Tag Archives: Fair Use

Beyond fair use

Originally posted 2013-11-27 12:37:33. Republished by Blog Post Promoter

We’re a little obsessed here with the rights of “unauthorized” resellers to use the trademarks that describe the stuff they’re reselling.  So this UK domain name decision strikes us as extra-interesting (a link added):

Pressure gauge maker ITT failed in its claim for the domain name ITTbarton.com and 12 other domain names owned by a seller of ITT pressure gauges, Douglas Nicoll, and his company Differential Pressure Instruments. . . .

Nicoll, based in Norfolk, Virginia, sells products that were made by ITT and purchased by the US Government but never used. The government sold off its surplus stock to Nicoll and others who bought them for resale.

ITT argued that Nicoll had no rights or legitimate interests in the domain names. . . . ITT argued that the Oki Data test should be limited to authorised resellers only. The WIPO panel disagreed.

“The Complainants argue that the Oki Data rationale should not apply to an unauthorized reseller,” said the ruling. “The Panel concludes, however, that the issues of legitimate reseller interests in accurately describing a lawful business, on the one hand, and of potential abuses of trademark, on the other, are similar whether or not there is a contractual relationship between the parties.” . . .

The panel said that Nicoll had “a legitimate interest in making nominative use of the ITT mark consistent with the Oki Data requirements; consequently this does not reflect bad faith.”

Well, of course.

Who Owns First?

mdbheadshotfinal

Not even warming the bench

There is no end to the number of jokes one might make in a post about a decision concerning the classic Abbott & Costello comedy routine “Who’s on First”—and indeed I’m champing at the bit to make ’em—but the import of the ruling is just too great to be flip about, in this copyright comic’s opinion. Because if I’m reading the Second Circuit correctly, and I think I am, then the court thinks that the beloved shtick is no longer protected by copyright. In other words—although the court did not say so explicitly in 62 pages—the routine is in the public domain.

In TCA Television Corp. v. McCollum, decided October 11, 2016, the United States Court of Appeals for the Second Circuit found that the trial court—the U.S. District Court for the Southern District of New York—had gotten the right answer, but for exactly the wrong reason. The trial court had rejected the argument that “Who’s on First” isn’t protected by copyright (or, more accurately, that the plaintiffs had failed to plead a valid copyright interest) but was persuaded by the argument that the defendants’ use of a portion of the routine verbatim is fair use. It’s exactly the opposite, wrote the Second Circuit. (Indeed, the Second Circuit showed admirable restraint itself under the circumstances. This is perhaps the principal reason why your humble commentator is not a federal appellate judge.)

So let’s meet the players, some of whose numbers have been “retired”: Read More…

Nominative fair use: The Second Circuit names names

Thurgood Marshall US Courthouse

Second Circuit

Nominative fair — the “unauthorized” use of a trademark as a trademark specifically to invoke the trademark, as opposed to its “non-trademark” use to describe the alleged infringer’s goods or services use — has now come East, courtesy of the Second Circuit Court of Appeals in International Information Systems Security Certification Consortium Inc. v. Security University LLC. 

Let’s call this bumbling, cumbersome caption by the short title, “Security University.”

The opinion (link here) (hat tip to Law360) is an important one for a couple of reasons, of which the ruling on nominative fair use is certainly the more important one.  As Bill Donahue’s Law360 piece explains:

The ruling came in a clash between a small IT security company called Security University LLC and the International Information Systems Security Certification Consortium Inc. over whether company misused the organization’s “Certified Information Systems Security Professional” certification mark in advertising its services.

In particular — get this — the defendant was going around calling one of its trainers a “Master” of this particular techie domain, and just wouldn’t stop:

ISC2 objects to some of 1 SU’s advertisements, run between 2010 and 2012, which, ISC2 argues, misleadingly suggested that SU’s instructor, Clement Dupuis, had attained some higher level of certification as a “Master CISSP” or “CISSP Master.” . . .

SU began using the term “Master” 1 in May 2010. On June 9, 2010, ISC2’s counsel wrote to Schneider asking that she cease using the phrase “Master CISSP” in SU’s advertisements. On June 13, 2010, Schneider emailed Marc Thompson, an employee of a third party entity that oversees seminars on ISC2’s behalf, stating that “SU will continue to use the word Master. Master Clement Dupuis is a Male Teacher [and] thus he is a Master according to the dictionary.”

“He is a Master according to the dictionary.”  

This was the point, as we have learned, at which it should have been clear that if this case were to be litigated, someone’s story was really, really going to stink up the place. Read More…

Adverference?

Originally posted 2009-01-22 13:31:48. Republished by Blog Post Promoter

"The Interloper" (Norman Rockwell)

"The Interloper" (Norman Rockwell)

Working from home today after a bruising few weeks at work (see yesterday’s post!), I finally figured out what was going on with banner ads on my Internet browsing.  It raises an interesting question about Internet-related copyright and trademark law.

We use a filtered Internet service at home.  This way we know that not only do our children not have access to or permission to use the Internet, but even if they “happen to” get to it anyway, the worst of the worst is not coming into our house.  This is good for the grownups too, of course.

I recently adjusted the filtering level on the service and by virtue of that change the filter now happens to block banner ads.  This I did not mind, because many such ads, especially on Yahoo! mail, are quite garish and often rather gross and, frankly, indecent.  After this change I also started seeing a filtering message in the place of familiar, and relatively high-class, banner ads on my favorite “big” blogs that feature ads, such as Instapundit. It was not a great aesthetic experience but I got used to it.

A little while later I had the jarring experience of realizing that ads for charity auctions on behalf of orthodox educational  institutions — including a client of mine! — and solicitations for fundraising on behalf of penurious young couples in Israel were appearing on that very same site, one of the most popular English-language blogs in the world!  Well, I would say Glenn Reynolds is pretty Jewish-friendly, to say the least, but this struck me as pretty odd.

instapundit-jewish-after-all

Once I could focus on the question, however, I realized what was going on:  My filtering service was reselling the filtered advertising real estate to advertisers interested in the orthodox Jewish Internet user market!

This seems to raise some interesting questions, doesn’t it?  Read More…

War Is Peace; Freedom is Slavery; Ignorance is Strength

Originally posted 2014-11-26 12:58:03. Republished by Blog Post Promoter

And free speech is a form of negotiable intellectual property, right?

Maybe I can give up the blog. There is no percentage in clever commentary when the claimants provide the self-parody.  Credit to Instapundit.

Let the games begin

Originally posted 2009-09-29 23:36:13. Republished by Blog Post Promoter

Yahoo! News reports:

Media conglomerate Viacom Inc. sued Google Inc. and its Internet video-sharing site YouTube for more than $1 billion on Tuesday in the biggest challenge yet to the Web search leader’s strategy to dominate the online video market.

The lawsuit accuses Google and its popular online video unit of “massive intentional copyright infringement,” threatening its ambitions to turn YouTube into a major distributor of entertainment and outlet for advertising.

This is going to come down to the old question that we wrestled with — without resolution — in the online auction context: Whether or not “trying really hard” to avoid copyright (or in the case of auctions, typically trademark) infringement is enough to get website such as YouTube (or eBay) off the hook.

Ironclads battle

In the case of eBay, where the issue is trademark, they have replicated the notice-and-takedown provisions of the copyright law and were tested on whether this helps — there is no safe harbor provision for trademark infringement — only by Tiffany, in a case that evidently never went anywhere.

Here there really is a legislative safe harbor under the Copyright Act. But why should an entire business model premised, at least in part, on profiting from copyright infringement get the benefit of a safe harbor? Viacom will argue that it shouldn’t.

UPDATE: Good analysis by Allahpundit and Google Watch. Meanwhile, when you’re a carpenter, every damned thing looks like a nail, doesn’t it!  Also, Evan has the complaint and a sharp rundown on it.

UPDATE BUT GOOD:  Settled in March 2014:

The settlement ends seven years of litigation that drew wide attention from Hollywood, the music industry and Internet companies, and which tested the reach of a federal law designed to thwart piracy while letting people find entertainment online.

“This settlement reflects the growing collaborative dialogue between our two companies on important opportunities, and we look forward to working more closely together,” Google and Viacom said in a joint statement.

Terms were not disclosed. No money changed hands, a person close to the matter said. The person was not authorized to discuss the settlement’s terms.

Grey and not so good

Originally posted 2009-10-14 13:17:22. Republished by Blog Post Promoter

Yesterday’s Wall Street Journal had an extensive article on about companies that “borrow” trademark equity, or purported equity, from others to build their brands, pushing the edges of fair use and perhaps then some.  Marty Schwimmer has some multimedia backup (ok, well, talking heads) on this case, too.

Trademark: The tort of choice for censors

Originally posted 2009-10-20 23:46:20. Republished by Blog Post Promoter

Same old, same old we’ve been talking about since forever (via Glenn):

A posting over on the Big Government blog details recent attempts by the American Federation of Teachers (AFT) to shut down the website at AFTExposed.com (which, as you might guess from the name, doesn’t have very nice things to say about the AFT). The AFT’s General Counsel has sent the operators of the offending website a cease-and-desist letter, demanding “immediate cessation of use of the domain AFTexposed.com or any other variant that includes the acronym AFT.” The asserted grounds: (a) trademark infringement (that use of the AFT acronym is “likely to cause confusion, or to cause mistake, or to deceive”), and (b) violation of ICANN’s Uniform Dispute Resolution Policy (on the grounds that the AFTexposed.com name is “confusingly similar” to AFT’s trademark and was “registered in bad faith.”).

It’s pretty much pure unadulterated nonsense, little more than an attempt by the AFT to silence a critical voice, and I hope that the AFTExposed.com folks don’t cave in to the pressure. The trademark claim is very, very weak; consumers are pretty stupid sometimes, but they are not nearly stupid enough to be confused into thinking that a site called “AFTexposed,” which has as [its] tagline prominently displayed at the top of the site “The website the AFT doesn’t want you to see,” is somehow affiliated with the AFT.

Boomerang_(PSF)Well forget about the tagline; it’s too late once you get to the site — there’s already been an incidence of the dreaded “initial interest confusion” by then!  But David Post is right:  In this case, the domain name itself negates any possibility of that, and you’ve got nothing but fair, fair use for a defense.

That won’t stop a wealthy plaintiff, though — and who’s wealthier these days than public employee unions? — from suing, however.  After all, there’s pretty much never fee-shifting in defendants’ direction under the Lanham Act, although the statute does provide for it (or for that matter for frivolous copyright claims)  But good luck on that.

So trademark infringement remains the legal claim of choice for those seeking to shut down smaller, poorer message opponents.  File yours today!

UPDATE:  Johnny may not be able to read, but the AFT knows how to interpret blog traffic logs.  They’ve backed down.

S&L v. Australian Gold: You, the Jury

Originally posted 2009-01-08 21:34:29. Republished by Blog Post Promoter

Its all about the coin.

It’s all about the coin.

Here’s S&L Vitamin’s Trial Brief for the trial scheduled for next week in the above-entitled cause.  (Or you can read it at the bottom of the post).  We pick a jury on Monday, and after a day “off” for stuff I don’t even want to mention, opening statements are Wednesday morning.

Oh, all right.  Here’s Australian Gold’s trial brief.  I’m sure our distinguished adversaries are at least as proud of this work product as we are of ours.

I will not comment on the prospect of this trial, of course, at least not at this juncture.

But others have, more or less. And now, you can too!

Oscarwatch.com a trademark infringement?

Originally posted 2010-03-23 15:38:08. Republished by Blog Post Promoter

The Academy of Motion Pictures is suing a website called Oscarwatch.com. Fair use anybody? The site’s owner, Sasha Stone, has been doing his homework:

I used to watch Oscar all the time

“I am not trying to exploit the Academy’s trademark to offer competing goods and services,” Oscarwatch.com’s Stone told [The Hollywood Reporter].
“Rather, I am offering commentary that directly addresses the Oscars awards, a topic of great interest to the general public, thanks largely to the efforts of the Academy itself. I believe that the use of (Oscarwatch) to describe commentary about the Oscars is that of fair use.”

I believe he’s right. But this may be one of those close cases in which the mark holder still has to act. And in California, the Academy’s chances aren’t terrible, because many of their judges are.

UPDATE:  More of the same, and a case that Oscar Madison would certainly appreciate!

UPDATE: From the Citizen Media Law Project:

The parties settled soon after the lawsuit was filed, and Stone changed the name of his site to “Awards Daily” and his domain name to “http://www.awardsdaily.com.”