Tag Archives: Big IP

More, more, Moore!

Originally posted 2010-08-02 12:49:54. Republished by Blog Post Promoter

Joe CollegeOne 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…

Best of 2013: A bunch of WHARTON business

Wharton logo

First published August 16, 2013.

Steve Baird — redoubtable Steve Baird — has a great post about a bunch of trademark business involving claims by the University of Pennsylvania’s Wharton School of Business over its trademark rights in the name WHARTON:

Earlier this week, Joseph N. DiStefano of Philly.com reported that the University of Pennsylvania filed suit in federal district court to protect its well-known federally-registered rights in the WHARTON name and mark. (Hat tip to guest blogger Dave Taylor of Taylor Brand Group).

For those who have not been paying attention to business for the past 132 years, The Wharton School is the world’s first collegiate business school, established in 1881, as part of the University of Pennsylvania. It has a remarkable reputation as one of the top business schools in the country.

It has one of the most published faculties and one of the largest and most influential alumni networks. And, we know how smart Wharton students are, as one of our talented guest bloggers,Nick Olson, is a UPenn law student who will graduate in 2014 with a J.D. and a Certificate in Business from the Wharton School. Remember his insightful blog posts on IP Valuation and Poetry in Slogans?

Not surprisingly, the lawsuit asserts pretty standard claims for federal trademark infringement, federal unfair competition, federal trademark dilution (blurring and tarnishment), federal cybersquatting (for registration in September 2012 and use of www.whartonadvisorscorp.com), Pennsylvania statutory unfair competition, and Pennsylvania common law unjust enrichment, against a financial consulting firm in New Jersey called Wharton Advisors Corp. Here is a copy of the complaint and exhibits.

Who else writes a thorough blog post like this any more?  That’s just the intro.  (Don’t worry, I will have some original thoughts on this too.  Sit down.)  Steve now takes a very nice little investigatory turn: Read More…

A bunch of WHARTON business

Wharton logoSteve Baird — redoubtable Steve Baird — has a great post about a bunch of trademark business involving claims by the University of Pennsylvania’s Wharton School of Business over its trademark rights in the name WHARTON:

Earlier this week, Joseph N. DiStefano of Philly.com reported that the University of Pennsylvania filed suit in federal district court to protect its well-known federally-registered rights in the WHARTON name and mark. (Hat tip to guest blogger Dave Taylor of Taylor Brand Group).

For those who have not been paying attention to business for the past 132 years, The Wharton School is the world’s first collegiate business school, established in 1881, as part of the University of Pennsylvania. It has a remarkable reputation as one of the top business schools in the country.

It has one of the most published faculties and one of the largest and most influential alumni networks. And, we know how smart Wharton students are, as one of our talented guest bloggers,Nick Olson, is a UPenn law student who will graduate in 2014 with a J.D. and a Certificate in Business from the Wharton School. Remember his insightful blog posts on IP Valuation and Poetry in Slogans?

Not surprisingly, the lawsuit asserts pretty standard claims for federal trademark infringement, federal unfair competition, federal trademark dilution (blurring and tarnishment), federal cybersquatting (for registration in September 2012 and use of www.whartonadvisorscorp.com), Pennsylvania statutory unfair competition, and Pennsylvania common law unjust enrichment, against a financial consulting firm in New Jersey called Wharton Advisors Corp. Here is a copy of the complaint and exhibits.

Who else writes a thorough blog post like this any more?  That’s just the intro.  (Don’t worry, I will have some original thoughts on this too.  Sit down.)  Steve now takes a very nice little investigatory turn: Read More…

Lawyer: Apple trademark claim “silly”

Originally posted 2006-04-03 09:27:30. Republished by Blog Post Promoter

CNN.com reports:

A lawyer for Apple Computer Inc. on Thursday dismissed as ridiculous a long-running trademark infringement claim by The Beatles’ Apple Corps record label that has landed the two cultural icons in Britain’s High Court.

Attorney Anthony Grabiner said “even a moron in a hurry” could distinguish between the computer company’s iTunes online music business and a record company like Apple Corps.

“Even a moron in a hurry?” They may have almost lost their wigs and gowns but the barristers of England have evidently not lost their wit. I don’t even think American lawyers are allowed to say things like that.

Is he right? Well, besides not being an English lawyer, I don’t have the agreement in front of me, and this one all depends on the agreement. But “one quick question,” as a former partner of mine used to say: Apple Records? That’s still a trademark? That’s still a “record” company?

UPDATE:  “Ed.” from Blawg Review passes along Marty Schwimmer’s insight, which answers all questions, as usual.

UPDATED AND THEN SOME:  Ah, the “business solution…”

PROTECT IP — Threat or menace?

Originally posted 2011-10-26 15:42:57. Republished by Blog Post Promoter

Got this video by Kirby Ferguson from Holmes Wilson at “Fight for the Future,” a starry-eyed organization that looks a little naive and a little goofy, but which has something to say about what Big IP and Congress are doing.

And if it didn’t have the PROTECT IP Act, why, it would have to invent it!

Here, look — colors, noises:

As I said when I “liked” this on Facebook, this may not be perfectly balanced, but I think it’s pretty fair.

America’s trademark litigation gravy train – the Bratz / Barbie case is back!

I can’t claim to be keeping close tabs on what’s going on in theBarbie / Bratz trademark litigation. But lookie here:

A federal appeals court has ruled that Mattel Inc. doesn’t have to pay $172 million to MGA Entertainment Inc. to settle a trade secrets theft claim over Bratz dolls because a key claim should have been dismissed before trial.

The ruling filed Thursday by the U.S. 9th Circuit Court of Appeals is the latest wrinkle in a bitter, protracted dispute between two Southland toy companies: El Segundo-based Mattel, the world’s No. 1 toy maker and owner of the Barbie empire, and Van Nuys-based MGA, a little-known company until it introduced Bratz in 2001.

Ok, don’t get too excited:

The unanimous decision by the three-judge panel found that MGA’s counter-claim accusing Mattel of misappropriating trade secrets was not related to an earlier trade secret allegation by Mattel and, therefore, could not be included in the lawsuit. The panel left open the possibility of a separate action on the claim.

Thursday’s ruling leaves MGA with an award of about $137 million, down from the original $310-million award the company received in a 2011 retrial.

Trademark lawyer Ron ColemanNaturally those of us lower in the food chain understand why this work goes to the tippy-toppest trademark lawyers ever, of course — all that certainty you get when you invest in such quality talent.

It’s inspiring to the rest of us just to be allowed to peer in through the knotholes, believe me!

Oh, well, $137 million.  That is less than half of $310 million, so I get why “MGA Chief Executive Isaac Larian said that the company ‘absolutely’ plans to bring another suit against Mattel for trade secret theft, although he declined to say when.”

Clearly no one in this case is “saying when.”  Which we in the legal economy call “a win-win,” of course.

Best of 2011: What “beating Righthaven” means

First posted November 3, 2011.

Supreme Court and U.S. District CourtInstapundit links to Donald Douglas’s blog post, Beating Righthaven.  Excerpt:

Righthaven files “no warning” lawsuits. That is, it gives no advance notification to defendants, which violates the norm of providing “take down notices” to those suspected of copyright violations. By doing this, Righthaven — which made a speciality out of suing small-time bloggers and “mom-and-pop” businesses — was able to scare the bejesus out of its targets, who then would settle out of court generally in the three to five thousand dollar range. Defendants were threatened with the possibility of a $150,000 judgment and the forfeiture of their website’s domain name (URL address). Let me tell you: It’s frightening as hell opening up that letter of service and reading the lawsuit. You can’t even believe you’re being sued, but you can’t ignore it or wish it away. A non-response would result in a default judgment, so there’s no time to dilly-dally. No wonder so many defendants settled out of court rather than attempt a legal defense, especially since obtaining legal counsel and going to trial would probably run into the tens of thousands of dollars on average. I first found out about the lawsuit from Steven Green of the Las Vegas Sun, who left me message on Facebook and then the link to this article mentioning me as a defendant.

Righthaven’s model is entirely predatory, and the company soon earned everlasting enmity by filing lawsuits against folks who were unemployed, on public assistance or disabled. Righthaven, for example, sued cat-blogger Allegra Wong of Boston, who was unemployed and receiving “financial support from a companion.” Righthaven also sued Brian Hill of North Carolina. Hill is autistic and chronically ill and is supported by Social Security disability benefits. My attorney David Kerr successfully defended Hill, whose story was featured in the New York Times, “Enforcing Copyrights Online, for a Profit.”

There’s a lot that’s “frightening as hell” going on out there with IP “enforcement” — a word I didn’t put quotes around when I used to do it for Brands You Must Know, because the kind I used to do didn’t need them.  It was legitimate, based on easy to comprehend ownership rights, consumer protection concerns and, yes, a concept of fair warning even to a lot of defendants who didn’t deserve it all.

Now IP is a racket.  Most of the readers of this blog practice IP law, and know exactly what I mean — because of what they do and, well, because they read this blog, and have surely detected a turn in my attitude toward the topic from years past.

Practical lawyering in an area of law I actually like often disgusts me now.

Look, I “majored” (not really how they designate this where I went to school, but stick with me) in economics — focusing my learning not in money or finance, which I know little about, but the prediction of human behavior when incentives are provided, withdrawn or distorted.  And I “minored” in political science.  So I was not born yesterday.  I have always understood that much of what is happening in IP law is entirely predictable once we understand that the value of the estates in intellectual property has skyrocketed, for any number of reasons, unpredictably.  But from that premise, it is not news that the incentive to capture rent — get as much of the action as possible — will rise concomitantly, leading to a rational increase of investment by stakeholders in making changes in the regime governing the allocation of such rights.  So, yeah, Hollywood and Big Fashion and other major players are going to drop major bucks on whatever is for sale — legal talent, lobbyists, legislators — to “protect their assets” and just keep stacking the deck legislatively in their favor.

(I’m not even getting into how that plays into patents, patent reform… not here, not now….)

Trademark lawyer Ron ColemanTen years ago, though, I was — with no pricks of conscience — personally walking through the corridors of the House and Senate with other members of an IACC task force to make damned sure that eBay would not be able to secure a legislative extension of Section 230 of the DMCA to trademark law, even as judges were beginning to toy with inventing just such an extension themselves.  That seemed like the thing to worry about at that the time, and indeed I have never changed my views that eBay got away with murder, albeit less so now, by enabling and profiting from the sale of counterfeit merchandise, and that the Tiffany case was sloppy work.  But.

We’ve got a bigger problem now.  A few.  But I will focus only on the copyright / Righthaven angle right here:

IP has become, as economics predicts, a commodity, and a monetized one.   Read More…

What “Beating Righthaven” means

Supreme Court and U.S. District CourtInstapundit links to Donald Douglas’s blog post, Beating Righthaven.  Excerpt:

Righthaven files “no warning” lawsuits. That is, it gives no advance notification to defendants, which violates the norm of providing “take down notices” to those suspected of copyright violations. By doing this, Righthaven — which made a speciality out of suing small-time bloggers and “mom-and-pop” businesses — was able to scare the bejesus out of its targets, who then would settle out of court generally in the three to five thousand dollar range. Defendants were threatened with the possibility of a $150,000 judgment and the forfeiture of their website’s domain name (URL address). Let me tell you: It’s frightening as hell opening up that letter of service and reading the lawsuit. You can’t even believe you’re being sued, but you can’t ignore it or wish it away. A non-response would result in a default judgment, so there’s no time to dilly-dally. No wonder so many defendants settled out of court rather than attempt a legal defense, especially since obtaining legal counsel and going to trial would probably run into the tens of thousands of dollars on average. I first found out about the lawsuit from Steven Green of the Las Vegas Sun, who left me message on Facebook and then the link to this article mentioning me as a defendant.

Righthaven’s model is entirely predatory, and the company soon earned everlasting enmity by filing lawsuits against folks who were unemployed, on public assistance or disabled. Righthaven, for example, sued cat-blogger Allegra Wong of Boston, who was unemployed and receiving “financial support from a companion.” Righthaven also sued Brian Hill of North Carolina. Hill is autistic and chronically ill and is supported by Social Security disability benefits. My attorney David Kerr successfully defended Hill, whose story was featured in the New York Times, “Enforcing Copyrights Online, for a Profit.”

There’s a lot that’s “frightening as hell” going on out there with IP “enforcement” — a word I didn’t put quotes around when I used to do it for Brands You Must Know, because the kind I used to do didn’t need them.  It was legitimate, based on easy to comprehend ownership rights, consumer protection concerns and, yes, a concept of fair warning even to a lot of defendants who didn’t deserve it all.

Now IP is a racket.  Most of the readers of this blog practice IP law, and know exactly what I mean — because of what they do and, well, because they read this blog, and have surely detected a turn in my attitude toward the topic from years past.

Practical lawyering in an area of law I actually like often disgusts me now.

Look, I “majored” (not really how they designate this where I went to school, but stick with me) in economics — focusing my learning not in money or finance, which I know little about, but the prediction of human behavior when incentives are provided, withdrawn or distorted.  And I “minored” in political science.  So I was not born yesterday.  I have always understood that much of what is happening in IP law is entirely predictable once we understand that the value of the estates in intellectual property has skyrocketed, for any number of reasons, unpredictably.  But from that premise, it is not news that the incentive to capture rent — get as much of the action as possible — will rise concomitantly, leading to a rational increase of investment by stakeholders in making changes in the regime governing the allocation of such rights.  So, yeah, Hollywood and Big Fashion and other major players are going to drop major bucks on whatever is for sale — legal talent, lobbyists, legislators — to “protect their assets” and just keep stacking the deck legislatively in their favor.

(I’m not even getting into how that plays into patents, patent reform… not here, not now….)

Trademark lawyer Ron ColemanTen years ago, though, I was — with no pricks of conscience — personally walking through the corridors of the House and Senate with other members of an IACC task force to make damned sure that eBay would not be able to secure a legislative extension of Section 230 of the DMCA to trademark law, even as judges were beginning to toy with inventing just such an extension themselves.  That seemed like the thing to worry about at that the time, and indeed I have never changed my views that eBay got away with murder, albeit less so now, by enabling and profiting from the sale of counterfeit merchandise, and that the Tiffany case was sloppy work.  But.

We’ve got a bigger problem now.  A few.  But I will focus only on the copyright / Righthaven angle right here:

IP has become, as economics predicts, a commodity, and a monetized one.   Read More…

Up in smoke

Ever hear about people who buy ultra-expensive fine jewelry and then, concerned with security, keep it in a vault and wear a copy of the fancy stuff?  It’s a funny thing, and not usually an intellectual property issue, but it’s not as if there’s no logic to it at all.  The thinking, I have always guessed (for I wear all my ultra-expensive things for real), is that if you own it, you really have — dare I say? — the “equity” that makes wearing the phony version somehow okay.

Fake designer suitcases, Rockland County, New YorkOkay. Well, here’s an interesting twist on the concept that takes it a step further:  What if you know, for sure, that the stuff is not merely at risk of being lost, but is for certain to be lost, and forever, at least in this world.  On purpose.  Susan Scafidi (bless her, actively blogging again!) explains:

In traditional Chinese funeral rites, the dearly departed aren’t expected to pack lightly for their trip to the next world. Instead, family and friends send them on with everything they’ll need, from traditional money, food, and houses to modern cars and luxury handbags.  The catch?  These items aren’t real, they’re paper, and they’re burned as part of the ceremony.

The New York Times reports, however, that the owner of a shop on Chinatown’s “funeral row” was arrested for selling paper Burberry, Louis Vuitton, and Gucci replicas.  While these companies are understandably protective of their often-imitated intellectual property, a licensing agreement might be more beneficial than an enforcement action for all involved.  If marketers for major brands are excited about the growing Chinese market now, just think of the potential for keeping good customers even after they’ve passed on.

Sort of a Lower East Side luxury-brands Valhalla, I guess.

It’s kind of hard to imagine these companies going in for a license that’s going to result in a mass, public destruction of their precious brand-equity-units, isn’t it?  Still it’s a long way from there to justify having people arrested for this.  (Is the state officially an arm of Big IP now?  This takes “trademark bullying” to a new level — not that there’s anything wrong with that!)

Look, you can see why selling the paper items, in and of itself, is going to be barred; that merchandise is certainly dilutive of the trademark value of the stuff, if not an outright infringement — and it probably is an outright infringement.  But let’s say, as Susan seems to have in mind, that you could control for the possibility of the paper items being used only for this purpose, i.e., funeral-pyre-kindling.

If you could “assume a can opener” (as we econ weenies say) and assure that the paper stuff is only going to be sold and used for this purpose … or, more boldly, if you say you’re prepared to argue that these paper replicas are so unlikely to be confused that they are not usable for anything remotely like the real things are — then this would seem to be fair use, wouldn’t it?:

Fair use or nominative use can only be used [sic] when the use of the trademark does not imply affiliation or sponsorship with the owner’s product or services, and will not confuse the reader into thinking the owner of the mark has something to do with the use.

Moreover:

If someone sues you for trademark dilution, you can argue that your use of the famous trademark was “noncommercial.” Congress created this defense, found at 15 U.S.C. § 1125(c)(3)(C), out of concern that dilution claims would impinge on the First Amendment rights of critics and commentators.

Is this fair use?  Seems like a fairly usable argument to me.  It’s commentary; symbolic; not necessarily commercial in and of itself.

But don’t let’s get all inflamed up over this.

The latest intel on Intel’s trademark adventures – Bumped, UPDATED with prejudice

CIA Headquarters - intel inside

There's intel inside.

Forget about that dull, boring stuff about the negotiations between the Federal Trademark Commission and Intel Corporation’s so-called anticompetitive practices.  It’s dog eat dog out there — what do these G-men want from a guy?

No, much more interesting, and plus, yeah, there’s a little in the way of crushing every little person, place or thing that gets in one’s corporate way, is that case of which everyone’s keeping such close track — the Intel Corp. vs. Americas News Intel Publishing trademark litigation, right?  Of course right.

So then you know that on May 18th the defendant in that case, represented by your blogger, filed its motion to dismiss Intel Corporation’s amended complaint.  Then they came back with… with… this.  And here’s the defendant’s brief, and hopefully sweet (to the judge), riposte.

UPDATE:  Motion denied:  “[T]he Court cannot, at this stage in the litigation, determine with certainty how ANIP is using the term ‘intel’” (June 23, 2010).

UPDATE WITH PREJUDICE (Nov. 23, 2010):  Intel throws in the towel, rather out of nowhere — dismissing its own complaint.

And right before its discovery responses were due this coming Monday.

“He who fights and runs away lives to fight some other day.”  Intel will find some other poor sucker to pick on.   Our turned out to be not so “poor,” at least in the legal department.  And he’s obviously no sucker — this was on the house!  Thanks and congratulations to my very able pro bono co-counsel Colby Springer.

COICA: Big IP supersizes it

Ron Coleman's LIKELIHOOD OF CONFUSION®Everything I’ve written about here for the last five years, or just about everything, is about to get a lot worse, explains David Post:

Congress is set to once again consider the Sen Leahy’s Combating Online Infringements and Counterfeit Act, a truly awful bill (with the appropriately awful acronym “COICA” . . . ). I have written a (relatively brief) “Law Professors’ Letter in Opposition,” which now has about 35 signatories, which you can read here. [There’s a summary of the bill’s provisions in the Letter — and the full text of the current version is posted here]

The bill would allow the Attorney General to institute an in rem action against the domain name of any Internet site “dedicated to infringing activities” — defined to include any site that “engages in” copyright or trademark-infringing activities where those activities, “taken together,” are “central to the activity” of the site. The court would then be authorized to issue injunctions — not against the offending website, but against “the domain name” itself — ordering the domain name registrar where the target site’s domain name was registered, and the domain name registry responsible for maintaining the authoritative database of names for the target site’s top-level domain, to “lock out” the domain name (and therefore prevent access to the site through use of the domain name). The court could also enjoin any of the thousands of Internet Service Providers, or any “operator of a nonauthoritative domain name server” (a category that includes virtually all ISPs or operators of networks linked to the Internet), ordering them to “take technically feasible and reasonable steps designed to prevent [the] domain name from resolving to that domain name’s Internet protocol address.”Ron Coleman's LIKELIHOOD OF CONFUSION®

It’s awful on many fronts. It would allow a court to effectively shut down a site operated out of Brazil, or France, without any adversary hearing (unless, I suppose, “the domain name” itself comes into court to argue the case) or any reasoned determination that the site actually is engaged in unlawful activity. There is a name for that in our law: “prior restraint,” and we don’t like them — even in cases where truly compelling governmental interests are at stake, let alone where the purpose is merely to protect the rights of copyright and trademark owners.

The fact is, these proposals are reactions to real problems.  But in typical piggy fashion, Big IP wants to use a sledgehammer where perhaps some fine carpentry would do.

Now learning how to build things right — even radically different things, but things that will stand up — takes hard work, diligence and practice, and not just everyone can be a cabinet maker.  The IP enforcement community, however, is flummoxed.   They don’t want to spend the money on craftsmanship; they want the big, wide problem of IP enforcement to be amenable to solution by journeymen.  This reaction is understandable, considering how expensive the work of master can be — and often, how little there can be to show for it.

Consider, for example, Gibson Dunn & Crutcher:  As elite a litigation department as you can think of (unless perhaps you’re in Montana, but who cares about flyover country?) and leaders in IP-enforcement litigation.  What has this leadership achieved for its clients? Read More…

M-I-C . . . see you in court!

Originally posted 2008-09-03 11:51:57. Republished by Blog Post Promoter

Could there be a mouse hole in Mickey’s larder?  The Los Angeles Times reports:

All signs pointed to a Hollywood ending with Disney and Mickey Mouse living happily ever after – at least until a grumpy former employee looked closely at fine print long forgotten in company archives. . . .

Copyright questions apply to an older incarnation, a rendition of Mickey still recognizable but slightly different. Original Mickey, the star of the first synchronized sound cartoon, “Steamboat Willie,” and other early classics, had longer arms, smaller ears and a more pointy nose. . .

The issue has been chewed over by law students as class projects and debated by professors. It produced one little-noticed law review article: A 23-page essay in a 2003 University of Virginia legal journal argued that “there are no grounds in copyright law for protecting” the Mickey of those early films.

Garsh, Mick!

Roger Schechter, a George Washington University expert on copyright, called the article’s argument “a plausible, solid, careful case.”  By contrast, a Disney lawyer once threatened the author with legal action for “slander of title” under California law. No suit was filed.