Best of 2009: Impolitico
Posted September 17, 2009.
I first read about the brouhaha over the Politico trademark claim against the College Politico blog on Instapundit:
ED MORRISSEY: “Who owns the word ‘Politico’?” The blogosphere has been very good to Politico, and I think they should bear in mind the ill-will they’re incurring as a result of their heavy-handed legal tactics. This is like me going after everyone who uses the word “pundit” in their blog name.
Almost everything about that post, and other things besides, made me very much not to want to have an opinion on this topic. Just think what that’s saying!
The Politico’s case seems to rest on the “likelihood of confusion” standard as they claim it’s likely that people who come across Gutkowski’s site might think they were coming across a site affiliated with The Politico.I think that’s a pretty weak claim.The College Politico looks nothing like The Policito in design or content. It specifically claims a slant to the right and does not purport to be a straight news site in any way. “Politico” is also a commonly-used word and Gutkowski seems to be using the word as the dictionary defines it.
It seems to me that if The Politico’s claim is granted, the court would set a precedent for other people to claim ownership of other common English words. In which case, I’m going to go ahead and grab “blog” and “times”, and maybe “the”.
Of course, I’m not a lawyer, nor do I pretend to play one in the blogosphere. However, my friend Ron Coleman is, and what’s more, he’s an expert in trademarks and copyrights, so he ought to know a thing or three about the . I’d definitely be interested in his take on The Politico’s claim.
Well, I can’t agree with Glenn Reynolds’s “everyone who uses the word ‘pundit’ in their name” example, and while Jimmy is blogging with mouse in cheek about his planned claim of “blog,” “times” and “the,” I give him credit for making some effort (if not for a helpful title, confusing copyright and trademark, on his blog post). Frankly, there is some very good discussion, but unfortunately also some very bad, incorrect information mixed in, at the original post over at Hot Air.
A couple of things. Let’s sit down.
First, the problem with Glenn Reynolds’s “pundit” example is, of course, that his blog is called INSTAPUNDIT, not “Pundit.” Instapundit is a brilliant coined word. While it is not fanciful — the best, most protectible kind of trademark, because you have to invent a fanciful word and then build its meaning up from scratch — it is entitled to a very high degree of trademark protection. Though it alludes to the qualities of a current events blog (currency and punditry), the word has no dictionary meaning at all, and does not threaten to become generic (see below) or even descriptive. No one calls any other blogger “an instapundit” unless they specifically mean to compare them to Instapundit. In fact the question is really, what if someone had started a blog called “College Instapundit“?
In contrast, if Glenn had spun off a family of “-pundit” blogs and then tried to assert a claim based on that, he’d have a different kind of claim going, and it would be more challenging to enforce both because of the greater difficulty in establishing a “trademark family” — see here — and because the relative weakenss of “-pundit” for bloggers, due to its descriptiveness (again, see the next paragraph) would come into play.
Second, as many of the commenters point out, yes, you may own the trademark rights to a standard word in the dictionary, just not in the way that the word is defined in the dictionary, for that would be a generic or, possibly, descriptive use of the word.
- Generic words are never amenable to trademark protection; hence, “blog” cannot be a trademark for a blog. (It can, however, be a trademark for a candy bar, a line of designer pajamas or a new cure for the shuffles.)
- Descriptive words can become trademarks, if you can convince either the Commissioner of Trademarks (for registering the mark) or a judge (to enforce common law rights or involving litigation over such a registration) that the word or words that make up the mark have “acquired distinctiveness,” otherwise known as “secondary meaning.” That is: Even though they are generally descriptive, the relevant public has come to associate that term with a single source of goods or services.
Yeah, right. If you want to really get into that part, I wrote all about the topic here. Scroll down to page 14, if you must. So the the second legal question (not the political question Instapundit and Ed Morrissey focus on) in the Politico situation would be, is there a secondary meaning in Politico as a blog or online publication associated with a single source? (My guess would be yes, actually.) If so, he passes this test, too.
It seems to me, not being truly familiar with the facts or the claims, that Politico’s problem is that although it may indeed be able prove that POLITICO has acquired distinctiveness for online journals, it is still a rather weak trademark because of its descriptiveness. A “weak” trademark means that someone has to really more or less copy it exactly the same way as the trademark is used by the mark owner in order to be considered infringing — because, as the commenters at Hot Air and Jimmie at Sundries Shack have said, you can’t take an English word off the market quite in that way. Indeed (so to speak), that’s why you can’t stop a blog from being called Somethingpundit, and that’s why College Politico could — maybe — be defensible.
This does bring us to the issue of LIKELIHOOD OF CONFUSION — which, not at all incidentally, as I say on the front page, “is a registered trademark for blogs like this one, and it’s mine.” One person, Paul in NJ, pointed out that the trademark registration is not for the word POLITICO but rather “stylized capital letters ‘POLITICO’ in the color red.” True, but remember: Trademark infringement does not generally require that the junior user utilize an exact copy of the trademark, but rather, whether the two uses lead to, well, a LIKELIHOOD OF CONFUSION, which is not so simple, but in essence amounts, as we say around here, to this:
Our analysis is not mechanical, but rather, focuses on the ultimate question of whether, looking at the products in their totality, consumers are likely to be confused.
That’s what makes a horse race! Take it from me: Stylized marks incorporated words most certainly have been found to be infringed by unstylized uses of the same words. Just note that here, however, that the LOC analysis would have to weighted by the point I made above — the narrow ground of protection afforded a fundamentally weak mark such as POLITICO under any circumstances, which acts as a counterweight to this last point.
Whom do I pick in this one? Hey, it’s enough free legal advice for today!