Tag Archives: Overreaching

Tail wagging dog?

Originally posted 2010-10-14 21:56:02. Republished by Blog Post Promoter

Alienware-Logo-15Or maybe not. Evan Brown reports about a lawsuit by a high-end computer manufacturer, Alienware, over one of those “free laptop” promotions that it claims mostly leans on its brand name:

According to Alienware, after accepting the offer, users must purchase a specified amount of goods from various other sites. And this obligation is not clearly communicated, but is “presented to the consumer, if at all, only after he or she expends significant time and effort in responding to inquiries and navigating the multiple prompts.” . . .

Yes, and those young women who instant-message you from Nigeria really are living alone with their mothers and looking for a nice single man and his bank account number solely to wire in some pin money. Evan wisely asks whether this is really trademark infringement at all, and not fair use or some other defense such as the first use doctrine, and notes:

And Alienware may have anticipated this defense, alleging that it’s only “Alienware” serving as the source identifier for the offer, and “[t]here is no other recognizable or identifiable indication of source.” The defendant is an entity called “Online Gift Rewards.” Alienware claims that the designation is “likely to be perceived as a generic description of the offering rather than a source indicator.”

You know, this is not a half-bad argument. And this demonstrates why our law professors always said, “Hard cases make bad law.” These sorts of “trademark infringement” claims that only lightly implicate consumer confusion — they really are offering an Alienware machine — but are really attempts to get at some other black act, or grey act, are making copyright and trademark the all-round would-be enforcers of every sort of conceived and actual business offense. Some judges get it; some don’t.

This particular case — the complaint, courtesy of Evan, is here — raises an interesting issue in terms of how the prominent use of the desired brand name in the overall marketing campaign, along with a very generic description of the seller, could lead to confusion as to source (i.e., of the offer) or sponsorship. That would be fine with LIKELIHOOD OF CONFUSION® if that kind of analysis were reserved for allegedly close cases such as this, and not applied to retail sellers (typically online) of trademark-protected goods that are not “authorized” by the mark owner. (Yes, I am “positionally” biased.)

But in the midst of numerous decisions granting plenipotentiary powers over markets and marketing to anyone with a trademark registration, this could be just that hard case that could firm up an already troubling legal trend — and then some. But, hey, even trademark owners have rights!

Libel lives; ethics, too

Originally posted 2009-11-17 12:57:34. Republished by Blog Post Promoter

No “free speech absolutist” I, I like defamation as a cause of action when you can prove its elements, and I’m glad to see it hasn’t been completely eliminated by judges who raise the bar plaintiffs must overcome to impossible heights on imagined constitutional grounds. Maybe it helps if the plaintiff himself is a judge. Well, that works for me, too, as long as the next guy can take advantage of the precedent, and the climate, that an unaccustomed degree of actual responsibility for what you write and publish is imposed, as in days of old. Whether offline (if there is really still such a thing, or if it matters) or online.

As the link indicates, however, that doesn’t mean that a plaintiff with a meritorious claim is entitled to violate ethics rules — especially if he’s a judge. I’m “with that,” too. Evidently, after getting his jury verdict for $2M against the Boston Herald, Massachusetts Superior Court Judge Ernest Murphy allegedly wrote the paper a letter demanding a substantial amount more “or else.” One letter was supposedly written on court stationery — very bad.

This is only the filing of charges, not a determination of wrongdoing. I mean, I’d better be careful what I say. This guy does sue people. And win. Hat tip to Overlawyered.

Hey, 19

Originally posted 2015-03-17 13:36:59. Republished by Blog Post Promoter

product-19.jpgMore on the dumb trademark-abuse story of the season (we’ve dealt with the SUPER BOWL and trademark overkill here and here already). Now there’s this SUPERcilious beaut [link to 2008 story is gone — RDC]:

After the Lakers won two straight NBA titles in the late-80’s, their coach Pat Riley trademarked the phrase “three-peat” so he could cash in on merchandising associated with their third straight crown. The Pistons took them out in the Finals, though, and Riles had to wait for the Bulls to achieve the feat before seeing any return on his craftiness.

The Patriots spit on that history. The New York Post reports this morning that the team has filed paperwork to patent trademark the phrases “19-0” and “19-0 Perfect Season” in advance of this Sunday’s Super Bowl matchup with the New York Giants. And, lest you think they waited until they were in the title tilt before moving forward, the team actually filed the applications three days before the AFC Championship game was played. The Pats say that the move is strictly business and not motivated by arrogance.

Nor by the remotest understanding trademark law. We’ve already dealt with the sorry concept of seeking registration of free-floating catchphrases and similar nonsense. Hat tip to Nick Daly, who writes, “I was watching NY1 this morning and Pat Kiernan covered this story, saying “if they can trademark a number, then I want 5.” The number “5,” or five numbers? After all, if you can own the trademark to any you shouldn’t have a limit. We’re not running out of them or anything — unless you including running out of “fives,” 19’s or, perhaps, googols.

UPDATE:  Read and enjoy this law review article:  “OPPORTUNISTIC TRADEMARKING [sic] OF SLOGANS: IT’S NO CLOWN ISSUE, BRO.”

Large game

Originally posted 2008-02-01 14:57:39. Republished by Blog Post Promoter

Forbes chimes in on the NFL’s heavy-handed IP campaign, and how much more this year has looked like flag football, or maybe “touch”:

nfl-logoClearly, brand owners need to be proactive to protect their intellectual property rights, which are enormously valuable assets and can be threatened by piracy and unauthorized third-party uses. And clearly the NFL has taken this mandate to heart. But its aggressive tactics raise the question: When is a global brand owner overstepping the line of reasonable enforcement? The NFL found its tipping point when it applied to register “The Big Game” as a trademark. . . .

Not only did the NFL blink by withdrawing its applications, but the league apparently hasn’t attempted to prevent any current promotions from referring to “The Big Game” either. A current Radio Shack promotion encourages consumers to “make The Big Game even bigger” by purchasing high-definition TV accessories, and one of the national pizza chains asks viewers to participate in a text messaging contest “when the Big Game takes place in Phoenix on Sunday.”

Naturally there is a flip side to this coin. Advertisers still must be careful not to skate over the edge and force a brand manager’s legal hand. In 1999, a judge sided with the NFL in a dispute over Coors’ use of the phrase “the official beer of NFL players.” Coors’ use had been based on its partnership with National Football League Players Incorporated, the marketing arm of the NFL players’ union. Coors was ordered to remove the offending phrase from its advertising.

The lesson at the end of the day is that while protecting a brand from infringement and dilution is always mission-critical, you can go too far. The NFL has learned that, and so should other global brand executives.

Couldn’t have said it better myself (though “better” and “earlier” are different things). SUPER BOWL-style helmet tip to Jeff Richardson.

Copyright law is hard

Originally posted 2010-01-28 17:52:49. Republished by Blog Post Promoter

But it’s hard to have sympathy for the MPAA about its being accused of infringement, since its insane shotgun appraoch to enforcement is so just plain bad. Now as Boing Boing says, the movies people are ripping off other folks’ shareware. As Cory Doctorow (via Insty) says:

Copyright law is hard. It used to only govern relations between giant industrial players. Copyright didn’t regulate reading an interesting tidbit from the newspaper for a friend. It didn’t regulate watching movies. But now, sharing a newspaper article with a friend (by blogging it) involves copying, and so triggers copyright. Now watching a movie (by downloading it) involves copying, so it triggers copyright. The rules that are supposed to be interpreted by lawyers at Fortune 100 companies now apply to every single kid working on a project for her class’s website.

This is like having to file with the SEC every time you loan a buddy $5 for lunch.

Even the MPAA and its member companies can’t avoid violating copyright. The MPAA’s own CEO personally ripped off Kirby Dick, pirating his film “This Film is Not Yet Rated” using the MPAA’s duplicating facilities. The studios regularly hose writers, painters, composers and performers, nicking their creative labor without compensation, and sneeringly invite them to sue if they don’t like it. Even the web-development departments get in on the act.

Is it any wonder that everyone with a computer is practically guaranteed to be a copyright criminal?

I can’t say I agree with this analysis — copyright has been relevant to the whole world for a long time, and there are many ways to make fair use of copyrighted material that do not infringe.  But is it virtually inevitable that almost all of us are at least copyright scofflaws, or worse, under the present regime?  Yes.  Something is going to have to give.

The ugly side of branding

Originally posted 2013-02-06 13:58:13. 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!

DMCA days

Originally posted 2008-07-21 21:27:12. 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.

Dear Linus: Trademarks are not Security Blankets (UPDATED!)

Originally posted 2011-08-16 12:34:57. Republished by Blog Post Promoter

Dana Blankenhorn understands how trademark law works. Evidently, Linus Torvald’s lawyers don’t. And if Dana’s wrong and Linus is right, why, that will be an interesting new chapter in the IP rent-grab-a-thon: Open source trademarks, where quality control (the sine qua non of trademark licensing) is, to say the least, besides the point.

UPDATED:  Luis Villa writes, in the comments, regarding this post, originally posted August 24, 2005:

Those articles are more than four years old now, Ron, and the policy has proven fairly robust- as far as I know there have been no Linux(tm)-related trademark lawsuits since the policy was put in place, and all major Linux vendors support the policy. (That said, licensing is now free, rather than having a nearly de minimis cost, as it has been folded into the work of the Linux Foundation.)  (Read the rest..)

MTA’s way or the highway

Originally posted 2009-09-02 16:31:48. Republished by Blog Post Promoter

I’ve been watching these guys at the MTA and their IP enforcement program for a while now.  Once was for a client, who, regrettably, didn’t want to fight.

  • I first picked up on this over four years ago, when I wrote,

The New York Times reported (yes, reg. req.) last week that New York’s Metropolitan Transit Authority is scrambling to enforce trademark rights in its wide array of iconography, including the famous alphanumeric train symbols known to all New Yorkers. . . .

Still and all, there is an interesting trademark policy issue in here somewhere. It’s one thing to say that services aren’t free and that even when, as in the case of the MTA, they succesfully address significant externalities, their costs should not be unduly disconnected from users. But it’s another thing to say that, however revenue-starved, a public institution (in the broad sense of the word) such as the MTA should restrict the public, much less the bloggy, enjoyment of a public iconography such as the train number symbols and the image of the classic subway token.

  • A few months later I reported on a “crackdown” by the MTA on unauthorized distribution of copyright-protected maps of the subway, and cited Bill Patry, who said, in a similar vein:

There is no statutory bar to protection for original subway maps, therefore. There should, though, be a common sense bar but that, like common decency, is apparently lacking.

  • Later in 2005 I saw the MTA’s overreaching finally exceed the breaking point, when it tried to register trademark rights in this original phrase (they were succesful, too).If you see something say something

 

What, really, is the point?  It’s just your (my) tax money at work.

  • In 2006 I noted a story reporting that — unlike a lot of other copyright, trademark and right-of-publicity owners who have not made a peep — the MTA made those masters of confusion, “Jews for Jesus,” stop using the transit symbols in their underground evangelizing, though in reality, they probably didn’t have to.
  • Then, most recently, I “covered” an item — involving official New York City family planning devices bearing a “subway theme,” regarding which I suggested, somewhat tongue in

cheek, that this would seem to undermine any secondary meaning connecting the subway route symbols and subway routes at all.

This suddenly came to my attention again, when, three weeks ago, the following comment appeared on that two year old post: Read More…

The seven habits of highly annoying lawyers

Or, perhaps, the companies that hire them.  Let’s see if we can find all seven in this highly effective — certainly highly earnest! — item from Mark Malek at the Tactical IP blog.

But first, while I haven’t looked into the facts here, but this item made me wonder:  Can we find the Seven Habits of Highly Annoying Lawyers in the typical overreaching cease-and-desist letter story?  I would say so:

  • Covey Habit 1: Be Proactive
    • Lawyer Habit 1:  Be a Prostitute
  • Covey Habit 2: Begin with the End in Mind
    • Lawyer Habit 2:  Begin with the Fee in Mind
  • Covey Habit 3: Put First Things First
    • Lawyer Habit 3:  Shop for the Right Jurisdiction First
  • Covey Habit 4: Think Win-Win
    • Lawyer Habit 4:  Think Win-Bankrupt Them
  • Covey Habit 5: Seek First to Understand, then to Be Understood
    • Lawyer Habit 5:  Seek First to Understand What You Can Get Away With, then Make Your Threat Understood
  • Covey Habit 6: Synergize
    • Lawyer Habit 6:  Sin
  • Covey Habit 7: Sharpen the Saw
    • Lawyer Habit 6:  Sharpen the Teeth

I’m feeling more effective already!  Okay, now to Mark’s probably unrelated, but highly enthusiastic — not to say excessively perky — offering about the Covey thing.

I just read a story on Tech Dirt regarding the publishers of the very famous book “Seven Habits of Highly Effective People” and it really hit home for me.  More on why in a bit.

Apparently, Franklin Covey, the publisher of the “Seven Habits” series of books has sent out a cease and desist (C&D) notice to Shlock Mercenary, an online webcomic.  Some more information about the C&D notice that Shlock Mercenary received can be found here.  Shlock Mercenary had been publishing an online webcomic “The Seven Habits of Highly Effective Pirates” for years, and just got on Franklin Covey’s radar.  From the sound of the C&D notice, Franklin Covey seems to assert that any use of the number “7” with “habit” is a violation of their trademark. . . .

One of tools that I used to teach the Junior Achievement class to my 10th graders was a video that outlined the Seven Habits of Highly Effective Teens.  I was impressed that everyone in my class had already read the book, and many of them took the lessons to heart.

I understand why, at times, sending out C&D notices may sometimes be warranted, but this didn’t seem like one of those times.  Then again, I do not have all the facts, so I do not want to sound judgmental….too late?  My point is that I think Franklin Covey should take this as an opportunity to teach.  One of the “habits” that is taught by the series is “think win-win.”  What if you start out thinking win-win, but it just doesn’t happen?  I guess that is what litigation is about.

Yes, and litigation is anything but win-win.  Right?  Well, check the box — what do you think?