Tag Archives: Best of the Year

Best of 2010: “Drive-by infringement”

Originally posted 2010-12-15 08:00:28. Republished by Blog Post Promoter

The last couple of weeks of the year or so I always re-post, with typical humility, the “Best of 2010.”  I arrange it in a sort of month-by-month recapitulation.  It’s like having your whole life passing before your eyes right before you die, only you aren’t going to die.  Yet.

This year is no different.  But it’s better, see?  Because I’m going to start even earlier!  I’ll still do the month-by-month, but not until starting next week, see?  This week what I’ll do to avoid having to write new posts is … re-run some other ones!   In no special order.  Ones I like.  Great ones.  Best ones.  Well, ones with a lot of words and pictures that took so much work to put together in the first place that maybe if someone reads them this time I’ll feel a little better about it.

On the merits, this post full of words and pictures (and captions on the pictures — do you …. people … pay no attention at all?!) should have caused a societal sensation when it was first published on May 4, 2010.  Inexplicably, it didn’t.  This is your second chance, society. 

Coca-Cola Host of the Highways

Commuter Host

Steve Baird says initial interest confusion is “the real thing” and in the process  seeks to “add life” to Professor McCarthy’s famous “evil highway road sign” analogy:

Wagner's Coca Cola SignWhatever the criticisms might be to the doctrine of Initial Interest Confusion, including those detailed by our friends Ron ColemanMarty Schwimmer, and Eric Goldman, in the context of keyword advertising, the road-side restaurant sign shown [at left] definitely is “the real thing” for purposes of trademark initial interest confusion, in more ways than one:

It does depict the Coca-Cola brand, in all its glory, after all, so It’s The Real Thing, by definition.

And, unlike the very hypothetical scenario relied upon in the Wolf Appliance case, the above drive-in restaurant signage is real world and in current use, designed to attract attention, and has been for years, in fact, well after the business responsible for the sign dropped Coca-Cola for Pepsi. That’s right, “no Coke, Pepsi.” To twist Sean Penn’s words in I Am Sam, Wagner’s change was a “very bad choice,” at least in my humble opinion of taste.

Yeah, me too.  I used to think I liked Pepsi better.  Crazy!  It’s one more reason Steve and I are likethis.  More:

Last, it certainly is a good example of the Initial Interest Confusion doctrine at work.

Uh oh.  Like the old “Coke brings your ancestors back from the dead” story, I’m afraid this sincere run at resuscitating initial interest confusion is a grave error.  For now Steve would take us from the brand-laden anecdote and the cultural mix-and-match moment to — as if  he were a judge in a Lanham Act case! (some day, I’m sure!) — slapping some poor sap with legal liability over what’s probably just laziness, business logic or a little bit of both.  Here’s his real-life tale of interest, initially and heartbreakingly confused:

Minneapolis drivers on Highway 81 pull off the road for a great cheeseburger and a refreshing Coca-Cola, or in my case, Diet Coke. Only to find that there is no Diet Coke, or any Coca-Cola products for that matter, only Pepsi products. Drivers likely aren’t confused at the point of purchase, however, since the menu and interior soda fountain signage refer to Pepsi not Coke. Nevertheless, the exterior sign no doubt has steered more than a few thirsty types off the road over the years to end up purchasing Pepsi products, not Coca-Cola products.

Not me, however, I’m not even initially confused any longer, just annoyed with the change, and deciding with each visit, well in advance, to enjoy a chocolate malt instead of a soft drink, since I can’t have the real thing any longer at Wagner’s Drive-In II.

I’m not the first to say that, unlike a refreshing Coca-Cola® brand soft drink beverage product, this “detour of doom” argument leaves me flat.

Coca-Cola Sign of Good Taste

Lord, just show me a sign!

Read More…

Best of 2009: “Orange you glad you’re such mullahs?”

Originally posted 2009-12-26 22:48:55. Republished by Blog Post Promoter

This was first posted on April 29, 2009:

William Lozito at Name Wire writes about a counterfeiting double-cross, or is it triple-cross or something more?, that is so byzantine in its fruity dimensions that only the wretched Zionist Entity could have hatched it. So, what happens when Jew oranges infiltrate the Islamic Republic of Iran’s citrus bins, formerly believed impregnable against the Elders of Zion and their nefarious schemes?:

Fruity Jew

Fruity Jew

[T]he seemingly innocent appearance of “Jaffa Sweetie Israel-PO” oranges was enough to make one Iranian official declare that “rogue elements” were trying to “disgrace the ruling government.”

As it turns out, those “rogue elements” were unscrupulous Chinese middlemen, who illegally used the “Jaffa Sweetie” brand name on their counterfeit fruit.

The problem was exacerbated by the fact that “President Ahmadinejad inadvertently distributed the fruit during a two day goodwill visit to the town of Salam in southern Iran.”

The Chinese and Iranian investigators have counter-claimed that they actually bought the real thing in Israel and simply forgot to remove the stickers before sending them on to Iran. One then must wonder if it is the brand naming of the oranges or the oranges themselves that is the actual problem?

Jujyfruits

Jujyfruits

The Iranians claim they want no part of “Zionist” oranges, but if the Chinese investigators are correct, then they have been eating them via China, branded as Jaffa or something else, for some time.

Well this much is clear: Of all the wicked Jews controlling the world these days, it’s the Chinese ones who are the worst, you know?

Hat tip to Pamela Chestek, a known insidious fruit-handler herself.

Comments at the original post.

Best of 2010: Moral rights in Massachusetts

Originally posted 2010-12-23 14:30:02. Republished by Blog Post Promoter

First published April 12, 2010.

Lee Gesmer reported last month on a pretty important decision in copyright law:  A First Circuit ruling applying the Visual Rights Act, which–well, Lee says it very well himself, actually:

At the end, he had only his "honour"

Mass MoCA is the Massachusetts Museum of Contemporary Art Foundation a contemporary art museum in North Adams, MA.  Christoph Büchell is a Swiss “installation artist.”  Think very large, very avant-garde.  The New York Times describes his work “dense, fraught creations, which compress masses of material and objects into historically charged labyrinthine environments through which viewers walk, climb and crawl.”   Wow.  Sounds just right for good old, left-leaning western Mass.  Not.VARA is the Visual Artists Rights Act, a section of the U.S. Copyright Statute that gives grants artists “moral rights.”   For example, part of the law provides that the author of a “visual work” has -

the right to prevent the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation

The First Circuit held that the Museum violated this right when, after installation of a work that called for, among other things, according to the Times, “a burnt-out fuselage of a 737 airliner” it displayed the work without the artist’s consent.   That is, the artist stormed off after artistic differences with the museum, and  museum prepared to present the work, entitled “Training Ground for Democracy,” like or not.  Büchel sued under VARA, lost in U.S. District Court, but prevailed in the First Circuit, which is (I suppose) more sympathetic to moral rights than U.S. District Court Judge Ponsor had been.

Hm.  Sometimes I wish I had a scorecard to figure out how libertarians, and or mere free-market magic hand guys like me, are supposed to come out on “moral rights.”  I’ll say this much:  For a country that doesn’t speak a Romance language, the idea of a federal statute that protects “honor” is problematic.  And after all, if you buy the thing, can’t you just do whatever you want with it?  If you want to limit my right to do that, then by gum let’s bargain for such a limit.  (I guess that’s the difference between a “Judge Ponsor” and a “Judge Posner“!)

And yet I too have some sympathy, as a non-visual artist (i.e., “a face for radio”) who has tasted the bitter experience of having his own “work made for hire” simply put under another person’s name by the copyright holder (and no, the fact that it was a federal judge’s name, and the ABA that did it, did not make it any less bitter) when the collective work in question was reissued in a second edition.

I have sympathy.  I didn’t say I think it’s ok, ok?  I mean this is America.  We don’t need copyrights on our money and we don’t need statutes to protect the “honor” of creative types!  I think.  In fact if you read too much into “sympathy” I’ll accuse you of dishonor!  And we can duel.  Pistols at dawn!

Ah, yeah.  Well, this should be interesting, this moral copyright visual honor stuff.  Not that there’s anything wrong with that.

Best of 2010: Mind bobbling!

Originally posted 2010-12-22 08:00:33. Republished by Blog Post Promoter

First published on March 9, 2010.

I’ve been known to sound the alarm about the rush to register trademarks, and all the more so to register anticipated trademarks.  I argue that — oh, forget it, even I’m tired of saying this over and over again.   Here’s what I said, one of the times I said it:

Yes man?

For well over nine out of ten new businesses, the odds of your idea sinking or swimming on the strength of a trademark are slim indeed, and slim too is the war chest most entrepreneurs bring to the battle of free enterprise. Prove to yourself and the world that you have a business plan, a product or service that people want, the ability to deliver it and to scale it up, the capitalization to fertilize all that and the smile of Providence on your efforts. If in the process you develop something worth protecting as a trademark, that mark has already been storing up goodwill and secondary meaning and is enforceable as against infringers under state law and Section 43(a) of the Lanham Act. If it would be a good, business-justifiable use of what is still early-stage capital to register your trademark at this point, by all means do it.

So there’s that.   On the other hand, what exactly kind of advice is … this?!:

Some lawyers will get all excited and encourage (demand!) that you register your trademark. This involves paying a bunch of money, filing a bunch of forms and earning an ® after your name instead of the ™. While the ® does give you some benefits by the time you get to court, it doesn’t actually increase the value of your trademark. And you can wait. So, when you come up with a great name, just ™ it.

It doesn’t sound so different, does it?  Well, it was written by the icon, human trademark Seth Godin™, famous on the Internet for being famous, whose name I hear all the time and seems to be a guru of some sort though I missed class the day when they taught us why.   Well, I think Seth Godin™ is pretty much just about right there.

But Seth Godin™’s bit of advice comes to me via my very agitated friend Steve Baird at the Duets Blog, who is not at all happy with Godin on Trademark.  Steve promised, in fact, to have at that last excerpt in a later post (which he did do — here).  But for the moment, it suffices for him to take umbrage, and hard, at the suggestion by Godin that trademarks are a tad overused here on the Internet:

If we’re in the idea business, how to protect those ideas?

One way is to misuse trademark law. With the help of search engines, greedy lawyers who charge by the letter are busy sending claim letters to anyone who even comes close to using a word or phrase they believe their client ‘owns’. News flash: trademark law is designed to make it clear who makes a good or a service. It’s a mark we put on something we create to indicate the source of the thing, not the inventor of a word or even a symbol. They didn’t invent trademark law to prevent me from putting a picture of your cricket team’s logo on my blog. They invented it to make it clear who was selling you something (a mark for trade = trademark).

“Misuse”?!  Steve says like this:

While there are certainly some greedy trademark lawyers in the world, and some that overreach on behalf of their client brand owners, even honorable and ethical trademark attorneys worth their hourly rate know that federal protection against dilution for truly famous marks was added to U.S. trademark law about fifteen years ago. At least for marks satisfying the difficult fame standard, these kinds of trademarks come darn close to owning the brand name in gross, that is, in connection with any goods or services.

Yes, Steve is more accurate than Seth Godin™, who seems to be more editorializing when he says “misuse” than he is describing the actual state of the law.  Steve makes an important point.  It’s one that he made in the seminar on LIKELIHOOD OF CONFUSION in which we both participated (and to which he invited me–thanks again!)(UPDATE:  PowerPoints here!) last week in Minneapolis, and which kind of made me lose the color in my face (the color in my hair is already gone) when I heard him say it:

With respect to what trademark law was designed for, and while I don’t consider this to be a news flash any longer, well prior to dilution protection being added, U.S. trademark law was amended to make clear that much more than confusion as to source is covered. All the way back in 1962 the Lanham Trademark Act was amended by striking language requiring confusion, mistake or deception of “purchasers as to the source of origin of such goods and services.” Moreover, a much broader scope of confusion protection was codified in 1989 in Lanham Act Section 43(a), which protects against trademark likelihood of confusion not only as to source, but as to affiliation, connection, sponsorship, association, and/or approval. This additional scope of trademark protection makes perfect sense given the current commercial realities of trademark licensing, franchises, co-branding, affiliate marketing, and OEM relationships.

He’s right, again.  No, it’s not a news flash, but sometimes… Steve, you’ll see.  When you get old, you … you forget, sometimes.  But indeed, today’s trademark law, both in the statute and in the cases, truly reflects “the current commercial realities of trademark licensing, franchises, co-branding, affiliate marketing, and OEM relationships.”

But of course I got my color back.  (The face color only.)  Because to make his legal point, Steve makes Seth Godin™ and LIKELIHOOD OF CONFUSION®’s policy point.  And when I read his words closely, the pondering of them brought me back to that golden mean between Steve and Seth Godin™ … which I mean is probably closer to the latter. Read More…

Best of 2010: Forget breakfast — eBay eats Tiffany’s lunch

Originally posted 2010-12-23 08:00:54. Republished by Blog Post Promoter

Tiffany's NYC The Second Circuit, unsurprisingly according to most commentators, has affirmed the decision of the Southern District of New York refusing to find eBay liable for contributory trademark infrintgement in the Tiffany v. eBay case.  I have been following the case since before it was filed (yeah, bitter as usual!) and have written bunches of posts on it — see, look?

In terms of the Second Circuit opinion itself, you can find that here.  If at some point I have something really original to say about it–after all the blogging is done by everyone else–you’ll be the first to know.  But here’s a little roundup of “takes.” First, the WSJ Law Blog on the thrust of the story:

So long as eBay takes steps to remove listings it knows are bogus — and isn’t otherwise willfully blind to fraudulent sales — it can avoid liability, the court ruled.  Judge Robert Sack, writing for the three-judge panel, seemed to hang his hat on the “market”:

We are disposed to think, and the record suggests, that private market forces give eBay and those operating similar businesses a strong incentive to minimize the counterfeit goods sold on their Web sites . . .

EBay received many complaints from users claiming to have been duped into buying counterfeit Tiffany products sold on eBay. The risk of alienating these users gives eBay a reason to identify and remove counterfeit listings. Indeed, it has spent millions of dollars in that effort. . . .

Tiffany had argued that eBay knew it had a problem with counterfeit items being listed on its Web site and did little to clean it up. EBay insisted the obligation rested with the New York jeweler to identify and alert it to auctions of counterfeit Tiffany silver jewelry.

But that’s not the whole story, exactly, though it mostly is.  As Law.com’s Corporate Counsel explains:

The court sent the case back to the district level for more discussion of whether eBay may be guilty of false advertising because it promotes the presence of “Tiffany” products on its site in both direct advertisements and paid ads that pop up when users search for Tiffany on Google and other search engines.

Those ads could be deemed false, because eBay is aware that “a significant portion” of goods advertised as Tiffany items on eBay are actually counterfeit, the court said. (The exact percentage of counterfeit Tiffany items among all those advertised is in dispute). EBay has pointed out that its site contains a special “About Me” page for Tiffany (and controlled by Tiffany) in which users are told that any Tiffany item advertised for sale on eBay is likely to be a fake.

To win a false advertising claim, Tiffany will have to produce evidence that consumers were confused by the advertisements, the court said. So far, Tiffany has not produced that sort of evidence, which usually comes in the form of consumer surveys.

Usually?  Well, usually if anyone’s actually watching, I guess.  Anyway, some more–here’s a great article by a partner at Pattishall McAuliffe (the law firm that bears the name of my late trademark law prof)  named Uli Widmaier that gets to the heart of the matter (I’ve removed the citations for bloggy reading and added a link or two):

In other words, for a defendant to be liable for contributory trademark infringement, the defendant must have knowledge of specific individuals engaged in infringing activities. General knowledge that infringing activity might take place is not enough. This is an application of the “narrow standard” of contributory liability articulated in Inwood Laboratories, Inc. v. Ives Laboratories, Inc. eBay argued in the district court that this standard did not apply, but accepted the Inwood standard for purposes of the appeal.  Thus, the Court “assume[d] without deciding that Inwood’s test for contributory trademark infringement governs.

Tiffany had also argued that eBay was “willfully blind” as to the sale of counterfeit Tiffany goods on eBay’s website. The Court stated that, as a general matter, “[a] service provider is not, we think, permitted willful blindness. When it has reason to suspect that users of its service are infringing a protected mark, it may not shield itself from learning of the particular infringing transactions by looking the other way.” However, the Court declined to impose liability for contributory trademark infringement on this ground because “eBay did not ignore the information it was given about counterfeit sales on its website.”

In sum, the Second Circuit affirmed that a service provider is not permitted to be willfully blind to alleged trademark infringement. But eBay’s removal of listings identified as counterfeit by Tiffany, as well as eBay’s affirmative steps to police its website for counterfeiters were enough to render eBay not willfully blind. Had eBay done less, it might have been found liable. Unfortunately, the decision gives very little guidance as to the dividing line between “willful blindness” and sufficient vigilance.

Great point.  There’s something about trademark law that, for some reasons, makes judges want to make lawyers and businesses guess about liability until it’s too late.  As usual, Eric Goldman gets that, too: Read More…

Best of 2010: Gucci v. Frontline Processing: Giving credit for infringement where it’s due

Originally posted 2010-12-28 08:30:01. Republished by Blog Post Promoter

First posted July 12, 2010.

This is an adaptation of a summary and analysis of the recent decision in Gucci America, Inc. v. Frontline Processing Corp., 2010 WL 2541367 (S.D.N.Y.), discussed here casually earlier. Jane Coleman’s definitive online treatise Secondary Trademark Infringement has recently been updated and the impact of this decision integrated into the text; a full update is planned for September. The complete analysis of Gucci, including full citations, can be found here.

The essential role played by credit card companies in online trademark infringement was recognized in Gucci America, Inc. v. Frontline Processing Corp. In that case, the court allowed contributory infringement claims to go forward against companies that had established credit card processing for an online counterfeit merchant. The payment for the counterfeit goods sold on its website was part of the infringing process, the court reasoned, drawing on Judge Kozinski’s dissent in Perfect 10, Inc. v. Visa Intern. Serv. Ass’n, and most of the infringing sales – of which the companies allegedly knew or should have known – were consummated using credit cards.

Gucci v. Frontline arose out of successful trademark infringement litigation brought by Gucci, the well-known manufacturer of luxury goods, against an online merchant operator of a website called “TheBagAddiction.com,” in which the owners admitted to liability for selling counterfeit Gucci products. Thereafter, Gucci turned to the three companies that had helped the merchant obtain credit card services, alleging both vicarious and contributory liability for trademark infringement. One of the three defendants, Durango Merchant Services acted as a middleman, while the other two, Frontline Processing Corporation and Woodforest National Bank, provided credit card processing services to the merchant.

In rejecting the defendants’ motion to dismiss, the court allowed the contributory liability claims to go forward as to all three defendants, but on different legal theories in accordance with their roles. As to Frontline and Woodforest, the court found the pleadings sufficient to allege contributory trademark infringement, based on their knowledge and control over the infringing activity on the website. As to the middleman, Durango, the court found the pleadings sufficient to allege contributory infringement based on an inducement theory.

As to Frontline and Woodforest, the court also found the pleadings stated a claim for contributory trademark infringement, based on the defendants’ knowledge and control over the infringing activity on the website. Citing eBay and Perfect 10, the Gucci court reiterated the direct control and monitoring test, stating that

[e]ven if a defendant does not seek out and intentionally induce a third-party to commit trademark infringement, it may still be held liable for the infringement if it supplied services with knowledge or by willfully shutting its eyes to the infringing conduct, while it had sufficient control over the instrumentality used to infringe.

Moreover, an allegation of the defendants’ general knowledge that infringement is taking place is not sufficient. “[A] service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods,” the court emphasized, citing further language in Tiffany that “’Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary.’”

Both credit card processing companies either knew or should have known that they were servicing an infringing site, under the facts alleged, the court concluded. In both cases, a Durango agent had a dual role as both an employee of his company and a sales representative for the two credit card companies, and the court consequently accepted the allegations charging the companies with his knowledge. Thus, regarding Frontline, Gucci alleged that that company was aware of customers’ written acknowledgement of purchasing “replicas” as directed by the Durango agent. Read More…

Best of 2010: An opinion to Di for

Originally posted 2010-12-24 01:30:01. Republished by Blog Post Promoter

First posted on May 5, 2010.

I do a lot of bellyaching around here about how there are never any consequences for filing frivolous trademark and copyright lawsuits. What’s the worst thing that can happen to a well-heeled plaintiff that wants to use the expense of defending, even meritoriously, against a “federal case” as a way to effectuate a “business message” (namely, you’re out of business, because we say so)? Usually, nothing. Not just usually. Really pretty much a lot usually.

"Do you have Princess Di in the can?"

Not this time.  This is a little dense if you’re not used to reading judicial opinions, but the payoff is worthwhile.  Emphasis is mine:

The Franklin Mint Company and its principals, Stewart and Lynda Resnick, (collectively, Franklin Mint) appeal from a judgment dismissing their malicious prosecution action against the law firm Manatt Phelps & Phillips LLP and attorney Mark S. Lee (collectively, Manatt). Manatt represented the executors of the estate of Diana, Princess of Wales and the trustees of The Diana, Princess of Wales Memorial Fund (collectively, the Fund) in a lawsuit filed against Franklin Mint alleging claims related to Franklin Mint’s use of Princess Diana‟s name and image in connection with merchandise Franklin Mint advertised and sold. . . .

We conclude that, based on the record before us, no reasonable attorney could find tenable the false advertising claim as it was alleged and litigated in the underlying action. Therefore, we hold there was no probable cause to prosecute that claim. We also hold there was no probable cause to prosecute the trademark dilution claim because no reasonable attorney could conclude that the claim could satisfy two fundamental, long-standing principles of trademark law. First, to be protectable as a trademark, a word, phrase, name, or symbol must be used in commerce to identify goods or services and their source. Although Manatt contends that Princess Diana used her name in connection with her appearances at charitable events, that use does not demonstrate trademark use. Second, a trademark that is descriptive — such as a personal name — must acquire secondary meaning to be protectable in a trademark dilution action. In other words, the primary meaning of the mark (i.e., the descriptive meaning) must in the minds of the public be subordinate to its meaning as the source of goods or services. Because “Diana, Princess of Wales” has such an extraordinarily strong primary meaning as descriptive of Princess Diana as a person, the contention that it had acquired secondary meaning at the time of the underlying lawsuit was, as the district court in the underlying lawsuit observed, “absurd.” (Cairns v. Franklin Mint Co. (C.D. Cal. 2000) 107 F.Supp.2d 1212, 1222 (Cairns III).) Therefore, we conclude that the trademark dilution claim was untenable.

Now this is really interesting on several levels.  One is the obvious one I’ve already alluded to–a court calling attorneys out and saying, “Stop the baloney.  You knew what you were doing here was fallacious, but you just kept doing it.  If malice and damages are proved, that’s actionable.”  It’s astonishing to read that.  Don’t even ask what has happened, in my own experience in the vaunted federal courts facing just such claims, that leaves me so dumbstruck reading this.

But then there’s the substantive legal stuff.  Diana, Princess of Wales, not a “trademark”?  Just because she’s mostly really a person (no longer a living one, granted, but you get the idea)?  But what about all those other celebrity trademark names? Read More…

Best of 2009: “The LIKELIHOOD OF CONFUSION® Twitter manifesto”

Originally posted 2009-12-30 23:05:14. Republished by Blog Post Promoter

This was first posted on July 27, 2009.

The authors of many of the blogs I read that are topically related to this one now use Twitter. So do a lot of other people, and mostly they seem to talk about Twitter. They not only fail to recognize this as a problem, but I have even seen evangelists point to it as as something to be excited about. (I wrote more about this here so I won’t do it again.) Even more disheartening is getting tweets from people I otherwise respect telling me to go to such-and-such site and get 400 new followers “free,” presumably merely by promising to spam my existing followers with the same message. Dumb, dumb, dumb!

But I have learned how to meticulously add to the list of those I follow so that the vast majority of my (limited) tweeting time is spent on tachlis. My new and improved understanding of how to constructively utilize that flighty medium is not simply to maximize the number of people who will call themselves your “followers” in exchange for either automated reciprocity or some other trick that adds to their “followers” count, with no regard to whether this dumb audience cares about your feed. The tweets I send are overwhelmingly either blog posts or re-tweets of blog posts that I believe will be of interest to those who are following me presumably because they are interested in the things I already write about.

Twitter, in other words, is — as far as I can see — potentially useful only as a device for targetting narrowcasting of what you have to offer to an audience that cares. It is not the big schmear. To the extent my feed audience grows it will, I hope, be because more and people who read this blog (or my other one, which I know is not necessarily an ideal match) are either subscribing to it via Twitter or are among those colleagues and, of course, prospective clients or referral sources who “get it.”

All that was by way of introduction to the following: By virtue of this shift in media, noteworthy posts that once became posts here, either with a minimum of commentary or at least a riff, are now being “retweeted” by me — hence delivering value to my topically-oriented followers — but are frequently no longer making it to the big time. “The big time,” of course, is defined as a link on LIKELIHOOD OF CONFUSION®.

Well, that ain’t right. So following this post, which by the time I wrote it appeared to be worthy of its own slot, you will find the first of what will probably be a weekly occasional roundup of the last week’s by LIKELIHOOD OF CONFUSION®* topical trademark tweets. Copyright, too, and whatever else I write about here, but that would have ruined the alliteration. You can follow the links directly to the blog posts in question, so you need not be a twit yourself to benefit — though you may want to consider it.

* Which is me. Unlike some of my bloggy friends, some of whom are pictured here, the blog doesn’t have an eponymous Twitter feed, much less one Twitter feed for the blog and one for the man. LIKELIHOOD OF CONFUSION® is me, and I am it. I am diluted enough as it is!

Best of 2009: “Intellectual property and its digestion”

Originally posted 2009-12-24 19:57:33. Republished by Blog Post Promoter

This was first posted on February 20, 2009:
Back and forth in in social networking space — once Facebook, I digest some key ingredients of intellectual property as it applies to famous burgers (reprinted with Ivan’s permission):
Today at 10:35am

Hi Ron,

I had an interesting IP question/hypo that’s been weighing on my mind the last couple of days. (At at least it seemed interesting to a non-IP person such as myself- there may be well-settled law on this. This is purely hypothetical, and I’m not seeking legal advice of any sort.)

A book entitled Top Secret Recipes, written by Todd Wilbur, became a top seller some time ago. It features the recipes of same famous franchise foods, like the Big Mac, or other foods, such as the Twinkie. (http://www.thesun.co.uk/sol/homepage/features/article2165816.ece). Presumably, Wilbur reversed-engineered these foods according to his taste, and then wrote the recipe book based on his experimentation.

My question is, did the author have to obtain permission/enter a licensing agreement of some sort with the litnany of franchises (i.e., McDonald’s KFC Yum Yum, et. al.), before publishing such a work? If the author did not get permission, do McD’s, Hostess, et. al. have a viable cause(s) of action against Wilbur, who presumably has profited as a result of publishing his interpretation of the recipes? Presumably, Wilbur did not convert any “trade secrets” as it were, but it does appear that he’s using their intellectual property for his commercial gain. What would the franchises’ cause(s) of action be in such a case?

I did a Google Search; there appear to be no suits filed in connection with this book. So I remain curious.

Thanks for reading,
Ivan

My answer: Read More…

Best of 2010: Lug me tender

Originally posted 2010-12-21 08:00:10. Republished by Blog Post Promoter

First published on February 24, 2010.

Doctors (J.D.) Detroit?

Should a law school be tendering seven figures of money to a minor league baseball team for stadium naming rights?  That is certainly a novel question.

I tackled the whole concept of branding, memory and stadium names in the context of the Mets’ Citi Field deal a few years ago–but a bank is one thing.  Heck, these guys know how to make record profits just by threatening to go out of business!  So who am I to say?

But a law school?  That’s something I know a little about!

And… with all due respect… should the law school that does that be Thomas M. Cooley Law School in Michigan?  Well, perhaps if it would be any school it would be Cooley, which has always marched to the sound of a different drummer.

A very, very different drummer.  I once wrote an article, or perhaps just a short roundup-type item, about Cooley when I was contributing editor for Student Lawyer magazine, but I can’t get my hands on the cuneiform tablets just now.  I do remember that it was the school that actually did things “the old fashioned way”–they actually admitted two or three times the number of students who were really going to make it through law school, and they actually kicked out people who couldn’t cut it.  So, yes, they have always been very funky, original and daring over there.

And in that context, now let’s see the Wall Street Journal Law Blog and the stadium story:

According to the NLJ, the law school will pay just shy of $1.5 million to the Lansing Lugnuts (a single-A affiliate of the Toronto Blue Jays) in return for the naming rights for 11 years. What used to be called Oldsmobile Park is now, just like that, Cooley Law School Stadium.

Much of the coverage was, well, critical of the decision in a way that didn’t necessarily seem unfair. To summarize the skeptics’ main question: What’s a law school not exactly at Harvard’s level doing throwing money at a baseball stadium in the middle of a severe economic downturn?

For a little help, we chatted today with Don LeDuc, the dean of the law school to ask him what about the deal, and to give him a chance to answer his critics.

Hey Don. So tell us about the deal.

The agreement we have with the Lugnuts has two elements, a marketing element and also an amenities element. Along with the name recognition, you also get some amenities at the park. We’ll be doing a sort of extended version of what we used to do at Comerica Park, where the Tigers play, in which we matched up students with alumni working in Detroit and all went to a ballgame. We’ll be doing that with the Lugnuts too. We’ll also do some community outreach at the stadium, too, in which we’ll take kids from Lansing to a game. Read More…

Best of 2009: “Infinity Dollars” — IP damages and the jury”

Originally posted 2009-12-28 23:30:33. Republished by Blog Post Promoter

This post, which is the first of two parts (the second part can be found at the link at the end) was first posted on June 19, 2009.

A lot of people, including judges, lawyers and civilians, don’t seem to really understand what statutory damages are all about. They are not supposed to be a windfall (discussed more here). But just tell that to the jury that awarded “infinity dollars” — practically — to the Lords of Music for what was indeed knowing copyright infringement of two dozen songs, and to the person on whose head the jury just laid that award.

I’m not an “information wants to be free” nutter, and musical compositions aren’t “information” anyway except to the most heartless utilitarian, but Stan Schroeder (presumably no nutter either, but probably to my left on this issue) hits it right on the head:

In one of the most ridiculous verdicts I’ve seen, the jury decided that Jammie Thomas-Rasset, the first woman who was charged with copyright infringement and offered to settle but decided to fight the RIAA, is guilty and owes the recording industry 1.92 million dollars, or $80,000 per song.

As we mentioned in our original article, Jammie’s case was full of holes, and she probably would have done better if she had just settled with the RIAA. But what’s striking here is the amount of money awarded to the recording industry for infringing the copyright for just one song.

It reminds me of a recent Penny Arcade comic which mocks Microsoft’s Zune Pass, which offers unlimited selection of music for 15 dollars per month; since time never ends, this technically amounts to infinity dollars. Since the music is DRMed, if you ever stop paying, you lose all your music.

It’s just a joke, but it makes a good point. How much is one song worth to you? How much is it worth to the author? How much is it worth to the recording industry? You can push arguments to favor each side, and ultimately you can always claim that a song never fully loses its value and it can therefore be set to an arbitrary, insanely high amount of money.

The problem with this approach is that it results in cases like the one against Jammie Thomas-Rasset, who now has (there are indications that the RIAA is still willing to settle with a much lower amount of money, but it’s irrelevant; what’s important is the principle of the matter) to pay 1.92 million dollars for infringing the copyright of 24 songs.

In a word, it’s stupid.

As this fine roundup of the legal issues from the EFF explains, there are lots of problems with this outcome, including a two-pronged constitutional one — is this unconstitutionally excessive, and is there a different standard on that question when it comes to statutory damages? — as well as the whole issue of what has happened to statutory damages in the hands of the Copyright Congress. Of course, there’s the fact that, as Fred von Lohmann explains, “I assume these arguments will first be submitted to the trial judge in post-trial motions. After all, this judge has already indicated that he found the previous $220,000 award to be “unprecedented and oppressive.”

Seems that way, doesn’t it? (Part II is here.)

Best of 2009: “All that know-chow costs some scratch!”

Originally posted 2009-12-31 23:59:24. Republished by Blog Post Promoter

This was first posted on August 26, 2009.

cats

Legal Blog Watch:

Pet food giant Purina is like a dog that won’t give up its bone — or in this case, its chow. Three years ago, Purina sent a cease-and-desist letter to Chow, Baby!, a Baltimore area pet supply shop and Web site owned by Robin McDonald, asserting that its use of the “Chow, Baby!” name was likely to cause confusion with Purina’s CHOW trademarks and would dilute the distinctive quality of those marks. McDonald’s lawyer advised her that it would cost thousands of dollars to fight for the name and that she might lose anyway. As a result, McDonald took down the Web site. But she retained the name, Chow, Baby! for her local store, figuring that Purina wouldn’t find out about it.

Now, McDonald is ready to re-launch an Internet presence. But this time, McDonald decided to steer clear of a dogfight with Purina, and instead, changed her company’s name to “Howl, Baby,” subsequently shortened to Howl.

Would it really have cost McDonald “thousands of dollars” to tussle with Purina, or was her lawyer barking up the wrong tree when he dispensed that advice?

For someone who reads legal blogs, Carolyn Elefant asks a surprising question! No, it doesn’t cost thousands of dollars of anyone’s billable time to write up the argument about why Purina is out of line on a blog, as Carol does admirably at the link, or even a letter responding to Purina’s C&D. (Via Overlawyered.)

But there is not much use in arguing the merits of a claim with lawyers in correspondence, which I try studiously to avoid. Some percentage of attorneys above 50% knows both sides of the argument before putting a threat to paper, and your tutoring is seldom going to move their corporate clients. (In the case of smaller businesses, an “educational” response may be worthwhile, because there by virtue of your letter your adversary’s client may have the first chance to hear the other side of the argument — even giving your adversary the benefit of the doubt!)

In any case companies such as Purina are not interested in discussing the matter.  Brand management isn’t a seminar. Read More…