Tag Archives: Overreaching

Major League Baseball – SDNY Balks?

Originally posted 2005-11-28 11:48:08. Republished by Blog Post Promoter

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

Originally posted 2008-04-14 08:27:01. Republished by Blog Post Promoter

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

Originally posted 2007-08-31 00:28:28. Republished by Blog Post Promoter

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?

Originally posted 2005-09-26 18:31:09. Republished by Blog Post Promoter

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

Originally posted 2008-02-02 20:27:33. 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.”

Unlovely SPAM

Originally posted 2007-01-08 22:45:17. Republished by Blog Post Promoter

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”

Originally posted 2009-03-14 23:59:47. Republished by Blog Post Promoter

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.

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

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…

Best of 2007: Trademark rights in interdigitization

Originally posted 2007-05-15 21:32:04. Republished by Blog Post Promoter

Praying Hands

Thou, Rock

Nick Daly drops me a note to the effect that one Jay-Z, gazillionaire rhyming scatologist, has been sued by a professional perspirer and leaping stage goon called Diamond Dallas Page — ach! my kingdom for a stage name! — for the former’s “Roc-A-Fella Hand Gesture,” also known as the “Diamond Cutter” hand gesture. Evidently Mr. Z uses the former, Mr. Page the latter of these nicknames for the clever manipulation of the human carpal, metacarpal and phalange bones in a distinctive diamond-shaped pattern in association with the services provided by the respective performers.

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

Now, Roc-a-Fella is a record company specializing in rhythmic spoken-word obscenity-laced performance art which generates (1) some light, if you will, allowing one to peer into the dimmer recesses of the heart of urban America’s cultural darkness profundity, plus (2) much heat as regards the controversial word choice typically employed by its practitioners as well as the ribald subject matter of the works, in addition to (3) immense dump trucks full of cash.

You may perhaps, in a merry mood, “Rock a fellow” — “rock” him, in this sense meaning to entertain him or absorb his attentions by use of contemporary upbeat rock and roll music or its derivaties — or as we northeastern urbanites might say, you might rock “a fella”; hence the name of the company. And it is hard not to suspect an allusion, based both on ironic association considering the countercultural nature of the works as well as with vast hordes of currency, to the name Rockefeller, the billionaire dynasty that, as is well known, controls everything, and whose name is arguably a “trademark” for immense wealth and power.  (UPDATE:  Jay-Z, in contrast, evidently cannot quite as readily as the Old Man could rock every fella as he might like to.) Read More…

Best of 2005: New York’s MTA Has an IP Obsession

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

If You See Something, Say Something
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.

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

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.

YouTube, the DMCA and politics — again

Originally posted 2008-10-15 21:03:04. Republished by Blog Post Promoter

Slashdot reports:

It appears that CBS and Fox have submitted DMCA takedown notices to YouTube for videos from the McCain campaign. The campaign is now complaining about YouTube’s DMCA policy making it too easy for copyright holders to remove fair-use videos. I hope they pursue this by addressing flaws in the DMCA.

The McCain complaint is based on the fact that YouTube will wait at least 10 and up to 14 days before re-posting a video, upon the posting party’s compliance with the counter-notice procedure under the DMCA — even where, as appears to be the case here, the DMCA complaints are not meritorious.  That’s a long period for a political campaign to wait between now and election day, if in fact you believe political videos on YouTube actually matter.  The campaign is asking YouTube to establish special procedures for videos posted by official political campaigns.

Maybe.  This would be a more compelling point if it appeared that the DMCA were not being utilized evenhandedly by these MSM outfits.  Is there any evidence to that effect, such as outtakes from CBS and Fox (yeah, after all — we’re talking about Fox here) utilized by Obama people and not resulting in DMCA notices?

We’d figured YouTube would get back to them in, like, 10-14 days.  But we were wrong — it didn’t take 10-14 days!  YouTube slapped down the McCain campaign’s request almost immediately!  Declan McCullough:

YouTube has rejected a request from John McCain’s presidential campaign for a legal review of political videos that are the subject of deletion requests.

The Google-owned company said Tuesday evening in a response to McCain’s organization that it could not give campaigns special treatment and that it was “not in a position to verify” whether infringement complaints made under the Digital Millennium Copyright Act were legitimate or not.

“Not in a position to verify”?  Lame.  Here’s coverage from TechDirt, too (via Andie).

UPDATE:  Glenn Reynolds:  “But it’s also amusing to see McCain suddenly notice the dangers of politically-throttled speech.”  Yes, true!

UPDATE:  A good analysis of the trademark issues from Paul Alan Levy, via Overlawyered.

War Is Peace; Freedom is Slavery; Ignorance is Strength

Originally posted 2007-03-28 19:08:24. 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.

“Criticizing A Trademark Is Not Trademark Infringement”

Originally posted 2007-09-29 21:25:32. Republished by Blog Post Promoter

It’s free speech. This is a big step forward:

In a recent example of just how bizarre [trademark overreaching] has become, there was apparently a dispute over the trademark of the word “Freecycle” that’s been used by groups who promote reusing stuff that would otherwise be thrown out. There was an attempt to [register a] trademark [utilizing] the term, but not everyone was happy about it. One guy put up a website protesting the idea to [register] the term, and he got sued for trademark violations in using the mark in his criticism. Clearly, that’s way beyond the consumer protection purposes of trademark — but a district court actually agreed with the trademark holders, saying that the guy violated trademark law in “disparaging” the trademark. Luckily, the [9]th Circuit appeals court has now overturned the ruling, noting that there is little to no chance of confusion here over the mark. More importantly, the court pointed out that there is no such law against “disparaging” a trademark. That’s a good thing, too, or pretty much all criticism would be outlawed.

Thank you, Ninth Circuit. What’s astonishing, depressing and pathetic is that the mark owners won at the trial level. That’s the level at which small- and medium-sized business and individuals get slaughtered every day.

More here on this story.