Tag Archives: Brozik

Dot-xxx: The Rosy Dawn of a New Blue Era

mdbheadshotfinalWe all knew this day would come, even if not everyone wanted it to: The sponsored top-level domain .xxx is up and running, although addresses in the new sTLD aren’t quite up for grabs. After approval by ICANN in March, sponsor ICM Registry is, as of September 7, accepting (via GoDaddy, natch, among other registrars) applications for .xxx domain names. ICM has established a staggered system for assigning .xxx domain names to applicants, thus:

From September 7 through October 28, two kinds of applicants will be serviced: “Sunrise A” applicants are those with a trademark in the adult entertainment services realm (or, otherwise, a registered non-.xxx domain name used for adult entertainment services—a circumstance that leads to the unfortunately termed “grandfathering” of that domain name); “Sunrise B” applicants are those with a trademark for non-adult-oriented products or services who do not want those marks used as .xxx domain names. Take PepsiCo Inc., for example. (Most people use Coca-Cola as the go-to exemplar, but I’ve long been partial to Pepsi.) PepsiCo Inc., if it wants to make sure that no one else registers “pepsi.xxx,” can pay $199.99 for the first year (slightly less than the $209.99 charged to successful Sunrise A applicants) to obtain that domain name (and then, one expects, have it redirect to pepsi.com or simply let it lie fallow).

Well, how convenient!

The thinking here, evidently, is that the legitimate holder of a trademark for adult-oriented services has top priority for the .xxx domain name that incorporates that mark. Absent such entity, the right of first refusal to register a .xxx domain name is given to the holder of that mark for use in providing non-adult goods and/or services. If both do exist (and apply for the .xxx domain name), ICM will give the domain name to the Sunrise A applicant. (Multiple Sunrise A applications will be resolved by private auction.)

From November 8-25, during the so-called “Landrush” phase, applicants “who don’t qualify for Sunrise A but want to secure a valued .XXX domain name and avoid first come, first served General Availability risks” may apply. Landrush phase applicants need possess no special qualifications (other than being recognized members of the “adult Sponsored Community,” that is). Finally, starting December 6, whatever .xxx domain names are left will be offered to the adult Sponsored Community at large.

But let’s go back a bit, to the part where those who own trademarks used in connection with non-pornographic goods and services can pay to register .xxx domain names, presumably specifically so that no one else will snap up those domain names and perhaps sully the marks. Doesn’t the law already provide these trademark owners a mechanism for preventing such a thing? Why, I believe it does! On the other hand, however, there can be little if any argument that it isn’t worth $199.99/year (and possibly less for each year after the first) to a trademark owner to register the .xxx domain name and thereby safeguard its mark. Two hundred dollars is nothing compared to the cost of litigation. But even a cease and desist letter alone would likely cost more than two hundred dollars (if prepared by counsel, that is). So we’re almost certainly not going to see lawsuits over the likes of pepsi.xxx, kleenex.xxx, or xerox.xxx.

Now, where’s this .law I’ve been hearing absolutely nothing about?

I Beg to Differ, Sir

mdbheadshotfinalIt’s rare that one gets the opportunity to sue his hero—but, as my wife recently remarked to me, “You’re dangerous when you’re bored.” This is the story of how I almost brought the late P. G. Wodehouse to federal court.

You might recall from a prior guest post of mine—though you will certainly be forgiven if you do not—my mentioning that I was working on (that is, writing) a collection of parodic short stories featuring the best-known and -loved of Wodehouse’s fictional characters… placed in some truly absurd scenarios. Bertie Wooster wakes up one morning, for instance, to find himself transmogrified quite Kafkaesquely into a parakeet; Jeeves helps a certain Mr. W— of Gotham City, in America, adopt an alter ego. You know, those sorts of things.

I wrote ten stories over the summer of 2010. One was published in a literary journal of a college in Boston; another appeared in a Canadian humor magazine. Relatively low-profile publications, both, which might explain why, as far as I know, no one in the Wodehouse camp took notice of either back then. In the Fall of 2010, I began querying literary agents about the collection, which I had titled “Wodehousebroken.”

Several agents liked the work very much. One agreed to represent me (and persuaded me to add a pair of stories to the collection, bringing the tally up to a dozen). I won’t embarrass the agent by naming him or his agency; he and it are well-regarded. Nevertheless, after a year, he hadn’t sold the book, and I ended our arrangement. While (unsuccessfully) seeking new representation recently, I began to consider self-publishing the collection, as an eBook, and I recalled that an agent I’d traded emails with the first time around had strongly recommended that route, for a variety of reasons, suggesting memorably that it was a keenly appropriate manner of publication for this particular project, and vice versa. Ultimately, I decided to do it—to self-publish Wodehousebroken as an eBook for the Kindle, via Amazon.com.

I uploaded my book to Amazon’s Kindle Direct Publishing website on May 13, 2012; it was approved for publication in a matter of hours (much fewer than the 12 hours KDP officially reserves to review new books for sale). I announced the publication of the book to my friends and others on the morning of Tuesday, May 15… and then I waited for the other shoe (or perhaps just the first one) to drop.

For, you see, I’m no dummy. And even if I hadn’t myself wondered if I might be running afoul of someone’s intellectual property rights by publishing Wodehousebroken, several agents and several friends had raised that specter. Interestingly, of the agents with whom I had discussed the project, half were of the mind (as I have always been) that my use of the fictional characters that had appeared in P.G. Wodehouse’s original novels and stories between 1915 and 1974 (the year I was born, as it happens; Wodehouse died in 1975) was unquestionably fair use, inasmuch as my stories are patently parodic. Bertie Wooster meets Dr. Emmett L. Brown, who asks Bertie to accompany him to the year 1967, to salvage the reputation of Wodehouse himself (in “Back to the Wooster”) ! In “Jeeves Your Own Adventure,” the reader plays the valet Wodehouse’s adventures featuring Jeeves and Wooster were silly, but they were realistic. Mine are just inane.

Still, not everyone has a sense of humor. Read More…

Louboutin gets the boot

mdbheadshotfinalIn a case that has everyone seeing red —

No, let me start over. And without the jokes. Because in a decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc. — a case about colored outsoles of high-end ladies’ footwear — the Honorable Victor Marrero of the United States District Court for the Southern District of New York made nearly every color, foot, and/or shoe pun imaginable, and I don’t want to step on His Honor’s toes. (Sorry, that was my last one.)

The angels want to wear theseThe factual background, in brief: The plaintiffs are one Christian Louboutin, a fashion designer, and his eponymous companies. Those companies sell, among other things, expensive shoes for women. In or around 1992, Monsieur Louboutin had an idea—he would sell shoes with colored outsoles (that is, the outermost layer of the sole; usually the least interesting part of a shoe). Specifically, he would sell shoes with red outsoles. This was something (arguably) that no one had done before. Over time, those who care about such things/notice the bottoms of shoes came to associate red outsoles with Louboutin. So Louboutin did another smart thing: He applied for federal registration of a trademark, and on January 1, 2008, the PTO granted him Registration no. 3,361,597 for a mark consisting of “a lacquered red sole on footwear.”

Come 2011, and Yves Saint Laurent (the luxury fashion house co-founded in 1962 by… well, French fashion designer Yves Saint Laurent) is selling four styles of shoes, each with colored outsoles. Each model of shoe comes in red (among other colors). But it’s the red that matters, because Louboutin has a registered trademark for a lacquered red sole on footwear. Not a lacquered colored sole on footwear—just a lacquered red sole on footwear. So YSL’s blue, yellow, and other colored-soled shoes are in the clear.

(This is a good point to mention that according to the decision, there is evidence that shoes with red outsoles have appeared occasionally in YSL’s collections dating back to the 1970s. This fact did not matter, but it’s interesting to note. Maybe it would have made a good… yes, footnote.)

Louboutin sued YSL, asserting several causes of action, all of which live or die with the protectability of Louboutin’s claimed mark. (Spoiler alert: They all die.) YSL counterclaimed, most significantly, for cancellation of the PTO registration, arguing that a color for a shoe sole (lacquered or otherwise) can not be protected as a trademark. Louboutin moved for a preliminary injunction, which prompted the court’s early consideration of the merits of the plaintiffs’ claims (and specifically the likelihood of success on the merits thereof). Judge Marrero found Louboutin decidedly unlikely to succeed.

By now, anyone with even passing knowledge of the intersection of trademark law and colors should be shouting, “Qualitex! QUALITEX!” Read More…