its trade dress claims because of [junior user] Imig’s false advertising, copyright infringement, and general chutzpah in suing [senior user] Electrolux. If this had just been a trade dress case, Imig should have prevailed on summary judgment.

Rebecca is probably right. It’s a hard lesson that even without the involvement of juries, many judicial outcomes are largely rationalizations for the dispensing of rough justice. This is as true with trademark cases, or more true, than many other areas of law, especially because most judges (dare I say most judges’ clerks?) aren’t experts in the field and few cases get to the substantive decision stage. Judges usually think trademark disputes are petty and insignificant, and they are loathe to grant a summary judgment in a case they think should be settled. They also increasingly tend to side with mark holders and, as the trend of cases over the last few years makes clear, they don’t get fair use.

This matters because practitioners and clients have to be aware that the most elegant and well-supported argumentation frequently doesn’t really matter if the judge thinks your client is in the wrong and has the broad degree of discretion accorded to courts in “soft” areas of IP law such as the Lanham Act.

And that’s why they say good facts beat good law just about every time. Call it judicial nullification.

The decision by U.S. Magistrate Judge James Orenstein is here.