LIKELIHOOD OF CONFUSION®

Originally posted 2012-04-23 18:48:44. Republished by Blog Post Promoter

A hard stop.

The “D” as in “Defense.”  The put-upon pun is on “C & D,” which is what we pros call a cease and desist letter.

As I’ve noted before, sometimes a bad C & D is worse than none at all.  Sometimes they are nasty and silly.

Other times they are — protected by copyright?  That can’t be right.

In any event, they aren’t really, as some would have it, ways to “open a dialogue” — unless that’s what you visualize when you send them.

As Aaron Thalwitzer notes in this post on the Tactical IP blog, there is some virtue to giving thought to the pluses and minuses of uttering a C & D.

Beforehand, that is.

Lawyer, media critic and intrepid blogger Patterico reports all about a compelling illustration of the Streisand Effect in his life — and, as you will see, in mine.

Quite interesting to see how people respond to this sort of thing when it’s played out this way — in particular, by posting the back and forth between someone making threats that are not, as we say, well taken, and the one not taking them very well.  For example, in the comments to Pat’s page with the correspondence on it, one person asks, “I’m a bit puzzled why Patterico’s attorney has not raised a Fair Use defense. Maybe because Carlson has not yet raised a cogent argument for their removal?”  Not long after, another commenter — evidently a knowledgeable lawyer — answers astutely:

There’s no need to raise a fair use defense because fair use is just that – a defense. The defendant is arguing “Yes, I did violate your copyright, but the violation is excused.”

[He] doesn’t even need to get that far. In order to collect statutory damages you need to register your copyrighted work. No registration means no statutory damages, only actual damages.

If he even wants actual damages he needs to first register the work as a prerequisite to filing suit.

Until he registers his work there is no case, so no need to raise a defense at this time.

No need to ever raise a defense in an email, pretty much.  Your client may be impressed if you trot out the full scope of your legal thinking in correspondence, especially pre-litigation correspondence, with an adversary, but doing so is a waste of time and money, shows at least some version of your hand and violates the rule that less is more.  Better to use these moments to elicit admissions, extract facts and corner your adversary than to score points that will not be acknowledged or appreciated.

That’s how we do it around here anyway.  On the other hand, there is a time for defenses to silly trademark and copyright claims — like just last night, for example, when we filed this in a case that is unrelated except in one sense:  Someone thinks the intellectual property laws are tools for censorship or, worse, knows they aren’t but sells a client on the idea that they can be.

That. Won’t. Work.  Not if I can help it.  And sometimes, you know, I do.

As Glenn Reynolds asks, “I mean, how dumb do you have to be these days to think Hey, threatening Patterico is a good way to make this thing go quiet?”  

UPDATE:  Spot-on analysis here, too!

Discussing trademark law blogging with a colleague last night, I was asked whether I’d written anything about the EAT MORE KALE story.  In order to excuse my laziness, I said, well, these low-hanging-fruit items that everyone is busy with, why, I let everyone else opine on them, see, and then I come in later and set everybody straight.

Sue anything you want about me, so long as you sue me

I didn’t exactly say it that way but I think it may have sounded like that.

Well, I’m still not sufficiently up to speed on the issue to have anything to say about it that isn’t pretty obvious already.  But I like this well-balanced take from my friend Steve Baird:

A couple of quotes from the NY Times article caught my eye:

“In a statement, Chick-fil-A said, ‘We must legally protect and defend our ‘Eat mor chikin’ trademarks in order to maintain rights to the slogan.’”

So, Chick-fil-A, am I hearing right, you’re saying “there’s a chance,” of becoming generic and losing all rights in your “Eat Mor Chikin” slogan if Bo continues selling his “Eat More Kale” products?

Here’s the response from Bo’s pro-bono counsel:

“We believe it’s pretty clear, the issue of dilution and confusion aren’t really triggered here,” he said. “There’s no one out there that’s going to come forward and say, ‘I thought I was buying a Chick-fil-A product but I got this T-shirt.’”

I’m thinking both missed the mark a bit.

As to Chick-fil-A’s position, there is no legal obligation to enforce, and the risk of trademark genericide here seems even more exagerrated and remote than the risk of genericide when brandverbing – something that significant brand owners have learned to manage.

And as to Bo’s position, while I agree with the conclusion that there is no likelihood of confusion or dilution here, whether consumers confuse the products — chicken sandwiches and t-shirts — is not the test of likelihood of confusion or dilution.

Yeah, see, it’s almost never like they set it up in the papers, or the way the lawyers spin it for the papers.  And this thought reminded me of how I wanted to expand a little on something I wrote at the end of this post last week:

You can be very much a lawyer and sign off on a position that isn’t justified in an absolute or abstract sense but which falls short of being frivolous.  Especially because so many positions like that … work.

I thought of that today when I filed a declaratory judgment action on behalf of a client that had received a series of completely spurious cease and desist letters claiming both trademark and copyright infringement, along with the usual bluster about statutory damages and attorneys’ fees, for conduct that was simply, utterly not remotely colorable as a trademark or copyright infringement.  The demand letter insisted that, to avoid litigation in a faraway locale, my client “cease any and all unauthorized use of the XYZ Marks and all variations thereof.  This includes all advertising and promotional efforts, including Internet-related activities and any keywords, adwords or domain names that make any reference to the XYZ Marks.”

“Make any reference to the XYZ Marks”?

I might ask, when are lawyers going to have the nerve to tell their clients, “We can’t demand that.  You can’t stop people from talking about you on the Internet or anywhere else by claiming that they are infringing your trademark if they do.”  But then I remember cases like the Jones Day debacle where the plaintiff law firm achieved just that.  It happens every day.  It often works.

I have written so many times, from so many perspectives, about trademark bullying, and my disappointment in the judges who let it happen, that even I am bored of reading it.  Is there another way of looking at it, though?   Read More…

Originally posted 2008-01-26 19:57:36. Republished by Blog Post Promoter

A law firm’s press release says:

The US District Court for the District of Idaho has found that copyright law protects a lawyer demand letter posted online by the recipient (Case No. MS-07-6236-EJL-MHW). The copyright decision, in pertinent part, has been made available by Dozier Internet Law, and is the first known court decision in the US to address the issue directly. The Final Judgment calls into serious question the practice of posting lawyer cease and desist letters online, a common tactic used and touted by First Amendment groups to attack legal efforts at resolving everything from defamation to intellectual property disputes.

In September 2007, Dozier Internet Law, a law firm specializing exclusively in representing business interests on the web, was targeted online by “free speech” and “public participation” interests for asserting copyright ownership rights in a confidential cease and desist letter sent to a “scam reporting site”. The issue generated online buzz in the US with commentators such as Google’s lead copyright counsel and Ralph Nader’s Public Citizen attacking the practice as unlawful, and Dozier Internet Law responding. Bloggers from around the world soon joined the debate, reeling at the thought of losing a valuable counter-attack tool.

This sounds about as bad as a rule of law can get, on as many grounds as you can think of (creative work? First Amendment? fair use?) and the way it’s being spun is going to cause an uproar on the Internet — already beginning. But how accurate is the spin? Reader Chris, who had more time than I did tonight, read the opinion, and writes this in the comments:

I just read the decision – at least the parts that Dozier posted online. Unsurprisingly, the case HARDLY stands for the broad proposition cited in the press release.

There’s no analysis in the decision of whether the letter is truly copyrightable, merely an assumption that since the letter was registered with the Copyright Office, a prima facie case has been met. Interestingly, Dozier notes this on their website: “Dozier Internet Law notes that a US copyright registration is usually “rubber stamped” and obtained on an expedited basis in about five business days.”

A lot less shocking than I first thought, based on the press release. And not at all shocking just how unethical this law firm is. (This post has been revised.)

UPDATE: More explanation, from Joe Gratz, and this from Sam Bayard:

Reasonable minds could disagree on whether this C&D was sufficiently original to enjoy copyright protection, but the magistrate judge’s hesitancy to examine the merits of the claim is disquieting, especially in this context where anonymous speech (rather than anonymous piracy) is at issue. Additionally, the court failed to consider fair use. One could argue that posting a C&D like this is always, or almost always, going to constitute fair use, and so a DMCA subpoena should not issue based on its posting. The case that comes to mind is Online Policy Group v. Diebold, where the court held that portions of Diebold’s email archive were so clearly subject to the fair use defense that “[n]o reasonable copyright holder could have believed that [they] were protected by copyright.” In that case, fair use rendered a takedown notice defective (and made the sender liable for material misrepresentation). It is not a long stretch to argue that fair use could bar issuance of a subpoena, especially when the party seeking it must submit both a copy of a valid takedown notice and a sworn declaration that “the purpose for which the subpoena is sought is to obtain the identity of an alleged infringer.” 17 U.S.C. § 512(h)(2)(A), (C).

Then again, fair use is an affirmative defense, and so far courts have held that, in order to obtain a subpoena under sectin 512(h), a copyright holder need only plead a “prima facie case” of copyright infringement — that is, (a) ownership of a valid copyright; and (b) unauthorized copying. In such an analysis, there is no room for a fair use challenge. The question remains, however, whether this minimal standard does enough to protect the First Amendment rights of anonymous posters when copyright and First Amendment interests clash. The better view is that courts should impose a heightened standard of review before issuing a DMCA subpoena when the allegedly infringing activity is speech, or part of a larger pattern of speech. (Note that this will not be the case in all, or even most, online copyright cases. See, e.g. Sony Music Ent. Inc. v. Does, 326 F. Supp.2d 556, 564 (S.D.N.Y. 2004)).

I agree with the “better view” here. Prima facie copyright registration should not be a license to saddle bloggers or others with massive legal fees for what are clearly meritless, indeed abusive, legal claims.

Originally posted 2005-11-06 11:21:34. Republished by Blog Post Promoter

The New York Sun reports that New York’s Metropolitan Transit Authority has filed to register the phrase “If You See Something, Say Something” — its “watch out for presents from the religion of peace” campaign on the New York public transit system — as a trademark. It’s serial number 78696607 on TEAS, the trademark registration database, filed August 19th.  Says the paper:

The move has surprised officials at many transit agencies, who had assumed the phrase, which is now used in various iterations as part of transit security programs from San Francisco to Sydney, Australia, was an industry version of a free download.

It surprised them, but it didn’t surprise LIKELIHOOD OF CONFUSION readers, who for months now have known about the MTA’s obsession with trademarks and copyrights! Others have noticed, too. Someone at the agency — could it be that unfriendly C-and-D-meister Lester Freundlich, who’s also the attorney of record on this application? — has identifed IP as a possible licensing profit center.

Look, no question they need the money, and IP exploitation could offer a great return on us turnstile jockies. Why, the rat I saw scurrying across the tracks of the E train last week at what should be the MTA’s showpiece station — Times Square — was so large that it’s scandalous that it didn’t have the MTA logo smartly emblazoned on its side. No way any two-legged denizens of subterranean Gotham would get away with that.  And we don’t. Priorities!!

UPDATE:  They got it.

Originally posted 2009-10-06 22:37:52. Republished by Blog Post Promoter

How much dumb can possibly be fit into a size two?  Walter Olson rounds it up:

Ralph Lauren lawyers: don’t you dare reproduce our skinny-model photo in the course of criticizing our use of skinny models [BoingBoing]

Ralph Lauren Model

With photoshop, evidently, quite a bit!  Here’s an excerpt from the original Boing Boing post, by Cory Doctorow:

Last month, Xeni blogged about the photoshop disaster that is this Ralph Lauren advertisement, in which a model’s proportions appear to have been altered to give her an impossibly skinny body (“Dude, her head’s bigger than her pelvis”). Naturally, Xeni reproduced the ad in question. This is classic fair use: a reproduction “for purposes such as criticism, comment, news reporting,” etc. . . .

As Wendy Seltzer from the Chilling Effects project said, “Sounds like a pretty solid fair use case to me. If criticism diminishes its effectiveness, that’s different from the market substitution copyright protects against. And I’ve rarely seen a thinner DMCA form-letter.”

Yeah, but a thinner cover girl you’re not going to see either.  I fear no C&D letter but don’t do model pictures at LIKELIHOOD OF CONFUSION®; you can check it at Doctorow’s post (or just click Olive Oyl above).  Do not adjust your sets:  That picture is for “real.”

Rooby Lifshitz is selling a bizarre concept of attractive, to say the least — as is, in its own inimitable (which is to say, similar gag-reflex-inducing) way, Greenberg Traurig.  Both are bad to the bone.

UPDATE:  The latest from Marty; and now Instanpundit has picked up the story and even the ABA Journal itself.

Originally posted 2007-05-14 00:55:28. Republished by Blog Post Promoter

Power Line asserts the “actual malice” standard to defend itself against a threatened defamation suit against just about everyone from the Democratic National Committee. (Via Insty.)

They’re right about the legal standard, and the fact that the DNC lawyer making the threat has to know that the DNC and Howard Dean can’t overcome that standard. The focus here is on actual malice because, as Power Line acknowledges, the story — while “truthy” — seems to be flat-out false.

Well, at by the time the story got to Power Line, it was a story about a newsworthy story, and the actual malice defense should protect the blog from that. But that’s a parlous place to be and, unlike Glenn Reynolds and others, I think this is not a “silencing bloggers” issue so much as a plain-vanilla overplaying-your-hand-on-a-defamation-threat issue. Both are reprehensible, and going after bloggers on alleged defamation, as has been shown time and time again, can be like trying to get mercury back into a broken thermometer. But still.