LIKELIHOOD OF CONFUSION®

I kvetch a lot about the mania for dubious “IP enforcement” by government agencies such as New York’s Metropolitan Transit Authority, which really should both know better and which have superior options for utilization of public resources.  But here’s a topper:  The FBI has written to Wikipedia demanding that the online reference work remove its photograph of the Bureau’s seal.  Huh?

The FBI Seal

Here’s the FBI’s letter:

It has come to our attention that the FBI seal is posted, without authorization, on Wikipedia at the following site: http://en.wikipedia.org/wiki/File:US-FBIShadedSeal. As the site itself notes, “Unauthorized use of the FBI seal . . . is subject to criminal prosecution under Federal criminallaw, including 18 U.S.C. 701.” The FBI Seal is an official insignia of the Department of Justice. Its primary purpose is to authenticate the official communications and actions of the FBI. Unauthorized reproduction or use of the FBI Seal is prohibited by 18 United States Code, Section 701, which provides:

Whoever manufactures, sells, or possesses any insignia, of the design prescribed by the [Department head] or any colordble imitation thereof, or photographs, prints, or in any other manner makes or executes any engraving, photograph, print, or impression in the likeness of any such insignia, or any colorable imitation thereof, except as authorized under regulation made pursuant to law, shall be fined under this title or imprisoned not more than six months, or both. . . .

The FBI has not authorized use of the FBI seal on Wikipedia. The inclusion of a high quality graphic of the FBI seal on Wikipedia is FBI particularly problematic, because it facilitates both deliberate and unwitting violations of these restrictions by Wikipedia users.

The purpose of this letter is to advise you of these legal requirements and to seek your compliance with the law by removing the, F13I Seal from the above site and any other sites under your control on which it appears. I Please remove the FBI Seal from the Wikipedia site(s) within 14 days of receiving this letter and notify us of your compliance in writing at the following address: . . . Failure to comply may result in further legal action. We appreciate your timely attention to this matter.

Not the FBI Seal

Wow.  Good thing these guys are protecting us from all that… stuff out there, huh.

Dumb, dumb, dumb.

CNN’s article says “Wikipedia isn’t backing down,” and quotes my online friend Mike Godwin — just the man for the job — who, as Wikimedia Foundation’s general counsel, wrote back to the FBI and told the G-Men to stop being so grimly silly.   ”In short, then, we are compelled as a matter of law and principle to deny your demand for removal of the FBI Seal from Wikipedia and Wikimedia Commons.”

What’s Mike’s argument, exactly?  Back to the CNN report:

The FBI’s deputy general counsel, David Larson, cities a particular law that says duplicating an official “insignia” is illegal without permission. But Wikipedia strikes back on that point, saying the FBI redacted the most important part of that U.S. code, which defines an insignia as “any badge, identification card, or other insignia.” “Badges and identification cards are physical manifestations that may be used by a possessor to invoke the authority of the federal government. An encyclopedia article is not,” Wikipedia’s letter says. “The use of the image on Wikipedia is not for the purpose of deception or falsely to represent anyone as an agent of the federal government.”

Works for me.  Actually, Mike, in his colorful way, doesn’t merely observe that the FBI left a bit out.  He writes: “While we appreciate your desire to revise the statute to reflect your expansive vision of it, the fact is that we must work with the actual language of the statute, not the aspirational version of Section 701 that you forwarded to us.”  Heh.

Read More »

Originally posted 2007-02-09 12:12:41. Republished by Blog Post Promoter

Says here: RIM Settles Trademark Case Over BlackJack.

Have I mentioned how much I love my BlackBerry Pearl?

One of my favorite ever topics here on LOC has been the litigation brought by the University of Alabama against painter Daniel Moore for unauthorized artistic depiction of trademarks.  As I reported last November, after first writing about this emerging issue four years earlier:

U.S. District Court Judge Robert Propst said in an opinion that Moore did not violate trademark laws by painting scenes of Crimson Tide football without licensing the work through the university. He rejected UA’s argument that the football team’s uniform and colors are iconic enough to trump First Amendment rights in fine art.

‘This court concludes that the depiction of the uniforms in the paintings is incidental to the purpose and expression of the paintings; that is, to artistically depict and preserve notable football plays in the history of University of Alabama football,’ Propst wrote in his memorandum opinion.

As I said then,

You don’t have to go as far as I and praise the kinder, gentler world of the past when an ambitious entrepreneur could pay homage, and maybe pay the mortgage, by taking – yes, horrors! — “free rides” on significant popular culture phenomena that were unlikely to be deemed “affiliations” or “authorized merchandise” without doing the high-end brand equity any harm at all (and probably some good).

This campaign by Alabama, though, really does take the rent-grabbing aspect of this business model to truly offensive levels.  There’s no doubt that NCAA schools and other pro sports teams sell “official” sports art, but it is utterly, utterly meaningless to fans whether this art is “approved,” “official,” “endorsed” or anything else (much less “fine”).  The claim here is simply “The University of Alabama owns everything about the Crimson Tide, and no one is going to make a penny off fan enthusiasm for the team but us.  Period.”

Notwithstanding that, well, yes, the Lanham Act does by its terms protect “approved and endorsed” as well as “source of origin,” I stand by this argument — which is rather narrow, mainly that the NCAA schools and other pro sports leagues should acknowledge that none of this has anything to do with fans, quality or anything other than what may or may not be a legally-granted franchise on branded enthusiasm.

In any case, the decision could not be abided by Big Collegiate IP, which appealed the ruling to the Eleventh Circuit.  Last Friday Moore filed his brief as respondent.

The amicus brief (available here) filed by Big Collegiate IP demonstrates that the schools continue their goal-line defense of intellectual dishonesty in their the presentation of this issue.   Read More »

Originally posted 2007-11-09 12:27:39. Republished by Blog Post Promoter

Via Boing Boing – ArchitectureChicago reports that the Marina City Towers condominium association is claiming “common law copyright” on the landmark Chicago buildings’ “name or image.” As blogger Lynn Becker asks,

What kind of idiot do you have to be to actually insert the phrase “under Federal and Illinois law,” when copyrights are a federal protection, and have nothing to do with state law? Then there’s the inconvenient fact the condo owners only own the top 40 floors of each 60-story tower. Exactly how can they claim to own a copyright to “Marina Towers” when the first 20 stories of the towers, and the other structures of the commercial complex, are owned by someone else? And then there’s the matter of exclusivity. Upon a quick Googlecheck, here are just a few of the other “Marina Towers” throughout the world.

Well, Lynn, that’s just the upper towers of it. We’ve discussed building trademarks — copyrights almost certainly don’t even come into this, regardless of what the condo association says, though that is not to say they never can — at some length on this blog in the past (also here). But the image of a building cannot be protected by copyright, and no one can stop another person from describing the Marina City towers as the Marina City towers — certainly not under copyright or trademark law.

I am not admitted in Illinois, though I went to law school there — can someone tell me if there is some legal surprise the rest of us are not aware of in the Land of Lincoln?

UPDATE:  “Common law copyright”?  Don’t laugh so fast!

MORE from ArchitectureChicago.  And here is a discussion of the concept of “freedom of panorama.”

Originally posted 2008-08-11 23:59:35. Republished by Blog Post Promoter

Free (and apolitical) IP advice for bloggers over at Right Wing News.

Domain name registrars have not typically been held contributorily liable for trademark infringement committed by their registrants. See Lockheed Martin; Size, Inc.; Academy of Motion Picture Arts and Sciences v. Network Solutions.  The courts have found that domain name registrars lack the requisite degree of monitoring and control over the activity of their registrants to trigger contributory liability.  By contrast, where the plaintiff’s allegations against the defendant domain name registrar made out a complex scheme of cybersquatting, the court rejected the defendant’s motion to dismiss the contributory liability claim against it.  Far from the “rote translation” involved in Lockheed, the facts alleged in Transamerica depicted a domain name registrar that acted in concert with other defendants to knowingly profit from the infringing activities of its customers.

In Transamerica, the plaintiff was Transamerica, a holding company for a group of subsidiary companies engaged in the sale of life insurance and other financial services. It sued the domain name registrar, “Moniker Online”; a related company, “Moniker Privacy”; and “Oversee,” the company that allegedly owned and controlled the Moniker defendants, as well as other unnamed defendants – the ostensible owners of the infringing domain names.  Transamerica claimed, inter alia, that the defendants were contributorily liable for direct trademark counterfeiting and infringement by their customers who used infringing versions of the TRANSAMERICA mark in their websites, from which use the defendants profited.

Specifically, Transamerica alleged that Moniker Online registered numerous domain names that were substantially similar to the TRANSAMERICA mark and its other registered marks, such as “Transamericalifeins.com.” When internet consumers arrived at the website, the plaintiff alleged, they encountered the TRANSAMERICA service mark or marks likely to be confused with it, and upon clicking a hyperlink would be “duped into believing they [were] accessing the well-known Transamerica, but instead [were] directed to other entities selling comparable products.” The plaintiff further alleged that the “ostensible owners of the infringing domain names are anonymous individuals or fictitious entities who are impossible to locate.”

Defendants argued that these allegations did not satisfy either the inducement or the knowledge and control prong for contributory liability, citing the two-prong standard under Inwood and the control element pursuant to Lockheed.  The court rejected this argument.   Read More »

Originally posted 2007-02-08 16:29:54. Republished by Blog Post Promoter

Lavi Soloway writes (hat tip to Above the Law) regarding the extremely un-white-shoe discrimination litigation in New York County between former Sullivan & Cromwell associate Aaron Charney and the law firm, including this astonishing bit:

Last Wednesday January 31 there was a secret settlement meeting at which Charney was offered an undisclosed sum in return for which he promised, among other things, to destroy the hard drive on his personal, home computer. The destruction of that hard drive moved to the center of the debate. Aaron Charney has been ordered to submit an affidavit to the court regarding the hard drive and the status of documents that were allegedly in his possession.

Judge Fried also ordered Aaron Charney to produce his personal, home hard drive at 9:30 a.m tomorrow morning, if, in fact, is has not been destroyed. Fried was particularly concerned that Charney seems to have destroyed the hard drive (which would presumably have contained emails he sent to him self from his Sullivan and Cromwell account with client documents and other firm related documents attached) AFTER being ordered by Judge Ramos at an earlier hearing not to do so. It appeared that Charney destroyed the hard drive becuase S&C asked him to do so as a condition of settlement.

This would be astonishing, indeed. You don’t even need the new, improved and annoying e-discovery rules in the federal courts, nor do you need to be a litigator, to know what a bad, bad idea that was.

Both parties may have a lot of explaining to do. Sweeter it does not get!

UPDATE: S&C promises plenty of explaining. They’ve got your explaining right here. ($5 Million?!)

Originally posted 2009-11-09 18:10:37. Republished by Blog Post Promoter

Say you will?

The judge politely declined, actually — per our suggestion.  Read all about the happy outcome, and other yeoman work from the self-promotion-with-dignity crowd, at JD Scoop.

UPDATE:  Second time’s a charm, maybe?  Not.

Originally posted 2009-02-25 10:33:15. Republished by Blog Post Promoter

UPDATE:  I have further thoughts about what is almost certainly the real motivating factor behind Jones Day’s actions in connection with their obviously frivolous lawsuit against BlockShopper, and I have moved them to my other blog, because they are not necessarily on topic.  But you must start with Paul Alan Levy’s original blog post if you want to get your arms around this situation.

Sam Bayard sums up “thoughts on the Jones Day-BlockShopper Settlement”:

So what did Jones Day get out of the settlement?  Not much actually.  BlockShopper agreed not to use “embedded links” back to the law firm’s website.  Thus, as Wendy Davis explains in her insightful Slate article: “instead of posting ‘Tiedt is an associate,’ the site will write ‘Tiedt (http://www.jonesday.com/jtiedt/) is an associate.’” Essentially, Jones Day weathered a PR nightmare just to force BlockShopper to use a clunky, aesthetically displeasing linking style — woo hoo. . . .

[Paul] Levy, for one, is not taking this sitting down.  His post ends with a call to Internet users to fight back against Jones Day “by repeatedly deep-linking from its name, and to its web site, in precisely the ways to which it objects.”  I hope that Paul is right that, faced with provocation on a massive scale, Jones Day would have to accept the ultimate weakness of its trademark claim and stop its bullying.  But, Judge Darrah’s ruling upholding Jones Day’s complaint on BlockShopper’s motion to dismiss worries me.  Is it an aberration or just a possible take on poorly developed law?  Like Robert Ambrogi, who queries whether the law is as clear as Levy would like it to be, I fear that trademark law itself may be lagging behind the pervasive technological and cultural practice of the day.  That said, one of the beauties of a common law legal system is that it can adapt.

That’s optimistic, all right.  Well, why not be optimistic?  District Court judges have lifetime tenure, but lifetimes themselves have terms.

“Tiedt is an associate,” as they say. Read More »

Originally posted 2007-12-31 23:54:35. Republished by Blog Post Promoter

Via Vodkapundit – from the People’s Ministry of Litigation, Information and Sublimation:

Apple and Think Secret have settled their lawsuit, reaching an agreement that results in a positive solution for both sides. As part of the confidential settlement, no sources were revealed and Think Secret will no longer be published. Nick Ciarelli, Think Secret’s publisher, said “I’m pleased to have reached this amicable settlement, and will now be able to move forward with my college studies and broader journalistic pursuits.”

Wow. That sounds like something right out of 1984.

No, not by me, for heaven’s sake!  I took the patent law course, yes, but I wouldn’t presume to teach it.

They’re explained by Arizona IP lawyer Tom Galvani.  (Yes, I have a special thing for Phoenix.)  He’s been posting a series of items slowly walking through different concepts in patent law.  So far there’s this:

• The abstract
• The drawings
• The background and field of inventions
• The summary
• The description of drawings

His explanations are just my style:  Very pithy.  I like pithy!

This is a fine service for Tom to provide — check it out.