LIKELIHOOD OF CONFUSION®

Originally posted 2006-07-30 11:16:39. Republished by Blog Post Promoter

Mack Reed puts his finger on it — almost — in the Online Journalism Review:

The Web has made unauthorized propagation of information — whether copyrighted or not — instantaneous and virtually irreversible.

Videos are uploaded, downloaded and re-uploaded under different authors’ names: YouTube users know this from having tried to find the “original” version of some videos, which have been found on sites other than YouTube and recopied several times by users and mashup artists who add their own comments or edits to the source material before YouTubing them.

Millions of bloggers routinely lift information from copyrighted news stories — nearly always with due credit — and repackage it under their own banners, basically aggregating and creating new news content (and ad-driven profit streams) from existing ones. The same goes for copyrighted news photos published to the Web by AP, Reuters and numerous newspaper web sites.

Two factors may be at work in the apparent paucity of copyright lawsuits stemming from such use:

1. since news web sites garner significant traffic from blog links pointing to them, they may be loath to poison the well, let alone alienate the audience by litigating.
2. bloggers get away with sometimes more-than-fair-use republication of copyrighted information because no news organization’s legal department has the resources to chase them.

A possible third reason: such suits won’t stand up in court.

In short, the copyright you secure before selling and posting news video to a news organization’s site, or a share site such as YouTube, may be worth far less in the long run than the paycheck you earn from its initial sale.

I figured he wouldn’t mind an extended excerpt, under the circumstances. But seriously, folks, I think he’s got it right, except maybe with respect to the case he’s actually commenting on, i.e., the lawsuit against YouTube. Why is that?

Well, why won’t most copyright infringement suits for Internet use of material he describes “stand up in court”? Read More…

Originally posted 2010-04-09 13:13:23. Republished by Blog Post Promoter

From Ryan Gile:  Is CUPCAKERY a generic term for a cupcake bakery?

At first, the word “cupcakery” seems somewhat suggestive–a unique play on the words cupcake and bakery. However, with the explosive growth of these specialty “cupcake” stores, several other “cupcakeries” have opened up in different parts of the country. Just a quick internet search revealed the following third parties using the word “cupcakery” to identify their cupcake store:

http://www.sibbyscupcakery.com/

http://www.acupcakery.com/

http://ourcupcakery.com/

And at least one company (with stores in St. Louis, MO and Knoxville, TN) is using the identical mark as The Cupcakery)

So would most consumers really associate the word “Cupcakery” with a single source–or more likely a merely descriptive term describing a cupcake bakery? . . .

While “cupcakery” may have been a unique word at one time, because The Cupcakery did not pursue trademark protection early (assuming that the company was the first one to use the phrase – a fact I have not verified), such oversight may have resulted in the word “cupcakery” joining the general lexicon as a word identifying a “cupcake bakery” rather than a word identifying a single source of goods and services.

Ryan’s made out a nice case for genericness.  But I think there’s still an argument for the term being protectible, at least in theory–there’s a lot more going on in the case than the genericness question, and you should read Ryan’s whole piece.  It is not usually the case that third party uses, in and of themselves, prove genericness.  A relatively new business that belatedly gets its act together and begins an IP enforcement program can, under some circumstances, recover its trademark, as long as it really is the senior user (and sometimes even if it’s not).

Overcoming such a problem may not be easy.  In the CUPCAKERY case, involving a former employee accused of violating all sorts of agreements and then opening up a competing business using the CUPCAKERY name, it may be easier than in other contexts.

Anyway, it’s a fitting dessert to the week, especially now that Passover is behind us!

Originally posted 2007-02-14 12:31:04. Republished by Blog Post Promoter

Instapundit.com asks,

IS YOUTUBE LOSING ITS SHEEN? “Some observers hoped when the subpoenas came to light that Google’s history of resisting US government subpoenas would lead to non-cooperation in this case. The moral high ground is clearly far smaller in this case, though.” Yes, this isn’t about national security, it’s about power for the entertainment industry. No moral high ground in resisting that.

Hm, what’s with the snark, exactly? What happened here? The link above is to Tech Crunch, which explains:

Three weeks after receiving a subpoena from the U.S. District Court in Northern California, YouTube has reportedly identified a user accused by 20th Century Fox Television of uploading episodes of the show 24 a week prior to their running on television. That user, named ECOTtotal, is also alleged to have uploaded 12 episodes of The Simpsons, some quite old. Apparently Google and YouTube were willing and able to identify the owner of the username ECOTtotal, acording to a report on InternetNews.com.Some observers hoped when the subpoenas came to light that Google’s history of resisting US government subpoenas would lead to non-cooperation in this case. The moral high ground is clearly far smaller in this case, though. YouTube has handed over user names before upon request prior to its acquisition.

I don’t think I understand Glenn’s “moral high ground” point at all. This is stealing. Read More…

Originally posted 2010-03-12 15:15:15. Republished by Blog Post Promoter

Here’s what I have been chirping about lately:

• RT @ArsLaw: Tenenbaum: $675K stat. dams absurd; I caused $21 in losses | Ok, even I don’t buy that math.
• RT @CopyrightLaw: Exclusive Rights: “11th Cir. finds medical forms lack sufficient originality; rejects Feist standard”
• RT @CopyrightLaw: Goldman: “Rare Ruling on Damages for Sending Bogus Copyright Takedown Notice–Lenz v. Universal”
• RT @internetcases RT @ernieattorney: Judge sides w/mom who used Prince cut in background of YouTube video /via @cyberlaw
• RT @overlawyered @petewarden: Anyone with $ can sue anyone with less $ and put him out of business | Pretty much.
• RT @smbayard: ABA Journal on recent PA decision refusing to unmask anonymous news site commenters - Nice props
• RT @InternetLaw: Court says Apple doesn’t own the letter ‘I’”

Yes, a big couple of weeks for copyright to followers of the profound @roncoleman 140-gauge stream–but that Apple decision this week does bring up the rear nicely on trademark news.  Either way, it’s good to hang around smart people, because contrary to popular belief to the contrary, it can make you look smart, too!

Have a great weekend!

Originally posted 2009-04-24 19:21:32. Republished by Blog Post Promoter

Michael Atkins is beside himself with intellectual-property-enforcement frustration about the use of an image of the Seattle Space Needle — a tall pointy building what they have there instead of skyscrapers — on the logo of some foreign-sport team called the Sounders:

Which of course brings me to trademark law. In particular, what’s up with the Sounders’ use of the Space Needle in its logo? As previously discussed, the Space Needle logo is a registered trademark owned by the Space Needle Corporation. The Space Needle Corporation owns two registered design marks (here and here). Just a few years ago, the company brought suit to enforce rights in its design marks against an onion ring maker that used an altered version of the Space Needle in a print ad (an onion ring replaced the Space Needle’s observation deck). Now it appears the company has licensed use of its design to the Sounders, doesn’t care about this use, or has stopped enforcing its rights.

Far be it from me to needle him over something like this, but I’m surprised Michael doesn’t sound out the possibility that The Space Needle Corporation doesn’t have any rights to license, care about or enforce in the image of its hamburger-on-stilts tower in the first place.

Buildings are not trademarks.  Registering two particular renderings of your building as a trademark doesn’t bootstrap the structure’s likeness into a trademark.  Neither does suing someone else and claiming it is one, unless you get a court to agree with you.

Which it shouldn’t!

Originally posted 2007-07-27 15:42:20. Republished by Blog Post Promoter

Who but the ultimate trademark pig the NFL would make unwilling third parties endorse their sponsors?

Makes me want to throw a SUPER BOWL PARTY!

Originally posted 2008-07-21 13:30:08. Republished by Blog Post Promoter

Mike Masnick on a key question:  Whether copyright fair use, no matter how obvious, may be ignored by a would-be copyright owner when sending a DMCA takedown notice that but for the fair use defense is “reasonable”:

The DMCA has provisions for a copyright holder to assert ownership, at which point the service provider needs to takedown the content. Whoever posted the content can protest that the content was legally posted — which is exactly what happened in this case. However, the DMCA also says that filing a false DMCA notice opens one up to damages from those whose content was taken down. This was in an effort to discourage false DMCA notices. This provision was used last year against Viacom for its false takedowns on satirical clips of the Colbert Report.

The question then, is whether or not filing a takedown notice on content that is used in a way consistent with “fair use” is a misuse or not. Universal Music’s claim is that it is not reasonable for the copyright holder to take fair use into consideration before sending a takedown notice. At a first pass, it sounds like the judge agrees.

As ridiculous as this whole situation is, the judge and Universal Music may be correct under the existing law.

A corrollary:  Is fair use grounds for a DMCA recipient to disregard a DMCA takedown notice?  Hat tip to aggregator Tech Verdict.

UPDATE from Carolyn Wright.

Originally posted 2009-06-19 08:07:21. Republished by Blog Post Promoter

There ought to be clones

President Obama is suffering from the right-of-publicity blues again.  And now maybe we understand why he wants an intellectual property anti-counterfeiting lawyer on the Supreme Court — this could rise to the level of an international incident already, Jack!

A blog called Cloned In China explains it all in (ironic as it is to say) inimitable fashion:

We all know Obama uses Blackberry phone, and right now the China shanzhai phone maker haff-comm is using this information to promote their new shanzhai phone blockberry 9500 and has Obama’s figure appeared in this phone’s poster with a slogan “Obama have Blackberry, I have blockberry”. sounds pretty funny, but we don’t know whether Obama have got paid as the “spokesman”.  Probably not, after all blockberry has a little difference with Blackberry.

Yeah, probably not.  Have got paid, that is.

This is the first time I have really felt as if I were publishing spam as a post.  Which is not fair.  I think Cloned in China’s English is more than a few notches above my Mandarin.  But I just keep wanted to see what they charge for all the highest quality online prescriptions… direct to my door!

And, yeah, “BlackBerry” (RIM, that is) probably does indeed have a little “difference” with “BlockBerry” (“Haff-Comm,” that is).

So to speak.

Originally posted 2007-03-31 23:01:50. Republished by Blog Post Promoter

If you believe in the divinity of the Angel Moroni, that is. Because his image is a trademark of the Mormons, and they’re pretty serious about protecting it.

And here you thought angels protected people! Very latter-day of them, wouldn’t you say?

UPDATE:  Much more from Marty.

Originally posted 2009-02-03 20:30:18. Republished by Blog Post Promoter

First, this vintage LOC item:

Fred von Lohmann of the EFF calls out YouTube:

Fair use has always been at risk on YouTube, thanks to abusive DMCA takedown notices sent by copyright owners (sometimes carelessly, sometimes not). But in the past several weeks, two things have made things much worse for those who want to sing a song, post an a capella tribute, or set machinima to music.

First, it appears that more and more copyright owners are using YouTube’s automated copyright filtering system (known as the Content ID system), which tests all videos looking for a “match” with “fingerprints” provided by copyright owners.

Second, thanks to a recent spat between YouTube and Warner Music Group, YouTube’s Content ID tool is now being used to censor lots and lots of videos (previously, Warner just silently shared in the advertising revenue for the videos that included a “match” to its music).

This is a somewhat unexpected twist in the copyright crackup.   Far from slowing the crackup down, this action by Google in the service of the barons of copyright is a harbinger of the End Days.

And not just for copyright.  Google’s old (as in five years ago) image as the funky un-company, the Apple of the Internet, is pretty much history.  It has quickly become, instead, Microsoft.

That’s not good for Google.  And while, like Microsoft, Google isn’t going anywhere too fast, it’s also, like Gatesland, pretty clearly on the wrong side of history.

Now, the very-today update from Mike Masnick:

In the past couple of days I’ve received emails from two separate people who found that public domain material they put on YouTube was taken down to companies claiming ownership of the work. In both cases, the stories seem pretty ridiculous, and for all the complaining that copyright holders do about how awful it is that they need to “police” their own content on YouTube, it seems like those who are getting hurt are people who are putting up public domain material and getting shut down — often with little recourse. . . .

You’ve got to read the whole thing, which is a mess, but which Mike is all over.  It’s truly getting ridiculous out there, however — this is the promised big copyright crackup, all right.

I’ve made a career here of tut-tutting the impolitic and brand-negating utterance of baseless cease and desist and other threatening letters based on IP infringement, including this recent post about the Louis Vuitton / University of Pennsylvania dustup.  That situation demonstrated that only lawyers who neglect to think clearly about how their actions will affect their clients’ brands will line up and march into oncoming fire, expecting to achieve victory in an IP-guerilla war solely by employment of shock and awe,  By doing so, they often achieve the very opposite of what they think they’re doing by sending out, well, dumb threats.

That phenomenon, of course, is not restricted to IP law, where the purported purpose is brand protection and where such miscalculations are only the most ironic — but not necessarily the most moronic, as I explained in this post, which in turn linked to this discussion on Patterico’s Pontifications about how to dissect, and respond to, dumb threats.

And this version of the Streisand Effect is not limited to lawyers.  The threatener or the threatened can achieve it without a single dollar in fees being expended (*sniff*).  Nope, a sharp, motivated and courageous recipient of a dumb legal threat can take care of business pretty effectively himself (if need be), and you can be a dumb threatener without a JD.  So, speaking of pontiffs, I couldn’t but link to this post, to which I linked via Twitter yesterday, by Popehat’s Ken White, my friend, colleague both legal and bloggy, and (thanks to Patterico, in fact!) co-counsel, about a chap who has done just that:

When Phil Buckley (who blogs at 1918.com) and his wife Kristen Buckley received a certified letter from a mover, perhaps they allowed themselves to hope, for a fleeting moment, that the envelope contained a check, or an apology for substandard service. It did not. It contained a very stupid and amateurish legal threat.

See, Kristen Buckley’s parents had used a company called Casey Moversto move, and Kristen posted a negative review on Yelp on their behalf. In the context of the internet, the review was rather mild.

But Matthew Overstreet, “Sales Manager” of Casey Movers, thought that the review was unacceptable. Here’s what he said in his threat letter,which you can see in Phil Buckley’s epic post about the matter . . .

Some people would have been intimidated into removing the Yelp review. Lawsuit threats — even marginally literate ones — can be scary, and nobody wants to have to interact with lawyers if they can avoid it. But Phil and Kristen Buckely aren’t so easily threatened. Phil Buckley launched a masterful investigation of the web presence of Casey Movers and Matt Overstreet. That investigation produced evidence suggesting that Casey Movers was publishing positive notes from their customers — together with their phone numbers and email addresses — on the web without their permission. Phil also dug up evidence that raises, at least, serious questions about whether Casey Movers has been faking positive reviews online. Then The Consumerist picked it up, then I did.

Then I did.

Brand is as brand does, and, as Ken’s post says in its title, stupid legal threats are an excellent way to destroy your brand.  It’s worse when your own lawyer does this to you, of course, because you paid him to do the opposite–well worse for you; the lawyer is probably going to get paid.  But there is something about dumb self-help that is special in its own right, too.

I mitre chosen a different name for the Popehat blog myself, but though he begs off heavy lifting on trademark law Ken White, whose practice focuses on criminal law, is more than qualified to dice and slice phony-baloney faux-legal bluster.  He makes a couple of good points here, not so far off from much of what was raised in the comments in that first Patterico link above, and worth repeating.  Ken notes the throat-clearing “It’s been [brought] to my attention” business in the nastygram in question by one Overstreet.  This is a device that most of us do use rather than telling the recipient straight out something that he obviously already knows (“Hey, you wrote this thing, yo!”), but, still and all:

Maybe he’s just one of those people who thinks that scary letters have to say “it has been brought to my attention that” or “please be advised that” or “please stand by whilst I demonstrate that anyone with obstructed access to a typewriter can make a legal threat.” . . .

[Moreover], remember my mantra: vagueness in a legal demand is the hallmark of frivolous legal thuggery. Mr. Overstreet does not specify exactly what part of the Yelp review is false. Bogus legal threats rarely do. He intimatesthat Casey Movers is being criticized for following “federal moving procedures,” but does not explain. If you look at Ms. Buckley’s review, and his response, you’ll see that she complained of the amount her parents were offered for compensation of damages, and Mr. Overstreet’s response explaining insurance rates — but you won’t see anything Mr. Overstreet has called out as a specific false statement of fact.

Great points for sniffing out flimsy fol-de-rol:  Affected legalese followed by lots of heat but little light about the supposed falsehood at hand.  These are common ingredients in baseless threat letters, and especially with respect to people trying to get unfavorable reviews off the Internet by claiming defamation.

That is, these days, seldom a good idea, ya know?  Because these days people have their own printing presses, for worse or for better.  Let it come to your attention.

UPDATE:  I couldn’t resist uploading this, from my own case files.  I was a younger man then, but, as they say, still:  I call it “Cease and desist: An unfinished tragedy in four acts.“

Originally posted 2008-01-14 11:05:57. Republished by Blog Post Promoter

Ara Rubyan sends along this link to Boing Boing:

Josh sez, “The folks at BMC (Black Mustang Club) automotive forum wanted to put together a calendar featuring members’ cars, and print it through CafePress. Photos were submitted, the layout was set, and… CafePress notifies the site admin that pictures of Ford cars cannot be printed. Not just Ford logos, not just Mustang logos, the car — as a whole — is a Ford trademark and its image can’t be reproduced without permission. So even though Ford has a lineup of enthusiasts who want to show off their Ford cars, the company is bent on alienating them. ‘Them’ being some of the most loyal owners and future buyers that they have. Or rather, that they had, because many have decided that they will not be doing business with Ford again if this matter isn’t resolved.”

We’ve touched on the issue of whether toy models are infringements of the products they depict, even granting that the trademarks apply to the products themselves. In the case of a Ford car, it seems pretty clear that they do; in the case of a railroad locomotive manufactured by a third party but bearing the logo of a given line, it seems a dubious proposition indeed.

But Big IP is, after all, insatiable… and many big companies, not necessarily Big IP, but in struggling businesses such as, oh, automobile manufacturing and railroads, are looking at their dubious core businesses and deciding it’s time to “exploit the IP portfolio” to buy time till the next bailout or merger — and there you have it.

Fun in our age is only available via a written license, with royalties, reversions and attorneys’ fees upon breach.

UPDATE:  Much ado about nothing, or a climb-down by Ford?