Tag Archives: Big Thoughts

Two centuries of Blawg Review

Originally posted 2009-03-01 01:04:05. Republished by Blog Post Promoter

Blawg Review: #200 went up earlier last week, and, contemplating its bicentennial edition, it got a little philosophical. “Ed” (as in “Ed.,” the nom de keyboard of Blawg Review’s maestro) hosted last week’s edition himself in honor of this milestone.

I particular appreciate this bit, going off on a topic I first had the opportunity to become aware of, and comment on, in the second half of this post, i.e., the transparently commercial blog-as-billboard:

Last week’s host, Mark Bennett, suggested that lawyers who enter the legal blogosphere looking to profit by it are headed for public ridicule; instead, he recommends that “the practical blawgosphere wants you to succeed. Write worth a damn, join in the conversation, link to posts on the blawgs you like reading, and we’ll find your blog and spread the word.” Scott Greenfield applauded Bennett taking a similar position in his Blawg Review last week. Whereas Bennett said that profiteers were welcome in but not well-suited to the blawgosphere, Greenfield put it more bluntly: “This Blawgosphere Ain’t Big Enough for the Two of Us”: “So why can’t we all get along? Because the marketers don’t care about the blawgosphere. They care about the quick buck and scheme.” Austin Criminal Defense Attorney Jamie Spencer blogged about an attorney in Dallas, whose blog is so transparently marketing-oriented that it concludes a post about a bizarre case where a drunk driver ended up with her truck in someone’s pool with “If you too have driven a car into a pool and are in need of an experienced DWI lawyer….”

Who among us hasn’t wished he had that number handy, eh?

And, hey — there was plenty of praise to go around, too, even a little coming out this way:

Colin Samuels, at Infamy or Praise, will remember Blawg Review for the annual award that recognizes the best Blawg Review of the Year. This annual competition is open to all law blogs that have hosted Blawg Review, and the same blogger wins every year. Congratulations, Colin, for getting the most nominations for Blawg Review #189, based on Samuel Taylor Coleridge’s “The Rime of the Ancient Mariner”, which has earned the award for Blawg Review of the Year 2008. Ron Coleman’s Blawg Review #191, a Chanukah special at Likelihood of Confusion, is this year’s runner-up. In third place in the voting, there was a tie between Rush Nigut’s Blawg Review #147 based on the Register’s Annual Great Bicycle Ride Across Iowa, and David Gulbransen’s Blawg Review #182, a special bar exam edition. Twenty-four issues of Blawg Review received nominations this year, which shows the quality and variety of presentations is appreciated.

Colin is very much the man, even if his spelling is a little weak.  His pumping of LOC for notice this year was worth every penny, it seems!

Congratulations to Colin and Blawg Review!

Where you stand depends on where you sit

Originally posted 2009-12-28 09:00:50. Republished by Blog Post Promoter

I’ve never had a guest post in response to a LIKELIHOOD OF CONFUSION® item before, but that’s only because no one with the stature to respond to something I’ve written here based on personal knowledge of the facts has ever had the nerve to ask for one — not until I entered the rock and roll world of the fascinating Ritchie Fliegler, that is.  Ritchie’s a marketing guy, not a lawyer, so, naturally, he’s not afraid to speak truth to, uh, whatever it is this thing we have here is.Here’s what I would love to be able to say is the first of many replies to a LOC blog post from someone with a different point of view, and in a position to know. — RDC

 

“Where you stand depends on where you sit” – Nelson Mandela

This is one of my favorite quotes.  Not only does it ring true on so many levels, it’s also easier to understand than Einstein’s theory of relativity, which says basically the same thing —“Two events, simultaneous for some observer, may not be simultaneous for another observer if the observers are in relative motion.”

What does this have to do with trademark law? Not much actually, but it has a lot to do with a spirited and interesting conversation I had recently, with Ron.

Like many of you, my Google alerts are set to tick off on a number of subjects near and dear to me, classic cars, family members, former employers and the like. A few days ago the Google light went off alerting me to a blog post about a former employer, Fender Musical Instruments Corporation (FMIC) and their failed attempt to register trademarks for their famous guitar-body shapes – Strat, Tele and P-Bass. The article was well written, and thoughtful, however, in a vortex of relativity that would do ol’ Albert proud, my blood started to boil at what I perceived as purposeful errors and omissions by an uninformed outsider.

Now, I have been away from FMIC for well over two years, but I still have many dear friends at the place as well as a lingering vested interest… so I sprung in to action and sent a message with a requisite level of rancor. Read More…

King Kong meets Godzilla

Originally posted 2007-03-05 19:25:23. Republished by Blog Post Promoter

Via Drudge — FT.com unleases a whopper:

Microsoft on Tuesday launches a fierce attack on Google over its “cavalier” approach to copyright, accusing the internet company of exploiting books, music, films and television programmes without permission.Tom Rubin, associate general counsel for Microsoft, will say in a speech in New York that while authors and publishers find it hard to cover costs, “companies that create no content of their own, and make money solely on the back of other people’s content, are raking in billions through advertising and initial public offerings”.

Mr Rubin’s remarks, presaged in an article in Tuesday’s Financial Times, come as Google faces criticism and legal pressure from media companies over services allowing users to search online for books, films, television programmes and news. Viacom, the US media group, instructed YouTube, which Google owns, to remove 100,000 clips of copyright material.

Okay, so there’s a touch of irony here:

You see, Microsoft excels at marketing. They don’t excel at innovation. In fact, very little of what Microsoft has to offer is truly innovative. There is a tendency to come late to the game and snatch up an idea and build on it, perhaps years after the concept has hit the market, and call it their own. They market themselves as innovators and do a degree they are. Their innovation comes in the spit and polish and not in the technological breakthrough itself.

Examples of this go way back …

Arguably, Google has innovated more — with its search engine technology and the applications it has spun off them, and in the way it has changed the face of how people use their (and others’) computers — than Microsoft ever will. What commercial reality is motivating this attack, then? Read More…

Side by side comparison doesn’t decide likelihood of confusion

Originally posted 2006-07-11 17:14:18. Republished by Blog Post Promoter

Dooney & Bourke's pattern

This is an important decision: The Second Circuit Court of Appeals has partially reversed the earlier ruling of the U.S. District Court for the Southern District of New York (full decision here) in Louis Vuitton Malletier v. Dooney & Bourke, Inc.

Here’s the “money quote” as a once-great blogger taught me to say (citations and internal quotes omitted; link added) :

We turn next to the question of likelihood of confusion. . . . The similarity of the marks is a key factor in determining likelihood of confusion. To apply this factor, courts must analyze the mark’s overall impression on a consumer, considering the context in which the marks are displayed and the totality of factors that could cause confusion among prospective purchasers.’ The district court here noted that there were “obvious similarities” between the Louis Vuitton and Dooney & Bourke handbags. However, it determined that despite the similarities, the two marks were not confusingly similar. It appears the trial court made the same mistake that we crioticized in [the] Burlington Coat Factory [decision]: inappropriately focusing on the similarity of the marks in a side-by-side comparison instead of when viewed sequentially in the context of the marketplace. The district court reasoned:

[I]t could not be more obvious that Louis Vuitton uses the initials “LV,” while Dooney & Bourke uses its trademarked “DB” logo. Thus, a consumer seeing these trademarks printed on these bags, either up close or at a distance, is not likely to be confused. . . . [T]he Dooney & Bourke bags only use their “DB” initials; there are no geometric shapes interspersed with the monogram. . . . [T]he colors used on the Dooney & Bourke bag are noticeably toned down, and consequently fail to evoke the characteristic “friction” sparked by Murakami’s bright, clashing colors, the Louis Vuitton marks create a very different overall impression (i.e., large interspersed shapes and initials in crisp, bold colors) than the Dooney & Bourke bags (i.e., tightly interlocked initials in dulled colors).

Vuitton's pattern


We disapproved almost identical language in Burlington Coat Factory. Utilizing a side-by-side comparison can be a useful heuristic means of investigating similarities and differences in respective designs, so long as a court maintains a focus on the ultimate issue of the likelihood of consumer confusion. Courts should keep in mind that in this context the law requires only confusing similarity, not identity. Further, where, as here, the plaintiff claims initial-interest and post-sale confusion, market conditions must be examined closely to see whether the differences between the marks are likely to be memorable enough to dispel confusion on serial viewing. The district court erred because it based its determination that confusion between the Vuitton and Dooney & Bourke marks was unlikely at least in part on an overemphasized side-by-side comparison. This is suggested by the district court’s comment that no amount of expert opinion, legal analysis, or demonstrative evidence can overcome the clarity that comes from direct observation.

Read that excerpt again, then re-read it; then email it to your favorite federal judge — and your favorite client or prospective client, or non-specialist lawyer dabbling in trademark, who can’t understand why the PTO doesn’t understand the difference between his spelling that uses a “z” and the other guy’s pre-existing registration that uses an “s”.  Again:

Courts should keep in mind that in this context the law requires only confusing similarity, not identity. Further, where, as here, the plaintiff claims initial-interest and post-sale confusion, market conditions must be examined closely to see whether the differences between the marks are likely to be memorable enough to dispel confusion on serial viewing.

Got it? Read More…

Revisiting the Black List

Originally posted 2006-03-07 13:14:43. Republished by Blog Post Promoter

David Bernstein writes:

[Northwestern Law Prof Martin] Redish concludes, and this Reviewer agrees, it was entirely appropriate — under the First Amendment, and also morally — for businesses and individuals to boycott members of the Stalinist CPUSA.

(SKIP PARAGRAPH IF YOU DON’T CARE ABOUT LAW SCHOOL POLITICS. ) Marty Redish wrote that? Very impressive for its political incorrectness. Maybe he’s hankering to follow (one of my other first-year NU Law professors — took Redish’s course on federal jurisdiction, too, which really paid off…) Dan Polsby, also recently getting attention on the Volokh blog, to George Mason Law. Interesting NU / George Mason thing going on here — what with Bernstein’s article appearing the NU Law Review…. (Ugh. I should leave this stuff to Brian Leiter.)

But really, I highly recommend the link, assuming that like everyone else you don’t read law review articles. Everything you thought about the “Red Scare,” pretty much, was wrong (unless you’re the type who reads this blog regularly, I guess). And the fact that a mainstream First Amendment authority such as Redish will write that this was an issue of moral choice, not “stifling of dissent,” is a very good development.

Credit card companies get green light to profit from, enable Internet piracy

Originally posted 2007-07-04 23:59:37. Republished by Blog Post Promoter

credit_card_logos_10.gif

Reuters reports that in Perfect 10, Inc. v. Visa Intl. Serv. Assn., 494 F.3d 788, 793 (9th Cir. 2007) the Ninth Circuit has affirmed (opinion here), 2-1, a ruling that there is no third-party copyright or trademark liability for credit card companies such as Visa and MasterCard or the banks that process their transactions, arising from their central — essential, really — role in the sale of counterfeit merchandise (including, as in this case, unauthorized copies of dirty pictures) on the Internet:

Writing for the majority, Judge Milan Smith Jr. said credit card processors, unlike Web search providers, do not direct online traffic. “They in no way assist or enable Internet users to locate infringing material, and they do not distribute it,” Smith wrote.

“Here, the infringement rests on the reproduction, alteration, display and distribution of Perfect 10’s images over the Internet,” Smith wrote.

If you didn’t guess from the title, I disagree with this. Why do judges keep missing this? The credit card companies are very much in the profit chain of infringing websites — websites that do nothing but sell counterfeit goods — and they make no serious effort, even when notified, to prevent this activity from occurring.

I am not just shooting from the hip here. I researched this issue extensively for a Very Important Client, and came to the conclusion that, under the right circumstances, liability should, indeed, attach. I cannot understand, for example, why the Ninth Circuit spends so much time focusing on the fact that the credit card companies do not themselves operate the infringing websites the way flea market operators (who have been held contributorily liable) operate the markets where counterfeit items are sold. That is besides the point. I find this language particularly frustrating:

[T]he ability to exert financial pressure does not give Defendants the right or ability to control the actual infringing activity at issue in this case [as would be required to find liabilty]. . . Defendants can only refuse to process credit card payments to the offending merchant within their payment network, or they can threaten to do so if the merchant does not comply with a request to alter content. While either option would likely have some indirect effect on the infringing activity, as we discuss at greater length in our analysis of the Grokster “stop or limit” standard below, so might any number of actions by any number of actors.

Since when is the fact that other things would also work mean that the law will not require a party in a position to prevent illegality — and which is profiting from the transactions — to do what is in its power?

I’m not alone; not by a long shot. The dissenter? Read More…

Google Gets it Right

Originally posted 2005-08-04 18:30:32. Republished by Blog Post Promoter

Perfect discrimination is every seller’s dream. The Internet at once promises to make that dream reality and yet provides consumers with the range of choice and potential transparency of the sell side that can maximize their options as well. From a microeconomic point of view, it’s a fascinating dynamic. In this online Wired article, “Media Hack” Adam L. Penenberg explains how Google is approaching perfect discrimination in the advertising business — and is only just scratching the surface.

No more Star Chamber opinions

Originally posted 2006-04-17 12:23:01. Republished by Blog Post Promoter

Legal Times reports:

The Supreme Court on Wednesday adopted a historic rule change that will allow lawyers to cite so-called unpublished opinions in federal courts starting next year. The new rule takes effect unless Congress countermands it before Dec. 1.

The justices’ vote represents a major milestone in the long-running debate over unpublished opinions, the sometimes-cursory dispositions that resolve upward of 80 percent of cases in federal appeals courts nationwide. In some circuits these dispositions have no precedential value and cannot be cited. . . .

Unpublished opinions first came into vogue in the 1960s as a time-saving device for appellate judges. Though the propriety of an essentially secret judicial process has been debated for years, the catalyst for change came in 2000, when the late 8th Circuit Judge Richard Arnold ruled in a routine case that stripping unpublished opinions of precedential value was unconstitutional because it gave judges a power not authorized by Article III of the Constitution.

Sounds right to me. I wrote this on the INTA list last winter:

The issue of non-citability and “not precedential” rulings in the federal courts is a troubling one, because it goes square against the idea of the common law and statutory interpretations as being based on accretions of precedent. There is usually no way for the mortal to know why one decision is regarded as worthy of being deemed precedential and others are not, nor to understand why, if it is not good enough for precedent, the ratio decidendi (if you will!) of a given opinion was good enough for that case. Judge Kozinski takes a shot at explaining why citation to unpublished opinions is not allowed here, essentially arguing from the not-too-principled position that they’re not written all that well, but this still leaves us with the question of published TTAB decisions not being citable.

The suggestion by a list member that attorneys should “always note that they are not offered as precedent but as indicative of how the TTAB has approached similar matters in the past” isn’t too helpful to me. I understand his distinction, I guess – that the decisions are not offered as _binding_ precedent – but his use of it is still what I think lawyers call precedent. Since so few cases really are binding in the sense that no distinction can be made between a precedent and the case at bar, this just strikes me as the plain old use of precedent — precisely to demonstrate how other tribunals have approached similar matters in the past.

Judge Kozinski is quoted in the article cited above as saying, “When the people making the sausage tell you it’s not safe for human consumption, it seems strange indeed to have a committee in Washington tell people to go ahead and eat it anyway.” But Judge Kozinsky, you’re not allowed to sell sausage that’s unfit for human consumption. If you want to do that, go into the arbitration business — not an Article III judge-for-life job, or for that matter, a fairly comparable gig with the TTAB.

UPDATE:  A good (not new, but good) treatment here.

Jews for Jesus v. Google and Brodsky – update and analysis

Originally posted 2006-01-22 12:59:35. Republished by Blog Post Promoter

Jews for Jesus

I was on a panel called “Trademark Rights vs. Free Speech” at the Fall 2000 INTA Trademarks in Cyberspace Conference with Marty Schwimmer and David Bernstein. (Five years later I’m still glowing from the reflected brilliance!) The moderator was IP superstar Brendan O’Rourke, who cruelly, on-the-record, and correctly reminded me, “Ron, you lost the Jews for Jesus case, okay? Okay?” Yeah, well, okay. But that doesn’t mean the next guy–in this case, Google–has to! The “Jews for Jesus Whistle Blower” writes, at his Jews for Jesus blog:

Google has a few more days to respond to Jews for Jesus’ lawsuit over the rights to a blog. I bet Jews for Jesus is praying ferverently (and keeping their collective fingers crossed) that Google will give in. What is the likelihood that Google will set a precedent that all anyone has to do is sue Google and they’ll give in? Seems to me that Google is principled. And if they are willing to defend themselves against the government, there’s a good chance they’ll defend themselves against Jews for Jesus.

If Google doesn’t give in, will Jews for Jesus wilt? How much money do they have to pursue the control of a simple blog?

WB, they have plenty of money, and, as you cannily point out, they’re using this litigation to raise more. Jews for Jesus claimed (off the record) during the Brodsky litigation to have raised more in sympathetic donations than they spent on Thelen Reid’s legal fees. We’ll never know if that was true, but it’s food for thought.

As far as the “other side” went, although Steve Brodsky was the sole defendant and there was nothing but the most casual (well, and virtual) link between him and Rabbi Toviah Singer, certainly the two were aligned sympathetically. Rabbi Singer later told me that as a result of the controversy and the traffic that was generated as a result of the publicity for his website, a number of Messianic Jews (i.e., Christians with gefilte fish) returned to the Jewish fold. Maybe he was able to raise a dollar or too himself.

It is fair enough to say that the litigation was more helpful for J4J than it was for either Steve Brodsky, Rabbi singer or anti-J4J missionaries. The real loser, of course, was the law of trademark infringement, which still has not fully recovered. The most egregious aspect of J4J’s arguments on this point (as opposed to the even worse arguments–such as the cooked up “commercial use”–in the opinion) is the very premise that there is, with respect to these website cases, anything even approximating LIKELIHOOD OF CONFUSION.

As we put it in the Third Circuit brief which, among others, future Supreme Court justice Samuel Alito by all indications did not read (although he was on the panel that rubber-stamped the District Court decision with one sentence of affirmation):

Liability under the Lanham Act requires a showing, inter alia, of likelihood of confusion as to source. Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225, 1228 (3d Cir. 1978). But, appellee has submitted no admissible proof to support a finding that confusion is likely.
. . .

[I]t takes virtually no time for even self-described “unsophisticated” users to quickly realize they are at Mr. Brodsky’s site, not that of appellee. The honesty of the non-confusing message on Mr. Brodsky’s website is in stark contrast to the defendant’s website in Planned Parenthood:

Because the words on the top of the page load first, the user is first greeted solely with the “Welcome to the Planned Parenthood Page!” It is highly likely that an Internet user will still believe that she has found plaintiff’s web site at that point.

42 U.S.P.Q.2d at 1438. That kind of confusion is simply impossible in the case of Mr. Brodsky’s website . . . In response to this argument, the District Court found that an individual may be a sophisticated consumer of the Internet but may be an unsophisticated consumer of information about religious organizations. Such a user may find his or her way to the Defendant Internet site and then be confused; the Defendant Internet site advocates views antithetical to those of the Plaintiff Organization.

The last two clauses in the excerpt above constitute a non-sequitur. They also make no sense in the context of the actual website at issue, which explicitly states its opposition to “the Jews for Jesus cult” and disclaims any affiliation with appellee. Concluding that Mr. Brodsky is not part of a Jews for Jesus organization does not require any particular “sophistication.” It only requires the ability to read.

In fact, the courts routinely define “sophistication” in much less “sophisticated” terms than did the court below, where a simple grasp of the obvious is all that is required to negate confusion. Thus, in Girls Scouts v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 1231 (S.D.N.Y. 1969), the court ruled that “rational analysis” precluded confusion about whether the Girl Scouts were the source of a poster depicting a pregnant girl in the well-known uniform of the Girl Scouts appearing with the caveat “BE PREPARED.” Similarly, in Stop the Olympic Prison v. United States Olympic Committee, supra, 489 F. Supp. at 1123, a poster reading “Stop the Olympic Prison” was held not to violate the trademark of the United States Olympic Committee. The court reasoned as follows:

On the basis of its own examination of the poster, the Court finds it extremely unlikely that anyone would presume it to have been produced, sponsored or in any way authorized by the U.S.O.C. While at a fleeting glance, someone might conceivably mistake it for a poster advertising the Olympics, nobody could conceivably retain such a misconception long enough to do any harm: for example, there is no danger that anyone would purchase or display it as such.

Id. . . .  As in Girl Scouts and Olympic Prison, no rational person could believe that Mr. Brodsky’s message was in any way affiliated with appellee. The District Court nonetheless held that confusion is likely because Mr. Brodsky’s site is “related” to that of appellee [and that the use of the trademark was in fact more, not less, protected for this reason, on fair use grounds!-- RDC]. The court below inexplicably rejected the inescapable conclusion that consumers can dispel any confusion if they merely trouble to read Mr. Brodsky’s message, the way Chellathurai, Kalstein and Sanchez did.

If you’re still with me, here’s a last nail from the Third Circuit reply brief:

In defending the District Court’s likelihood of confusion analysis, appellee comes again to its prized exhibits: the three “confusion affidavits” of Chellathurai, Kalstein and Sanchez. There is little left to debate regarding whether these affidavits demonstrate confusion, or, more likely, the absence of confusion. This Court will simply have to read them. A076, A080, A257. Appellee suggests that the District Court found “initial interest confusion” here. Opp. Brief. at 37. But this doctrine is mentioned nowhere in the opinion below. Developed in a sales context, it has been applied only where “a potential purchaser is initially confused [such that] the [senior seller] may be precluded from further consideration.”

Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546 (Fed. Cir. 1990) (emphasis added). Thus it does not apply here. In fact, in Girl Scouts the Southern District of New York rejected transient confusion as proof of trademark harm in a social-commentary context:

Even if we hypothesize that some viewers might at first believe that the subject of the poster is actually a pregnant Girl Scout, it is highly doubtful that any such impression would be more than momentary or that any viewer would conclude that the Girl Scouts had printed or distributed the poster.

304 F. Supp. at 1231. As the Girl Scouts court recognized, ephemeral moments of confusion that do not threaten to divert sales are not evidence of actionable harm under the Lanham Act. Real harm must be shown to overcome the constitutional protection of free speech:

No evidence is found anywhere in the record before the court that the poster has to date damaged the plaintiff in any way. No facts are presented to show that contributions to the organization have fallen off, that members have resigned, that recruits have failed to join, that sales . . . have decreased, or that voluntary workers have dissociated themselves or declined to support the honorable work of the organization.

Id. at 1235. Similarly, there is no evidence in this case of any actionable or even discernible harm that appellee has suffered as a result of Mr. Brodsky’s website. Even the court below admitted that the publicity surrounding this dispute was, far from harmful, undoubtedly a boon for appellee. A436-37. And all three supposedly confused affiants found their way to appellee’s website, undeterred by Steven Brodsky and more zealous than ever in their devotion to appellee. In fact, their reports to appellee negate the suggestion of confusion; again from Girl Scouts:

[I]ndignation is not confusion. To the contrary, the indignation of those who [reported the offending use] would appear to make it clear that they feel that the Girl Scouts are being unfairly put upon, not that the Girl Scouts are the manufacturers or distributors of the object of indignation.

Id. at 1231. This passage perfectly describes the three “confusion” affidavits here: indignant, yes, but certain that appellee was not the source of Mr. Brodsky’s website. They were not confused.

They were not confused. Unfortunately, a lot of people were, and are–about what the Lanham Act is, and is not, meant to protect, and don’t get this key point:  Indignation is not confusion. We can survive that, as long as too many of them aren’t judges.

It’s a good bet, as Whistle Blower suggests, that Google will get a better hearing than lone idealist Steve Brodsky did in his case, and not just because it is better heeled. (My old firm, Pitney Hardin, handled the Brodsky litigation pro bono.) And the issues are somewhat different.

Still, Whistle Blower says that the Reverend David Brickner, the pleasant, non-Jewish head of Jews for Jesus, thinks this is the second coming of the Brodsky case. Jews for Jesus attorneys Thelen Reid probably hope so (though perhaps not every Thelen Ried partner is singing from the same sheet of music on the topic of God and intellectual property). WB beleives that from a legal point of view this seems like somewhat wishful thinking. (Not to mention the fact that this case was filed in the federal court in New York, not New Jersey, and that Judge Lechner of the former court has retired and moved onto bigger and better things.)

Then again, the Rev. Brickner’s statement is hardly the first instance of wishful confusion to eminate from the the precincts of Jews for Jesus–not hardly.

Trademarks, copyright, brand equity, and rent-seeking: Soapbox 2010

Originally posted 2010-01-17 19:28:52. Republished by Blog Post Promoter

From last week’s INTA Trademark Topics email discussion list.  One name has been changed to protect the innocent, and the links, by way of annotation, have been added, as have arbitrary pictures meant to break up the monotony.

—–Original Message—–

from:                               ATMLawyer@changedtoprotecttheinnocent.org
to:                                     INTA List <tmtopics@lists.inta.org>
date:                                Tue, Jan 12, 2010 at 5:18 PM
subject (INTA List):  movie title or characters or theme as trademark
mailed-by:                    lists.inta.org
On Tue, Jan 12, 2010 at 5:18 PM, A TM Lawyer wrote:

Client wants develop a family of marks that adopt or suggest an old and famous movie or its characters, plot, or theme.  Lets say someone wants to put out wine branded, GONE WITH THE WIND  or maybe FRANKLY, I DON’T GIVE A DAMN,  or branded with the name of one of the characters, or branded with something that suggests a famous scene from the movie.  Thoughts on how to analyze this?  Does it matter that the owner of the movie rights has never conducted a merchandising program, has no trademark registrations for the names, has never sold the subject goods (wine in my example), and maybe never sold anything branded in this manner?/blockquote>

On Wed, Jan 13, 2010 at 1:44 PM, Ron Coleman <likelihoodofconfusion@gmail.com> wrote:

TM Lawyer, your client sounds very creative.  So you’ll want to nip that right in the bud.

Your advice should not place undue weight on the so-called merits of the inevitable legal challenge to your client’s business.  These are irrelevant unless your client is funded for extensive litigation.  And because many non-specialists are under the impression that if they win a trademark case, they can “get fees,” be sure it understands that fee shifting will never be granted to a defendant no matter what.  If your client can, however, build the cost of litigation into its early-stage budget, you will want to explain the following:
MLK Federal Courthouse, Newark - interior
Your premise, naturally, is that there is some sweet spot where a business such as the one you describe makes the least possible incursions onto any cognizable rights of the original “property,” yet maximizes its benefit from the goodwill associated with it.  Finding that spot will be pretty elusive, however.

As you know, it is “well established” that the there is little or no protection for the titles of literary works.  (UPDATE:  Nota bene via @MegLG!)  But that’s just what a bunch of old cases say.  Today we have “brand equity,” so your client will be wise to do as you suggested and go with with allusive, rather than direct, references to the “property” in question.  There is no sense in making this too easy for the other side!

I agree with you, too, that by traditional standards the would-be challenger would have an uphill battle proving secondary meaning.  But in the post-Warhol world, fame (the sine qua non of trademark dilution) is everything.  After all, your client’s business model is premised on exploiting the fame and “brand” equity accreted around these creative works.  No registered marks are in play, so as you know federal dilution claims should be off the table.

But how vulnerable is your client to claims of state-law trademark dilution and infringement and Lanham Act section 43(a) claims for unfair competition and false designation of origin?  The legal answer to all these is likely to come down to this:  Is this new business “exploitation” of and “piggy-backing” on some untouchable bit of Intellectual Property ripe with Brand Equity?  After all, people may think your client’s stuff is “endorsed” or “authorized” by the original creators, or studio, or the fictional characters, or whatever.

New York Supreme Court, New York County

If the judge rolls that way, no survey or other competent evidence is likely to be required to demonstrate a likelihood of confusion (or of dilution).  On the other hand, a judge could decide your client is merely making a sly cultural reference, not infringing anything at all, as in, say, the “Chewy Vuitton” scenario. Read More…

“Constitution in Exile” – Visiting with the law prof blogs

Originally posted 2005-01-03 15:37:00. Republished by Blog Post Promoter

I picked up a link on this topic from today’s Instapundit and have now gotten a little into this constitutional law tussle on Gene Volokh’s website.

I try to get in to constitutional law tussles whenever I can. That’s where I got this here scar.

The Google exception?

Originally posted 2009-08-19 13:53:59. Republished by Blog Post Promoter

Way back when the Google Books issue first burst forth, I expressed considerable skepticism that their plan to scan the universe of books and put it on line could be described as anything besides copyright infringement.  As I wrote in my firstest post on the topic nearly four years ago:

Book him, Danno!

Book him, Danno!

It sounds like copyright infringement to me to put someone else’s entire work into a database “just to make it accessible and useful.” What am I missing?

I actually kind of softened on that recently.  Maybe Google Books is just the world’s biggest card catalog, but better?  In fact, on Likelihood of Success today, I linked to an internal page on Amazon.com — which although it is authorized by the publisher, works quite similarly to Google Books — and didn’t feel as if I were doing anything like infringing, and indeed felt more as if I might help an author sell some books.

Well, Patrick from Popehat is here to get me back on the straight and narrow:

While, as a consumer of books, I’m happy enough for myself that if this settlement goes through I’ll have access to many more than I have now, and for free, I’m deeply concerned about the fairness of this settlement to the authors themselves.  I’m sure many will be happy to get a little money they wouldn’t otherwise receive.  Others don’t know about the settlement, or don’t care.  And still others think they should have the right to control their intellectual property, absolutely. . . .

Under the Google Books class action settlement, Google, alone in the universe, would be allowed to reprint and redistribute the work of any author who doesn’t opt out of the settlement, with or without the author’s consent.  And it’s a fair bet that most authors don’t know that their rights are being bargained away.

Hm.  Maybe my glossing over the distinction between Amazon’s “search inside” feature and the Google “mandatory license” approach was error.  I do like Patrick’s point about the difference between authorization and a mere presumption of authorization.  I’m not sure I agree with his “absolutism” about controlling intellectual property, however, and I don’t think either the Constitution or cases interpreting the Copyright Act would, either.

Big issues.  This is not yet one for the books.