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Google a utility? Not the way we thought

Originally posted 2013-09-18 11:43:39. Republished by Blog Post Promoter

Exhaust system, Port Authority Parking GarageI asked the following question more than a little while back in connection with the Kinderstart lawsuit against Google, which asserted a supposed right to a certain “objective” Google ranking (I’ve made slight non-substantive touchups):

Is Google a Utility?

[O]nce a company becomes a sort of common carrier — I am pushing this here — is there really no point at which all purchasers of its services should be treated equally? …  Avoiding a ruling that in any way characterizes Google search results as commodities is also evidently on the mind of the Google attorney who’s insisting, despite the obvious risk of doing so, that Google results, in some cases, are subjective, not objective.

And what is that risk? A ruling, or a suggestion (I don’t know enough about the case to know if this is a claim) that, far from a commodity like potatoes, electric power or fake Vuitton bags, Google results are commodities’ evil twin, a service so unique to Google, and so very, very central to the “market” (definition of which is the heart and sould of the matter) that Google has a — dare we say it? A monopoly! For let’s not kid ourselves: If it were 1966, not 2006, this search advertising business — with both Google and Yahoo at the table — would already be negotiating a consent decree with the government, and not the kind Google is looking for. . . .

But we digress. Add this to the story from last week involving an advertiser’s complaint that Yahoo! buying search terms on Google to redirect users searching for a third website that competes with Yahoo!, and what do you have? New dimensions, or at least invitations by lawyers to open new ones, in unfair competition, antitrust, tortious interference and other traditional areas of law.

Will judges build on the existing doctrines of law and merely apply them to new industries and new technologies? Or will they do as they have done in trademark, and invent new bases for recovery to “fix up” perceived injustices that those pokey legislatures haven’t gotten to? We’ll keep watching.

Turns out there was nothing to watch; no there there — it was a dumb idea, it was recognized as dumb early on, and Google, so far, is not a utility.

Except that Google is a utility, after all!  Not quite the way I meant when I raised the issue in 2006, however, according to the website Quartz: Read More…

INTA’s magic kingdom

This year’s annual meeting of the International Trademark Association was held in sunny Orlando, Florida, which in many respects is a very appropriate place for an association of trademarks to meet.  Orlando, of course, is the world’s epicenter of theme parks.  And the theme of themes is joyful, real-time, three-dimensional interaction with “intellectual property,” which for present purpose mostly means stuff born of copyright but transmogrified through the wonderful process of “branding” into trademarks.

Such undead creatures, of course, once so transformed can live forever as long as they justify their existence by bringing forth gold.  If so, they will be nurtured, grown and tended forever, and any threat to their health, or to their sustenance, will be brutally interdicted.  (Only in the event of a horrible accident of mutation — where, as a result of some regressive, non-adaptive feature, because of which their continued existence threatens the survival of the entire colony, will one of these creatures not only be allowed to die but, in fact — well, it is better not to speak of such things at all….) Read More…

INTA and the big tent (updated)

Originally posted 2012-05-13 22:00:26. Republished by Blog Post Promoter

Revised from Friday’s original post.

In the previous INTA post I raised the question of how a significant session discussing a significant topic — the effect of developments in keyword advertising cases on trademark rights on May 9th, the first day of the 2012 Annual Meeting — could have been so seriously skewed.  I promised, as they say in Washington (but not the way they mean it when they say it), to extend and  clarify my remarks.

I linked to this item from Managing Intellectual Property, the really interesting part of which will be discussed in another post.  We’ll start there, however:

More than 1,400 attendees crowded into a session on keyword advertising yesterday, where Rosetta Stone counsel John Ramsey and other panelists shared their frustrations about the issue and also faced tough questions about the proper legal approach.

Ramsey could not discuss specifics of the company’s closely watched case with Google over trademarks as keywords in sponsored ads, but he explained to attendees the aggravation the brand has experienced over search results incorporating the ROSETTA STONE trademark that managed to appear above links to the company’s authentic site.

Ramsey has every right to be aggravated:  Rosetta Stone has a serious counterfeiting problem; the real actors are essentially untouchable; and it sure as heck seems as if Google is making money off it by taking the pirates’ money for display advertising.

Trademark lawyer Ron ColemanI am not unsympathetic to the concept that intermediaries — at some level — should be held to account for their actions; as regular readers know to death by now, I have long advocated that secondary liability attach to eBay for its comparable role in this process, and remain at odds with many, including the Second Circuit, on this topic.  I was also involved in early efforts, not all of which I can disclose, to get at what seems to be willful blindness by at least some credit-card issuers — an effort regarding which, of course, some small results have finally been achieved by others.

On the other hand, as an outgrowth of my work defending entrepreneurs against fallacious trademark claims based on “unauthorized distribution” of branded merchandise as well as my First Amendment work involving bloggers, I have had the opportunity to see the Lanham Act misused a slightly different way:  As a would-be workaround of the safe harbor provision of Section 230 of the CDA.  That is, they are state-law defamation claim dressed up as federal trademark infringement suits.

Now, as dissimilar as Google and eBay may be in their purported roles as secondary infringers, gripe sites in Section 230 cases are yet another increment less similar.

Yet the claims against all three types of defendants raise related issues:

  • Infringement allegedly arising out of SEO-related techniques, such as keyword purchases, metatags and supposed “black hat” SEO
  • Network or affiliate marketing where the ad content is not controlled by the defendant
  • Claims of consumer confusion based on affiliation or sponsorship arising out of such advertisements

Would the distinction among fact patterns and defendants be acknowledged in this discussion, which was advertised as addressing SEO in trademark infringement but whose focus was the arguably unique (and, by the way, pending) case of Google v. Rosetta Stone?  I was quite interested in this panel and not unsympathetic to Rosetta’s plight.  Yet.

My heart sank, however, when I heard John Ramsey — however understandably — utilizing the loaded vocabulary of advocacy, not reflection:   Read More…

Where nobody knows your name

Originally posted 2014-05-29 01:48:49. Republished by Blog Post Promoter

Different from you and me?

I subbed for a more important lawyer on a panel for the American Intellectual Property Association Spring Meeting in New York today.  This is an outfit I joined years ago until I realized that they’re pretty much all patent lawyers.  Nothing personal, of course, but if I’m going to join another big IP law organization in addition to INTA I’d rather hang out with the oddballs of the AIPLA than, well, patent lawyers.

I kid.  These people are really good, and they know their stuff.  My stuff, on the other hand, they’re not so interested in.  Trademark is kind of a throwaway at the AIPLA, but I don’t turn down speaking engagements without a good reason, and that wasn’t a good reason.  And in truth I got a few smiles from the handful that remained at the end of our three-hour panel–all spent by the eight or something of us sitting on a dais for each other’s presentations.  No breaks.  Hey, I told you–they’re patent lawyers!

And very good ones.  Here’s what I tweeted until I ran out of battery on my laptop.  (Why was I the only one on the dais with a laptop if they’re all the engineers?):

  • John R. Lane of Frommer firm describes litigating IP in EU. No discovery on Continent –> very cheap. But…. no discovery! #aipla
  • Steven P. Caltrider from Lilly reminds US litigators that typical discovery demands violate EU privacy legislation; plan accordingly! #aipla
  • Bayer’s Jacqueline De Gagné presents excellent rundown of contrasts between US and Canada IP litigation at #aipla panel — Expert “hot tub”

No, I couldn’t include the Twitter handles of any of these distinguished attorneys because, as far as I could tell, not one of them had one.

They really are different from you and me, aren’t they? Read More…

Consensus in Cleveland

Originally posted 2014-03-12 15:58:32. Republished by Blog Post Promoter

Far be it from me to compare myself to the distinguished former Chief Judge of the Federal Circuit, the Hon. Paul R. Michel — but I will say this:  Last night in Cleveland we both said pretty much the same thing about a certain trend in intellectual property law.  Coming from any judge, what he said would be remarkable.  Coming from Judge Michel, well, it certainly was a breath of fresh air.

First, thanks again to the Cleveland Intellectual Property Association for inviting me to present at the March meeting last night.  It was a great pleasure discussing the issues in PTO practice raised by our appeal of the refusal to register THE SLANTS to such a group of thoughtful and gracious people.  (I have embedded the PowerPoint and the CLE materials at the top and bottom of this post respectively.)  You can get the gist of the issues I raised, once again, from this post — but they aren’t my point here, and they were not in any way part of Judge Michel’s comments. Judge Paul Michel No, it’s a little more complicated than that.

Unlike some of my best friends, I don’t necessarily take the position that Section 2(a) just has to go as  a policy matter.  But administering that statutory provision does, as this case demonstrates, comes with a lot of problems, which are only going to get worse.  These problems include grand helpings of arbitrariness and caprice.  And in the case of THE SLANTS application in particular, there is — as we will argue in our brief — a real equal protection concern.  The PTO’s present policy is so concerned about ethnic offense through trademark that it will explicitly refuse to register a mark based on the applicant’s own ethnic identity. That was my main presentation, in short.

After the two CLE presentations at 4:30, there was a brief reception while dinner was being set up.  I was in a group, mostly Pearne & Gordon people, raising interesting thoughts and questions about the issues addressed in my presentation, and it occurred to me to declaim as follows:  Short of one or more judges throwing the whole thing out, all these 2(a) cases are being decided via countless isolated judgment calls by examining attorneys at the PTO and, if appealed, reviewed by judges — at the TTAB, the Federal Circuit and perhaps the Supreme Court.  But, really, these are judgment calls that should not even be made by judges, much less non-judicial officers, at all.   In the case of THE SLANTS, these include discrete questions such as:

  • Is the applicant’s ethnic identity a legitimate factor for evaluation of trademark use? Read More…

Infamy or Praise blog gets scary

Originally posted 2011-07-15 00:16:14. Republished by Blog Post Promoter

Colin Samuels is threatening drastic action to commemorate World Intellectual Property Day, which, of course, is today.

Of course. We’re all over that.

Getting intellectual about intellectual property

Originally posted 2008-02-08 10:19:17. Republished by Blog Post Promoter.

Eric Schmidt:

Richard Stallman, founder of the Free Software Foundation, and creator of the GNU Public License (GPL) was also present. Stallman is known for his outspoken political beliefs and his attention to semantics. He … took issue with “intellectual property,” a term he considers propagandistic and misleading.Stallman’s argument is that copyright, patents, trademark, and trade secret laws are quite different from each other. Copyright and patent law both spring from the same clause in the Constitution, while unfair competition (trademark and trade secrets) derive from common law and statute. Perhaps Stallman is concerned that use of the term “intellectual property” is one of the reasons we now have sui generis protection for boat hull designs and plants. The more broadly the term is used, the more broadly the right of legal protection is interpreted, and the more likely courts are to expand the scope of property rights in the expression of ideas. In a conversation after the panel discussion, he forwarded the notion that the term also distorts public understanding of the separate concepts involved.

On that last point about public understanding, Eric, I wouldn’t sweat it.  Most people have no idea what we mean by the term, and I’ve even had attorneys ask me “what’s new these days in intellectual properties?”  But I do agree with Stallman that the phrase is misleading, and really loaded — I don’t know if I’d go so far as to say propagandistic! — with meaning it does not deserve.  Not only is this because intellectual property law contains so much that is so stupid, either, but merely because so much of what is protected is something quite undeserving of being associated with the lofty concept of intellection.

The statute that keeps on giving

PTO15_LongBannerV2I am grateful for a break in the Section 2(a) action long enough that I could sneak in some blogging about another topic this week.  Apropos that post’s nostalgic subject, it even generated some old-fashioned comments-section debate about fair use with me on the unaccustomed side of things before breaking developments returned us to our monotonously scheduled programming.

Stephen Baird

Steve Baird: Unlikely to be Confused.

Yes… the thing about Section 2(a) of the Lanham Act — have you heard about that one? — is that, much like whatever it was Yogi Berra was talking about, it’s not over till it’s over.  And it is most assuredly not over.

And neither are the disparaging, immoral and scandalous panels.  So I’d be remiss not to use this space to invite readers to the Intellectual Property Owners Association 25th Annual Conference on USPTO Law & Practice, or “PTO Day,” on March 10, 2015.  Because of my involvement in a certain appeal relating to that law, I will be participating in just such a panel at that conference.

Join LIKELIHOOD OF CONFUSION® (we are one and the same) along with my friend (and past Minnesota CLE host),über-trademark-blogger Stephen Baird (got logrolling?); Jesse Witten — with whom I have also been, um, impaneled recently; and Cynthia Lynch of the PTO in an afternoon session on the trademark track.

John Welch:  Inherently Distinctive

John Welch: Inherently Distinctive

Other friendly mustachioed faces will include that of John “Keeping Tabs on the TTAB®” Welch, who will be presenting, with characteristic wit and grace on recent trademark case law earlier in the day.  Who better?

So don’t be pokey about it!  The program is here, if for some reason you need to know more; click here to register.

UPDATE:  See below for my CLE supplement distributed to attendees.  Much of it will appear familiar to readers of the blog, in substance if not quite in tone.

UPDATE:  Excellent analysis on our little piece of it by Tamlin Basin of BNA.

Best of 2014: Consensus in Cleveland

First posted on March 12, 2014.

Far be it from me to compare myself to the distinguished former Chief Judge of the Federal Circuit, the Hon. Paul R. Michel — but I will say this:  Last night in Cleveland we both said pretty much the same thing about a certain trend in intellectual property law.  Coming from any judge, what he said would be remarkable.  Coming from Judge Michel, well, it certainly was a breath of fresh air.

First, thanks again to the Cleveland Intellectual Property Association for inviting me to present at the March meeting last night.  It was a great pleasure discussing the issues in PTO practice raised by our appeal of the refusal to register THE SLANTS to such a group of thoughtful and gracious people.  (I have embedded the PowerPoint and the CLE materials at the top and bottom of this post respectively.)  You can get the gist of the issues I raised, once again, from this post — but they aren’t my point here, and they were not in any way part of Judge Michel’s comments. Judge Paul Michel No, it’s a little more complicated than that.

Unlike some of my best friends, I don’t necessarily take the position that Section 2(a) just has to go as  a policy matter.  But administering that statutory provision does, as this case demonstrates, comes with a lot of problems, which are only going to get worse.  These problems include grand helpings of arbitrariness and caprice.  And in the case of THE SLANTS application in particular, there is — as we will argue in our brief — a real equal protection concern.  The PTO’s present policy is so concerned about ethnic offense through trademark that it will explicitly refuse to register a mark based on the applicant’s own ethnic identity. That was my main presentation, in short.

After the two CLE presentations at 4:30, there was a brief reception while dinner was being set up.  I was in a group, mostly Pearne & Gordon people, raising interesting thoughts and questions about the issues addressed in my presentation, and it occurred to me to declaim as follows:  Short of one or more judges throwing the whole thing out, all these 2(a) cases are being decided via countless isolated judgment calls by examining attorneys at the PTO and, if appealed, reviewed by judges — at the TTAB, the Federal Circuit and perhaps the Supreme Court.  But, really, these are judgment calls that should not even be made by judges, much less non-judicial officers, at all.   In the case of THE SLANTS, these include discrete questions such as:

  • Is the applicant’s ethnic identity a legitimate factor for evaluation of trademark use? Read More…

Seattle. Trademark lawyers.

At Mike Atkin’s place in Seattle, all kinds of law bloggers, but mostly trademark ones, got together tonight in honor of all being rained on in the same place for the annual INTA Festival of Expense Accounts.

Here are two of them.  Yes, that’s Randazza on the right (Marc, Marco, whatever) — not in the picture, but in real life.  And of course, me on his left.  Equally preposterous!

Matter meets antimatter

Matter meets antimatter

INTA:  Anything can happen!  (UPDATE:  Official pic here.)