Originally posted 2009-06-09 12:37:25. Republished by Blog Post Promoter
Now I have a chance!
And do the unhappy Indians have a chance? They think they do.
Originally posted 2009-06-09 12:37:25. Republished by Blog Post Promoter
Now I have a chance!
And do the unhappy Indians have a chance? They think they do.
Originally posted 2008-11-13 12:51:07. Republished by Blog Post Promoter
We reported on Lego’s overreaching years ago here and here. They tried to use trademark rights as a way to protect the design of their toy and avoid competition. But that is not what trademarks are, much less what they are for. And now, barring a successful appeal, a European court has ruled that the shape of a Lego brick is simply not a trademark:
Lego, the biggest toymaker in Europe, lost a European Union court decision Wednesday over trademark rights for the shape of its famous toy bricks.
The European Court of First Instance in Luxembourg rejected Lego’s challenge to a 2006 EU trademark agency decision.
Lego had argued that the knobs on top of its bricks made them “highly distinctive” and eligible for a trademark. The agency ruled the toys could not be protected because their shape served a technical (functional) purpose.
The two rows of studs on top of Lego’s toy bricks perform a “utilitarian function” and are not “for identification purposes in the trademark sense,” according to the trademark agency, which is based in Alicante, Spain. . . .
EU trademark law “precludes registration of any shape” that is “sufficient to obtain the intended technical result,” the court said. This is the law “even if that result can be achieved by other shapes.”
Originally posted 2010-12-15 08:00:28. Republished by Blog Post Promoter
[stextbox id="info"]The last couple of weeks of the year or so I always re-post, with typical humility, the “Best of 2010.” I arrange it in a sort of month-by-month recapitulation. It’s like having your whole life passing before your eyes right before you die, only you aren’t going to die. Yet.
This year is no different. But it’s better, see? Because I’m going to start even earlier! I’ll still do the month-by-month, but not until starting next week, see? This week what I’ll do to avoid having to write new posts is … re-run some other ones! In no special order. Ones I like. Great ones. Best ones. Well, ones with a lot of words and pictures that took so much work to put together in the first place that maybe if someone reads them this time I’ll feel a little better about it.
On the merits, this post full of words and pictures (and captions on the pictures — do you …. people … pay no attention at all?!) should have caused a societal sensation when it was first published on May 4, 2010. Inexplicably, it didn’t. This is your second chance, society. [/stextbox]
Whatever the criticisms might be to the doctrine of Initial Interest Confusion, including those detailed by our friends Ron Coleman, Marty Schwimmer, and Eric Goldman, in the context of keyword advertising, the road-side restaurant sign shown [at left] definitely is “the real thing” for purposes of trademark initial interest confusion, in more ways than one:
It does depict the Coca-Cola brand, in all its glory, after all, so It’s The Real Thing, by definition.
And, unlike the very hypothetical scenario relied upon in the Wolf Appliance case, the above drive-in restaurant signage is real world and in current use, designed to attract attention, and has been for years, in fact, well after the business responsible for the sign dropped Coca-Cola for Pepsi. That’s right, “no Coke, Pepsi.” To twist Sean Penn’s words in I Am Sam, Wagner’s change was a “very bad choice,” at least in my humble opinion of taste.
Yeah, me too. I used to think I liked Pepsi better. Crazy! It’s one more reason Steve and I are likethis. More:
Last, it certainly is a good example of the Initial Interest Confusion doctrine at work.
Uh oh. Like the old “Coke brings your ancestors back from the dead” story, I’m afraid this sincere run at resuscitating initial interest confusion is a grave error. For now Steve would take us from the brand-laden anecdote and the cultural mix-and-match moment to — as if he were a judge in a Lanham Act case! (some day, I’m sure!) — slapping some poor sap with legal liability over what’s probably just laziness, business logic or a little bit of both. Here’s his real-life tale of interest, initially and heartbreakingly confused:
Minneapolis drivers on Highway 81 pull off the road for a great cheeseburger and a refreshing Coca-Cola, or in my case, Diet Coke. Only to find that there is no Diet Coke, or any Coca-Cola products for that matter, only Pepsi products. Drivers likely aren’t confused at the point of purchase, however, since the menu and interior soda fountain signage refer to Pepsi not Coke. Nevertheless, the exterior sign no doubt has steered more than a few thirsty types off the road over the years to end up purchasing Pepsi products, not Coca-Cola products.
Not me, however, I’m not even initially confused any longer, just annoyed with the change, and deciding with each visit, well in advance, to enjoy a chocolate malt instead of a soft drink, since I can’t have the real thing any longer at Wagner’s Drive-In II.
I’m not the first to say that, unlike a refreshing Coca-Cola® brand soft drink beverage product, this “detour of doom” argument leaves me flat.
Originally posted 2010-05-27 23:50:36. Republished by Blog Post Promoter
Genius! Plus studliness!
Yes, in one post on his Licensing Law Blog, Richard Bergovoy brings together some of my favorite things:
What do Jimi Hendrix, Elvis Presley, Marilyn Monroe, and Princess Diana all have in common?
If you guessed that all of them are dead celebrities, you are only half right.
More importantly, all of them were subjects of messy postmortem lawsuits against sellers of celebrity-branded goods.
Because of great variations in the laws, as well as “favorite son/daughter” influence on local courts, using the name or image of a dead celebrity to sell products without a license is risky business.
Doing so may put a businessperson in violation of two categories of legal rights, rights of publicity laws and trademark laws.
The more direct threat is the law of rights of publicity. Generally speaking, rights of publicity laws prohibit the commercial use of the name (and usually image and signature) of another person without his permission. But that is about all one can say with certainty — the laws are state-based, not federal, and beyond the basics, there are great variations in the laws of the states that recognize rights of publicity. In fact, it is not even certain how many states do recognize rights of publicity, with estimates ranging from the mid-20’s to close to 50.
One of the biggest variables among state laws is whether the right of publicity survives the celebrity’s death, and if so, for how long. States that characterize the right of publicity as a personal right naturally conclude that it is extinguished on the person’s death. New York is one such state. States that characterize the right of publicity as a property right, like New Jersey, naturally conclude that it survives the person’s death, and is descendible to her survivors.
That seems simple enough. So where is the problem? Read More…
Originally posted 2012-03-13 10:54:05. Republished by Blog Post Promoter
Steve Baird makes some great points about the Louis Vuittion / student activities flier kerfuffle:
There has been quite a flap surrounding the poster and invitation used by the University of Pennsylvania Law School to promote Penn Intellectual Property Group’s Fashion Law Symposium, scheduled for a week from tomorrow. The symposium . . . boast[s] an all-star cast of general counsel from the fashion industry, including those from Ralph Lauren, Forever 21, and Coach – to discuss in the first panel: ”Trademark and the Fast Fashion Phenomenon.” The second panel is set to discuss “Copyright for Fashion Design: Evaluating the IDPPPA.” Last, copyright scholar David Nimmer is addressing “Copyright and the Fall Line” in his keynote address, and a number of big name law firms are symposium sponsors or donors . . .
Louis Vuitton – owner of the likely famous trade dress and individual marks depicted on the designer bag shown above – objected to the use of the poster shown below in this cease and desist letter, and LV now has been branded a serial “trademark bully” for it (and past objections against other alleged infringements). The Penn Law School Associate Dean for Communications apparently agreed to cease use, but then the accommodation was formally withdrawn by the University’s Associate General Counsel, in this response letter, defending the poster as a clever parody. As far as I can tell, the coverage of this flap is highly critical of Louis Vuitton for sending the demand letter in the first place, and entirely in favor of the University’s final decision to not cease use; for some examples of the coverage, see Techdirt, Above the Law, Law of Fashion, Eric Goldman’s Technology & Marketing Law Blog, The Volokh Conspiracy,Johanna Blakely, and Alison Frankel’s ON THE CASE.
While I tend to agree the tone of the LV letter was excessive, and a few carefully-placed phone calls instead of a written demand, with greatly toned down the rhetoric, likely would have been more effective, what has left me a bit surprised by the coverage of this dispute is the absence of any scrutiny of the University’s response or position.
Now, I must say: To me, the tone and the tack are the entire tale, and the level of coverage on that ground is appropriate. But not the content; not all of it, because, as Steve explains quite aptly, a lot of of what everyone is saying is wrong:
[I]t seems no one is asking any questions probing the University’s claimed parody, and my concern about the popular ”trademark bully” label and a social media shame-wagon approach to this issue is it sends the wrong message in that it greatly oversimplifies a very complex body of trademark parody case law — decisions that most counsel as quite unpredictable if they ever go the distance.
Like it or not, unlike the defense of federal dilution claims where certain conduct is excepted from liability, neither noncommercial use nor parody is excepted from or an affirmative defense to trademark infringement. Parody is really just another way of saying, there is no likelihood of confusion, which no one will know for sure, without credible survey evidence of the relevant public. . . .
Is it not at least plausible that the modified LV artwork was designed to simply attract attention and fill seats in the auditorium, and not to make fun of LV, and that LV’s design was so meticulously reproduced that some who see it won’t even notice the subtle changes? After all, trademark parody case law certainly supports the proposition that the more outlandish, outrageous, shocking and/or offensive the parody, the less likely confusion will result. We’ll probably never know, but it wouldn’t surprise me at all – if survey evidence were pursued on these facts – to find support for an actionable level of likelihood of confusion as to LV’s sponsorship, affiliation, connection, or approval of the fashion law symposium, especially since LV noted it has sponsored such events by other schools (Fordham Law School’s Fashion Law Institute). This, it seems to me, is a key alleged fact overlooked in the Associate Dean’s response. Moreover, the focus on comparing luxury goods to educational seminars seems to miss the mark, as there appears to be a direct overlap in the sponsorship of fashion law seminars.
I think Steve is right on every point here. Read More…
Originally posted 2009-11-26 08:30:51. Republished by Blog Post Promoter
Some people have all the luck in the Eastern District of New York. Whereas me — I think I’ve got it coming to me right down the middle, and then it seems to get, I don’t know — diverted from me!
So some lawyers get assigned judges in the Eastern District of New York whose ideas about trademark law and, well, the Federal Rules of Evidence — and, actually, the Federal Rules of Civil Procedure have, well, um . . . okay, I won’t say. But in their courtrooms this is the kind of thing happens to “unauthorized resellers,” regardless of the actual “law” stuff.
And then there are other judges in that same court who actually not only get it, but really, really, really get it: There’s no such thing as “diversion” of authentic, untainted merchandise by “unauthorized” resale on the Internet. Whether or not the manufacuter of a product thinks you need a whole two years of community college or that certificate from beauty school to slather on hair goop or tanning sludge, that preference does not “run with” the over-hyped blech they sell.
So — still setting the stage here, stay with me! — Judge Leonard Wexler, in 2007, went this far to make that point, as reported here exactly two year agos from tomorrow:
L’OrÃ©al maintains that to keep the value, integrity and status of the products, they are supposed to be sold only by company-trained professionals in fashionable salons. Matrix alone “has been the number one professional hair brand on the market, with an estimated 16 percent market share,” L’OrÃ©al said in court papers.
Quality King and Pro’s Choice, however, were obtaining the products in violation of the injunction by buying them, or, as it is called, diverting them, from middlemen and reselling them to nonqualified dealers, L’OrÃ©al contended.
In his opinion, Wexler declined to enforce the old injunction, in effect, throwing out L’OrÃ©al’s case against the two companies.
The judge said that if L’OrÃ©al wanted seriously “to stop diversion of Matrix products,” it could terminate those of its distributors who are the sources of the diverted products.
He actually declined to enforce the old injunction, did Judge Wexler, because it would have actually been, well, wrong to! Because of the law stuff.
Isn’t that enough mazal for Quality King? Can’t some other lawyers in other courtrooms in that District have some of that good fortune?
No! Evidently, on appeal of the earlier decision, the Second Circuit affirmed his vacatur (cancellation) of the injunction going forward, but remanded for further determination of whether the injunction should be not only — not “only”! — vacated, but also “terminated,” i.e., retroactively time-traveled into non-ever-existence.
So once more comes Matrix, the plaintiff, and with them this time big guns from the collossal Weil Gotshal, a real New York law firm this time. So, was it a good idea to spend a good 50% more on fees (not to mention their markup on donuts!) to make the same arguments? Read More…
Originally posted 2007-01-08 22:45:17. Republished by Blog Post Promoter
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. A ridiculous three-and-a-half-year crusade meant to “take back” trademark rights arguably never earned under the guise of trademark dilution, the law that made trademark a right in gross for the privileged few; a claim — quite credible — that many smaller companies have simply folded their tents rather than defend their businesses, the very essence of IP enforcement abuse; an utter absence of LIKELIHOOD OF CONFUSION; certainly no evidence of damages and every reason to believe that the coinage of “spam” for junk email has done more to build this brand than anything, including Monty Python, could ever do; and a half million dollars donated to America’s most deserving (and, I might add, most handsome) sub-class of learned professionals.
Climbing off my tinned-meat box, here’s some interesting spice for your ham from the press release:
The Trademark Trial and Appeal Board, the federal administrative court charged with overseeing the national trademark office, has decided to hold the final hearing for case number 92042134, Hormell vs. Spam Arrest, before a live audience of trademark lawyers in New York City. The hearing will take place at the Practicing Law Institute in New York on February 23, 2007.
Now that is fascinating. Here’s a link to the schedule for the PLI course featuring this live argument. I’d attend in a second if I had been one of the torchbearers for Spam Arrest’s commitment to principle, freedom and justice. Since I’m not, I’ll have to use the $1,295.00 course tuition and buy things like food. Not Spam, of course. Nothing personal — doctor’s orders.
Originally posted 2010-08-17 18:21:14. Republished by Blog Post Promoter
Is it infringement or a breach of contract? Is it a license or an assignment? Well, whatever it is, it’s a little complicated, and Pamela Chestek does a good job of following all that geometry on her Property, Intangible blog.
Not just a good job: That blog post represents hard work — not just intellectually following the fact pattern, but painstakingly cutting and pasting “actualities” into the post. Nice. But it’s all worth it for a great blog post, isn’t it, Pamela? Uh, right?
Either way, I liked this excerpt she pulled from the July 16, 2010 Southern District of New York opinion:
[This] is essentially a contract dispute between an exclusive licensee and licensor over the right to use the trademark[s] at issue. The dispute should be determined by the principles of contract law, as it is the contract that defines the parties’ relationship and provides mechanisms to redress alleged breaches thereto. The Lanham Act, in contrast, establishes marketplace rules governing the conduct of parties not otherwise limited. This is not a case of either the licensee or licensor attempting to protect a trademark from unscrupulous use in the marketplace by third parties. Rather, this case involves the alleged breach of a license agreement.
Is the Mother Court reading “unscrupulous” back into the Lanham Act? That would be refreshing!
Originally posted 2008-07-17 11:39:17. Republished by Blog Post Promoter
The remaining issues in the case, you may recall, were copyright infringement and Arizona unfair competition. Here is the status per this morning’s minute entry in the court’s electronic case filing docket:
Minute Entry. Proceedings held before Judge James A Teilborg on 7/16/2008: Jury Trial – Day 2 held. Plaintiff’s case continues. Evidence and testimony presented. Plaintiff rests. Defendant rests. The Court grants defendant’s oral Rule 50 Motion as to statutory damages, actual damages and unfair competition claim. The Court grants defendant’s oral Rule 50 motion to dismiss defendant Lawrence Sagarin as a defendant. The remaining issue in the case is the injunction issue. Closing arguments. Jury deliberations. Jury to return at 9:00 a.m. 7/17/2008 to resume deliberations. (Court Reporter David German.) (TLB )
A tad terse and bloodless — quite unlike how trial has gone. Not terse or bloodless at all. [UPDATE: Here's the transcript. Dismissal of the damages claims were stipulated; see the ruling from the bench at page 124 of the PDF for the ruling as to Sagarin.]
“The Court grants defendant’s oral Rule 50 Motion as to statutory damages, actual damages and unfair competition claim” means “The Court grants defendant’s’ oral motion to dismiss Designer Skin’s claims for statutory damages, actual damages and unfair competition. (Earlier on the court declined to take our “suggestion” of a lack of copyright jurisdiction.)
So, so far: No damages, no plaintiff attorneys’ fees in play. Jury (advisory per Rule 39(c) of the Federal Rules of Civil Procedure; injunction against further use of Designer Skin’s “electronic renderings” is not a jury issue, but they are charged with deciding whether there was copyright infringement) is out; they return this morning, Phoenix time, at 9.
We will update and backfill…
UPDATE: The jury returned a verdict of infringement on 42 of the 54 copyrights. In post-verdict interviews, interestingly, the jurors reported they would have awarded no damages, or nominal damages, had the judge permitted them to consider damages. (Per the above the damages claims were dismissed.) The jurors rejected the idea that a manufacturer is entitled to damages in connection with the sale by third parties of merchandise the manufacturer already sold once before, regardless of the legal theory. This came as quite a surprise to the plaintiff’s legal team, whereas the advisory verdict of infringement (which the court indicated he would adopt) was not particularly surprising to us… considering.
RELATED POST: Two Cities.
Originally posted 2008-07-10 00:01:41. Republished by Blog Post Promoter
Every lawyer who practices in the intellectual property area is asked frequently how to go about protecting a unique or creative idea that someone fears is at risk of being stolen by a prospective investor, partner or advisor to whom early disclosure is necessary. During the dot-com bubble, everyone walked around, it seemed, with an NDA (non-disclosure agreement) ready to be beamed from his Palm. Is an NDA still the answer? This post is actually about trademark registrations — but let me briefly reiterate my views about NDA’s, and, as we say, “connect up” the two seemingly unrelated topics.
I usually have a couple of points to make in response to the NDA question:
These and similar arguments are well developed in an article from a few years ago called “The Cult of the NDA,” written (I think) by a fellow named Peter Leppik, which article lawyer readers of this blog should bookmark.
Comes now an entertainment lawyer named Barry Neil Shrum who has written a pretty thoughtful piece on some approaches that actually might work. It’s worth taking a look at. But I must note disagreement with his advice about trademarks, which unfortunately will reinforce, unintentionally, a number of common misconceptions about trademarks that are “out there.” And that means it’s time again to try to set things straight.
Early on Barry presents a fair summary of what you need to get trademark protection, though more on his allusion to securing trademarks for “titles” below. He helpfully makes it clear that federal trademark registration is “tedious, complicated and costly,” but doesn’t explain why, or explicitly address the concept of the Intent to Use application, which seems central to his ultimate advice.
And that leads to my beef — the following recommendation that Barry puts first on his list of otherwise very good, otherwise endorsed-by-LIKELIHOOD OF CONFUSION® suggestions:
(1) First, trademark all slogans, titles or name, at the very least your state level, but preferably at the federal level;
Unfortunately, this suggestion is densely packed with problems because Barry has not elucidated some fundamental facts about trademarks. Read More…
Originally posted 2009-11-03 13:50:30. Republished by Blog Post Promoter
Originally published January 8, 2013
Trademark law does not trump the right to make and sell artistic depictions of real life after all, it turns out. Or even NCAA football.
Almost exactly four years ago I wrote about the suit by the University of Alabama urging the obnoxious claim that artistic depictions of its players at play were, by virtue of utilization of the familiar uniforms and colors of those players, infringements of the Alabama trademarks in its corporate sports machine. Amazingly, the first judicial ruling in that case has just come out — and, blessedly, it gets it right (even if the Tuscaloosa News reporting of it is a little, er, sic):
U.S. District Court Judge Robert Propst said in an opinion that Moore did not violate trademark laws by painting scenes of Crimson Tide football without licensing the work through the university. He rejected UA’s argument that the football team’s uniform and colors are iconic enough to trump First Amendment rights in fine art.
‘This court concludes that the depiction of the uniforms in the paintings is incidental to the purpose and expression of the paintings; that is, to artistically depict and preserve notable football plays in the history of University of Alabama football,’ Propst wrote in his memorandum opinion.
UA attorneys had argued before Propst in a hearing two weeks ago that Moore’s paintings showed trade dress, which they said is any symbol associated with UA, including the crimson and white color scheme.UA sued Moore for trademark violations in March 2005, alleging that he painted scenes of Crimson Tide football games without permission from the university and reissued previously licensed prints without paying royalties. The university is seeking back pay [sic] for more than 20 paintings and wants Moore to license any future paintings. . . .
Propst knocks down nearly every claim made by UA attorneys against Moore, even writing that Moore did not violate previous licensing agreements with new or reissued paintings. At the center of the issue, Propst dismisses UA’s assertion that painting Crimson Tide football violates [sic] trademark because the uniforms and their colors are not protected.
Also, UA argued that Moore’s paintings were too realistic and did not transform the original scene enough to constitute artistic expression. However, Propst writes the reality of the painting is needed to relate the play and adds to the level of artistry.
Propst also writes there isn’t enough confusion among customers as to who sponsors the paintings. ‘It is likely that people who buy the Moore paintings do so, at least partially, because of their loyalty to the University of Alabama and its football team,’ he wrote. ‘That, however, does not create any reasonable inference that they do so because of confusion based on the color of the uniforms.’
The whole opinion is here.
There will be no end to the greed or the attempt to utterly distort the entire purpose of trademark here — this will be appealed, it has been promised. In the Eleventh Circuit (as everywhere else), “To show a likelihood of success on the merits for [either a] trademark and trade dress infringement, [a plaintiff] must show that consumers will likely confuse the [plaintiff's] mark or dress with [the junior user's product or service]. See Carnival Brand Seafood Co. v. Carnival Brands, Inc., 187 F.3d 1307, 1309 (11th Cir. 1999) (trademark); Wal-Mart Stores, Inc., v. Samara Bros., Inc., 529 U.S. 205, 146 L. Ed. 2d 182, 120 S. Ct. 1339,1343 (2000) (trade dress).” So what’s the argument — the public will think that the paintings are the Crimson Tide’s latest run defense?
Of course, consumer confusion is never, ever seriously considered in naked rent-seeking cases such as these — Read More…
Originally posted 2006-01-22 12:59:35. Republished by Blog Post Promoter
I was on a panel called “Trademark Rights vs. Free Speech” at the Fall 2000 INTA Trademarks in Cyberspace Conference with Marty Schwimmer and David Bernstein. (Five years later I’m still glowing from the reflected brilliance!) The moderator was IP superstar Brendan O’Rourke, who cruelly, on-the-record, and correctly reminded me, “Ron, you lost the Jews for Jesus case, okay? Okay?” Yeah, well, okay. But that doesn’t mean the next guy–in this case, Google–has to! The “Jews for Jesus Whistle Blower” writes, at his Jews for Jesus blog:
Google has a few more days to respond to Jews for Jesus’ lawsuit over the rights to a blog. I bet Jews for Jesus is praying ferverently (and keeping their collective fingers crossed) that Google will give in. What is the likelihood that Google will set a precedent that all anyone has to do is sue Google and they’ll give in? Seems to me that Google is principled. And if they are willing to defend themselves against the government, there’s a good chance they’ll defend themselves against Jews for Jesus.
If Google doesn’t give in, will Jews for Jesus wilt? How much money do they have to pursue the control of a simple blog?
WB, they have plenty of money, and, as you cannily point out, they’re using this litigation to raise more. Jews for Jesus claimed (off the record) during the Brodsky litigation to have raised more in sympathetic donations than they spent on Thelen Reid’s legal fees. We’ll never know if that was true, but it’s food for thought.
As far as the “other side” went, although Steve Brodsky was the sole defendant and there was nothing but the most casual (well, and virtual) link between him and Rabbi Toviah Singer, certainly the two were aligned sympathetically. Rabbi Singer later told me that as a result of the controversy and the traffic that was generated as a result of the publicity for his website, a number of Messianic Jews (i.e., Christians with gefilte fish) returned to the Jewish fold. Maybe he was able to raise a dollar or too himself.
It is fair enough to say that the litigation was more helpful for J4J than it was for either Steve Brodsky, Rabbi singer or anti-J4J missionaries. The real loser, of course, was the law of trademark infringement, which still has not fully recovered. The most egregious aspect of J4J’s arguments on this point (as opposed to the even worse arguments–such as the cooked up “commercial use”–in the opinion) is the very premise that there is, with respect to these website cases, anything even approximating LIKELIHOOD OF CONFUSION.
As we put it in the Third Circuit brief which, among others, future Supreme Court justice Samuel Alito by all indications did not read (although he was on the panel that rubber-stamped the District Court decision with one sentence of affirmation):
Liability under the Lanham Act requires a showing, inter alia, of likelihood of confusion as to source. Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225, 1228 (3d Cir. 1978). But, appellee has submitted no admissible proof to support a finding that confusion is likely.
. . .
[I]t takes virtually no time for even self-described “unsophisticated” users to quickly realize they are at Mr. Brodsky’s site, not that of appellee. The honesty of the non-confusing message on Mr. Brodsky’s website is in stark contrast to the defendant’s website in Planned Parenthood:
Because the words on the top of the page load first, the user is first greeted solely with the “Welcome to the Planned Parenthood Page!” It is highly likely that an Internet user will still believe that she has found plaintiff’s web site at that point.
42 U.S.P.Q.2d at 1438. That kind of confusion is simply impossible in the case of Mr. Brodsky’s website . . . In response to this argument, the District Court found that an individual may be a sophisticated consumer of the Internet but may be an unsophisticated consumer of information about religious organizations. Such a user may find his or her way to the Defendant Internet site and then be confused; the Defendant Internet site advocates views antithetical to those of the Plaintiff Organization.
The last two clauses in the excerpt above constitute a non-sequitur. They also make no sense in the context of the actual website at issue, which explicitly states its opposition to “the Jews for Jesus cult” and disclaims any affiliation with appellee. Concluding that Mr. Brodsky is not part of a Jews for Jesus organization does not require any particular “sophistication.” It only requires the ability to read.
In fact, the courts routinely define “sophistication” in much less “sophisticated” terms than did the court below, where a simple grasp of the obvious is all that is required to negate confusion. Thus, in Girls Scouts v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 1231 (S.D.N.Y. 1969), the court ruled that “rational analysis” precluded confusion about whether the Girl Scouts were the source of a poster depicting a pregnant girl in the well-known uniform of the Girl Scouts appearing with the caveat “BE PREPARED.” Similarly, in Stop the Olympic Prison v. United States Olympic Committee, supra, 489 F. Supp. at 1123, a poster reading “Stop the Olympic Prison” was held not to violate the trademark of the United States Olympic Committee. The court reasoned as follows:
On the basis of its own examination of the poster, the Court finds it extremely unlikely that anyone would presume it to have been produced, sponsored or in any way authorized by the U.S.O.C. While at a fleeting glance, someone might conceivably mistake it for a poster advertising the Olympics, nobody could conceivably retain such a misconception long enough to do any harm: for example, there is no danger that anyone would purchase or display it as such.
Id. . . . As in Girl Scouts and Olympic Prison, no rational person could believe that Mr. Brodsky’s message was in any way affiliated with appellee. The District Court nonetheless held that confusion is likely because Mr. Brodsky’s site is “related” to that of appellee [and that the use of the trademark was in fact more, not less, protected for this reason, on fair use grounds!-- RDC]. The court below inexplicably rejected the inescapable conclusion that consumers can dispel any confusion if they merely trouble to read Mr. Brodsky’s message, the way Chellathurai, Kalstein and Sanchez did.
If you’re still with me, here’s a last nail from the Third Circuit reply brief:
In defending the District Court’s likelihood of confusion analysis, appellee comes again to its prized exhibits: the three “confusion affidavits” of Chellathurai, Kalstein and Sanchez. There is little left to debate regarding whether these affidavits demonstrate confusion, or, more likely, the absence of confusion. This Court will simply have to read them. A076, A080, A257. Appellee suggests that the District Court found “initial interest confusion” here. Opp. Brief. at 37. But this doctrine is mentioned nowhere in the opinion below. Developed in a sales context, it has been applied only where “a potential purchaser is initially confused [such that] the [senior seller] may be precluded from further consideration.”
Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546 (Fed. Cir. 1990) (emphasis added). Thus it does not apply here. In fact, in Girl Scouts the Southern District of New York rejected transient confusion as proof of trademark harm in a social-commentary context:
Even if we hypothesize that some viewers might at first believe that the subject of the poster is actually a pregnant Girl Scout, it is highly doubtful that any such impression would be more than momentary or that any viewer would conclude that the Girl Scouts had printed or distributed the poster.
304 F. Supp. at 1231. As the Girl Scouts court recognized, ephemeral moments of confusion that do not threaten to divert sales are not evidence of actionable harm under the Lanham Act. Real harm must be shown to overcome the constitutional protection of free speech:
No evidence is found anywhere in the record before the court that the poster has to date damaged the plaintiff in any way. No facts are presented to show that contributions to the organization have fallen off, that members have resigned, that recruits have failed to join, that sales . . . have decreased, or that voluntary workers have dissociated themselves or declined to support the honorable work of the organization.
Id. at 1235. Similarly, there is no evidence in this case of any actionable or even discernible harm that appellee has suffered as a result of Mr. Brodsky’s website. Even the court below admitted that the publicity surrounding this dispute was, far from harmful, undoubtedly a boon for appellee. A436-37. And all three supposedly confused affiants found their way to appellee’s website, undeterred by Steven Brodsky and more zealous than ever in their devotion to appellee. In fact, their reports to appellee negate the suggestion of confusion; again from Girl Scouts:
[I]ndignation is not confusion. To the contrary, the indignation of those who [reported the offending use] would appear to make it clear that they feel that the Girl Scouts are being unfairly put upon, not that the Girl Scouts are the manufacturers or distributors of the object of indignation.
Id. at 1231. This passage perfectly describes the three “confusion” affidavits here: indignant, yes, but certain that appellee was not the source of Mr. Brodsky’s website. They were not confused.
They were not confused. Unfortunately, a lot of people were, and are–about what the Lanham Act is, and is not, meant to protect, and don’t get this key point: Indignation is not confusion. We can survive that, as long as too many of them aren’t judges.
It’s a good bet, as Whistle Blower suggests, that Google will get a better hearing than lone idealist Steve Brodsky did in his case, and not just because it is better heeled. (My old firm, Pitney Hardin, handled the Brodsky litigation pro bono.) And the issues are somewhat different.
Still, Whistle Blower says that the Reverend David Brickner, the pleasant, non-Jewish head of Jews for Jesus, thinks this is the second coming of the Brodsky case. Jews for Jesus attorneys Thelen Reid probably hope so (though perhaps not every Thelen Ried partner is singing from the same sheet of music on the topic of God and intellectual property). WB beleives that from a legal point of view this seems like somewhat wishful thinking. (Not to mention the fact that this case was filed in the federal court in New York, not New Jersey, and that Judge Lechner of the former court has retired and moved onto bigger and better things.)
Then again, the Rev. Brickner’s statement is hardly the first instance of wishful confusion to eminate from the the precincts of Jews for Jesus–not hardly.