Tag Archives: Overreaching

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?

Trademark on the Left Bank

Originally posted 2006-02-05 01:40:15. Republished by Blog Post Promoter

Interesting discussion, on one level or another, among non-specialists including Matthew Yglesias of a leftish stripe on the politics of trademark infringement at TPMCafe. They’re disappointed that Democrats are going along with the proposed changes to the federal dilution statute, and they should be. Yglesias links back to a column by Atrios, who says, “The original purpose of trademark law was to protect consumers from confusion, not to protect the sanctity of a brand.” Who’s said that before?

UPDATE:  Another point of view, via Instapundit.

Aw, shucks

We already covered the Designer Skin v. S&L Vitamins summary judgment decision, and linked to commentators Greg Beck, Bill Patry, Rebecca Tushnet, Eric Goldman and Jason Lee Miller.

But it’s positively nerve-wracking reading the commentary of someone like Evan Brown! 😉

Major League Baseball – SDNY Balks?

SoxA potentially troubling (from the teams’ point of view) thought from the Southern District of New York in a case brought by Major League Baseball against a company selling beanbags with team names, colors and logos on them, reported by the NY Law Journal (subscription required):

The Court finds that a genuine issue of fact exists as to whether MLB Clubs’ trade dress has achieved a secondary meaning in the marketplace. As such, summary judgment on MLBP’s Lanham Act claim is inappropriate.

Wow. In other words, are the logos and team colors of the Yankees, Mets, Red Sox and other billion-dollar busineses protectable as trademarks? Think of the possibilities.

Full decision here.

The color purple

Cadbury-PurpleCadbury is purple in the face over not being able to secure the wordlwide exclusive rights to the use of the color purple in association with the sale of chocolate — even as against an Australian company that’s been using the two together for almost a century:

Cadbury tells me it is “vigorously appealing” against a judgment over the use of purple. In a case that it has pursued for five years, Cadbury has tried and failed to stop Darrell Lea, an Australian chocolate manufacturer, from using the colour.

Despite the fact that Darrell Lea was established in 1927 and has been using purple for most of its existence, Cadbury insists that it has no right to the colour. Cadbury has registered one shade of purple in relation to block chocolate in tablet form in Britain but it has not been as successful elsewhere.

Purple, actually, may be the oldest legally-protected “trademark” color, of sorts. The color was, at certain times during ancient times and antiquity, permitted to be worn only by the nobility. To which, in the chocolate sense, Cadbury may or may not have a claim. I do like the stuff, and perhaps it is among the elite in the chocolate hierarchy. Certainly compared to virtually anything else the English make it is uniquely edible — but regal?

UPDATE:  Cadbury’s claim melts in its hands, not just in our mouths.

UPDATE II:  Settled, dismissed, whatever. It’s all over but the calories!  Via @IPThinkTank.

UPDATE III: Yes.  But no.  I mean yes.

More digital law

It’s the fingers again. By now you heard about the dispute about the “thumbs up” “trademark” claim being bandied with respect to Roger Ebert, the movie reviewer. A trademark in “thumbs up”? Yes, I was mighty skeptical. Now the Chicago Tribune interviews IP lawyer E. Leonard Rubin (e-ven his name says high-tech IP!) and he explains it all:

Q: So if Richard Roeper or his new semipermanent guest host, Robert Wilonsky, flashes a thumbs-up sign, Ebert could sue him?

A: In the opinion of intellectual property/entertainment lawyer E. Leonard Rubin, no. Ebert and Siskel trademarked the “thumbs up”/”thumbs down” catchphrases in relation to movies, and “Two Thumbs Up” has become a powerful identifier for the show as well as a potent marketing tool for the studios. But the gesture of raising or lowering thumbs to indicate approval or disapproval dates back to ancient Rome, so it’s not original and cannot be trademarked.

I agree with E. (I’d like to think someone of his stature wouldn’t use “trademark” as a verb and will ascribe that to some editor at the Trib coming back to the office after a long lunch across the street.) So what about the fuss we made a while ago about the Jay-Z / Diamond Dallas silly hand gesture dustup? Would the same reasoning apply?

It would — only the result might well be different, because (despite the sarcasm displayed at the time here) unlike the thumbs up / thumbs down gesture, the particular combination of joints at issue in the rapper-wrestler case seems relatively novel and, for its utter incomprehensibility, pleasantly arbitrary — as a good trademark should be.

Trademarks — and Copyrights — in the Public Interest?

South Brooklyn section of MTA Subway MapWired News reports:

Transit officials in New York and San Francisco have launched a copyright crackdown on a website offering free downloadable subway maps designed to be viewed on the iPod. . . .

More than 9,000 people downloaded the map, which was viewable on either an iPod or an iPod nano, before Bright received a Sept. 14 letter from Lester Freundlich, a senior associate counsel at New York’s Metropolitan Transit Authority, saying that Bright had infringed the MTA’s copyright and that he needed a license to post the map and to authorize others to download it.

Not very freundlich of Lester, was it?

“I removed it promptly,” said Bright, a design director at Nerve.com. “I’m very aware that they are copyright violations, but I’m not trying to make money or do anything malicious. I’m not in this to piss people off.”

Last week Bright received a similar cease-and-desist letter from officials with Bay Area Rapid Transit, or BART, demanding that Bright remove a map of the San Francisco rail system.

I blogged about this topic in general — the assertion of intellectual property rights in arguably public goods such as train-line symbols — in June. My conclusion then:

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.

In other words, if you get a C&D letter from the MTA, give me call, won’t you?

The issue here is not quite the same. It is narrower, and deals only with the copyright in the maps. But in a broader sense, it is the same: Should these public authorities, ostensibly in the business of helping people get around, be more interested in rent seeking than in … helping people get around?

I don’t think so.

UPDATE: Excellent legal analysis, as usual, by Patry.

BUT WAIT, THERE’S MORE:  How did the MTA’s ad department let this past the boys in legal?!

Hey, 19

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.”

Unlovely SPAM

Hormel won’t give up.  And neither will Spam Arrrest, LLC (which makes a great product I used for years). A press release from Spam Arrest reports:

Spam Arrest LLC, which provides the popular web service software to eliminate email spam, hopes to end its four year legal battle against Hormel next month. Spam Arrest is the only company ever, except Hormel Foods Corporation, to secure a trademark including the word “spam” recorded on the principal United States trademark register. For nearly four years, Spam Arrest has defended its trademark against Hormel’s lawsuit seeking to cancel the SPAM ARREST trademark registration….

Spam Arrest has incurred almost $500,000 defending its trademark rights. “We’ve spent years fighting for our trademark, while much larger companies have simply abandoned their trademark applications after threats from Hormel,” said Brian Cartmell, CEO of Spam Arrest. “Not one person confuses our anti-spam service with Hormel’s canned meat — the average American consumer is smarter than that.”

There you have it, canned and virtually inedible. Read More…

Best of 2009: Properly classified — there’s no “significant doubt”

US President Barack Obama gestures for the crowd to keep quiet about his visit to the O&H Danish Bakery to buy kringle pastries so that First Lady Michelle Obama wouldn't find out about the visit, during a town hall event on the economy at Racine Memorial Hall in Racine, Wisconsin, June 30, 2010. AFP PHOTO / Saul LOEB (Photo credit should read SAUL LOEB/AFP/Getty Images)

Photo: SAUL LOEB/AFP/Getty Images

CORY DOCTOROW: Obama administration: releasing details of secret copyright treaty endangers”national security.” Er, what?

Good question, Instapundit.  Click through — the original story is here, at Wired.  The reference is to the so-called Anti-Counterfeiting Trade Agreement, or ACTA.

But you can really see all you need to see by reading the letter from the Administration responding to a Freedom of Information Act request for disclosure of this information about a copyright treaty by stating that the documents the documents you seek are being withheld in full pursuant to 5 U.S.C. sec. 552(b)(1), which pertains to information that is properly classified in the interest of national security pursuant to Executive Order 12958.



Well, good to know they’re being properly withheld!

But can this truly be the case?

Here’s what that Clinton-era Executive Order says (in part) about what shall and shall not be deemed classified (emphases added): Read More…