The Trademark Blog

A Danish Band, Aqua, released a song named "Barbie Girl," the lyrics of which would likely have been forgotten, but now, thanks to this lawsuit, will be reprinted in F.3d.  The characters in the song are named Barbie and Ken and the chorus is:

I'm a Barbie Girl, in my Barbie world, Life in plastic, it's fanstastic, you can brush my hair, undress me everywhere, imagination, life is your creation.

Anyway, Mattel sued lots of different companies associated with the record, lost at trial and appealed to the Ninth Circuit.  Mattel alleged trademark infringement, dilution and a brand new cause of action Mattel created under Section 44 of the Lanham Act.  That last cause was dismissed under the doctrine that you can't plead non-existent causes of actions (See the decision at 10502.  Unlike law.com, I provide links to the actual decision so that you can see that I don't make this stuff up).

First, the trademark infringement cause was dismissed.  The Ninth Circuit adopted the reasoning in the Second Circuit Fred and Ginger case, in that use in a title tends not to be perceived as designating origin.  The public doesn't understand a movie named "Fred and Ginger" to be endorsed by Ginger Rogers, and it doesn't perceive a pop song named "Barbie Girl" to be endorsed by Mattel.

More importantly. the dilution cause under Lanham Act 43(c) was dismissed.  There is a tension in the dilution statute because there is unlawful tarnishment (a strip club named ACME'S) and lawful tarnishment (ACME is evil because . . . ).  That's why the defenses to dilution in Section 43(c)(4) are fair use (as in comparative advertising), noncommercial use and news reporting. 

Here, the only prong available to MCA as a defense would be non-commercial use.  However a song is clearly a commercial use (as would be any type of potentially dilutive use which required a 43(c)(4) defense).  So the Ninth Circuit turns to the First Amendment caselaw, and points out that the core notion of commercial speech is that it 'does no more than propose a commercial tansaction."  But this speech (use of the name in the title and song) is 'expressly intertwined with expressive elements.'  That which is not purely commercial speech is noncommercial speech, and thuis protected under the First Amendment. Dilution claim dismissed.

See additional blurbs about the case below.

Posted by Marty at 09:48 PM | Permalink | Comments ()

The Ninth Circuit in Mattel, noting that song titles tend not to be perceived as designating origin, finds that ". . . upon hearing Janis Joplin croon 'Oh Lord, won't you buy me a Mercedes-Benz?' would we suspect that she and the carmaker had entered into a joint venture."  Sure, baby boomers aware of her psychedelic Porsche would not, but those who knew that the posthumous copyright owner licensed the song to Mercedes might suspect it, as would those who purchased the song as a ringtone for their Nokia phone.

Posted by Marty at 09:11 PM | Permalink | Comments ()

Until today I have never laughed out loud  while reading a Ninth Circuit Opinion.  This is the last paragraph of Mattel v. MCA (discussed above):

"MCA filed a counterclaim for defamation based on the Mattel representative's use of the words "bank robber," "heist," "crime" and "theft."  But all of these are variants of the invective most often hurled at accused infringers, namely "piracy."  No one hearing this accusation understands intellectual proeprty owners to be saying that infringers are nautical cutthroats with eyepatches and peg legs who board galleons to plunder cargo.  In context, all these terms are nonactionable "rhetorical hyperbole," (cite omitted).  The parties are advised to chill.  (Emphasis mine.)

Posted by Marty at 08:48 PM | Permalink | Comments ()

By pointing out that articles like this basically favorable Washington Post column about bloggers (and the underlying US News piece the Post basically blogged) should have had links to the blogs discussed(ok, the US News piece had one blink - that's a link to a blog).

Posted by Marty at 05:59 PM | Permalink | Comments ()

I became aware of a dispute regarding metsonline.net through Dave via Ernie.  Apparently, Major League Baseball has apparently sent a demand letter to a guy who is running a Mets fan site.  Ernie asked me for my two cents.

Just to qualify myself as an expert, I should point out that I grew up in Flushing, NY and was 8 years old when Ron Swoboda made The Catch. ;-)

First, as a general rule, while I enjoy a brawl as much as the next guy,  I hate to say who's right and who's wrong in an ongoing dispute because I know I don't know everything I need to know in order to know who's right and who's wrong.

OK - in the portion of the demand letter posted on the site, MLB refers to the cyber-squatting clause of the Lanham Act.   When scoring this from home you have to remember that trademark infringement and cyber-squatting are two different causes of action under the Lanham Act with their own provisions, elements, penalities, etc.  The most important distinction (to me) is that cyber-squatting is an intentional tort and infringment is that scary animal - a strict liability tort.  A lot of media reporting of domain name disputes confuse the equities and arguments of one analysis with the other.

In the cyber-squatting analysis here, at least two points seem relevant to me.  The first is that there is a well-developed fan site at this URL.  If the registrant can document that he had intended a fan site from the beginning, then that will be a very relevant fact.  A bona fide fan site will likely be deemed to be a good faith reason for registering the name.  It is also relevant that this is 2002, not 1994.  Registering metsoline.net will not keep the Mets off the web.  But again, I don't know enough to draw conclusions.

As for trademark infringement - remember, intent is not an element.  It is a mixed question of fact and law as to whether naming the site METSONLINE.NET is a confusing use.  It is or it isn't. The fair use doctrine is too complex to get into but I will over-simplify it here to state: The site operator can reproduce the METS trademarks to truthfully describe the nature of his service, but not to suggest that the site is endorsed by the Mets, nor may he reproduce the METS trademarks more than what is needed to truthfully describe his service.   

As an aside, I am not much of a believer in the efficacy of disclaimers.  A better disclaimer would be re-naming the site "Bryan Hoch's Mets Online Website."

Finally, as a practice pointer for folk with clients in the sports and entertainment field, you have to be really careful how you deal with fans, because you never want to see your demand letters posted on a website. It would seem that getting the fan sites into a web ring (among other proactive behavior for encouraging fan input) could circumvent a lot of this agita.

Posted by Marty at 08:50 PM | Permalink | Comments ()

If owners of the world's 10 most valuable brands approached trademark lawyers today to clear those marks, doctrinaire lawyers might advise them to avoid over half of them.

Interbrand and Businessweek have come out with their annual discussion of the world's most valuable brands.  One canon of trademark law is that there is a scale of registrability.  Arbitrary, coined and suggestive terms  are inherently registrable.  Descriptive terms, including geographically descriptive terms are registrable only upon proof of acquired distinctiveness, as are comon surnames.  Trademark lawyers (and brand consultants) advise clients to choose coined or arbitrary terms (while marketing folk advise co-opting the generic term ;-)), and give EXXON, KODAK and XEROX as exemplars of the form.  I thought it would be a worthwhile exercise to look at the ten most valuable brands in the world and analyze them on the registrability scale.  At least half of the marks are not "inherently registrable" and likely would require evidence of acquired distinctiveness.

1.  COCA-COLA - When derived, this was a suggestive term, alluding to the cocaine.  COCA-COLA and COKE have functioned as arbitrary marks for the last century.

2. MICROSOFT - Suggestive, referring to software for microcomputers.  WINDOWS was intiially descriptive (and those involved in the LINDOWS case would argue, still is).

3.  IBM - Acronyms for descriptive terms tend to be viewed as descriptive as well.  International Business Machines describes, er . .

4. GE - Same as above, for general electric products.

5.  INTEL - Intel is not a dictionary word, although those of us employed by spy agencies use it as a noun.  Strictly speaking, this is a suggestive mark for intelligent products.

6.  NOKIA - I cannot find a source for the meaning of NOKIA, although the founder (not named Nokia) did name the company that when it started as a logging company in 1865.  It is rumored that Nokia received favorable treatment in the U.S. market at first because people assumed that NOKIA was Japanese and therefore the product must be good.  It certainly functioned as an arbitrary mark in the U.S. at least.

UPDATE: Alexander Svennson of Icannchannel.de confirms that Nokia was the name of the logging town where the domaony was founded.  When applying today, Nokia would have to represent that the town was not primarily known for logging.

7.  DISNEY - Founder's surname.  The Examiner would do a phone book test to determine if it were a common surname and reject it if it were.

8.  McDONALDS - Founders' surname (not really - founder sold these guys equipment, then bought them out).   Definitely a common surname.

9.  MARLBORO - I am assuming that this is a geographically descriptive mark (as there is a Marlboro County in tobacco country back East).  Philip Morris would have o show that it was the only tobacco producer in that county.  Marlboro country, out west, was invented to re-position the brand.  You can read more about that in "The Handbook of Brand Management" by David Arnold.

10.  MERCEDES - Mercedes is the name of the daughter of an early Daimler Benz enthusiast, and thus was an arbitrary mark.  It would still run into common surname problem.

I don't know what conclusions to draw from this, other than to note that 5 and possibly 6 of the world's most valuable brands would probably receive preliminary refusals to register from the US trademark office. So trademark lawyers are needed, after all.

Posted by Marty at 10:01 PM | Permalink | Comments ()

CoreBrand is a branding consultancy.  This is its list of the best-known corporate brands.  Coca-Cola was number one.  I was not able to correctly guess the runner-up.

Posted by Marty at 08:36 PM | Permalink | Comments ()

The text of the bill authorizing spoofing and other activities designed to prevent the distribution of unauthorized works on a peer to peer network is available on the Politech site here.  Interesting - the copyright owner has to notify the Department of Justice 7 days in advance of taking action.

Posted by Marty at 03:01 PM | Permalink | Comments ()

Further to my July 11 blurb on spoofing,  the practice of intentionally uploading defective files onto peer to peer networks, with the purpose of discouraging use of those networks, this siliconvalley.internet.com article reports that a bill was 'sent' to Congress today legalizing that and other practices.

Posted by Marty at 06:43 PM | Permalink | Comments ()

SKELETOR, evil lord of destruction, battles He-Man to be a Master of the Universe.  Mattel likely coined the name twenty years ago.  It's a fair inference that when a third party registered skeletor.com, he was aware of Mattel's rights in the name.  This UDRP decision for registrant shows however, that complainant's lawyer has to do more than rely on inference.

Posted by Marty at 05:15 PM | Permalink | Comments ()

Details of Ben Edelman's complaint filed today against N2H2, a filtering software provider here.  See also Donna's article and interview with Ben at Copyfight and Declan McCulagh's article at news.com.

Posted by Marty at 04:26 PM | Permalink | Comments ()

Law.com's list of IP counsel for Fortune 250 companies.  I'm outraged that two clients of mine on the list didn't mention me.

Posted by Marty at 04:25 PM | Permalink | Comments ()

Law.com article fretting about the Internet alowing for extra-territorial jurisdiction.  The fact pattern leading off the story (Italian authorities sat down at the defendant's Italian computer to shut off the U.S.-hosted website) doesn't give me nightmares.  Dave Farber's fact pattern doesn't either (if you are on notice that you have violated Australian law, skip the Australian conference).  The Yahoo in France troubles me because Yahoo took steps to comply with French law. 

Here's a business opportunity - hosting companies set up in free-speech havens.

Posted by Marty at 11:40 PM | Permalink | Comments ()

Apparently Worldcom's claim that Internet traffic doubles every 100 days was untrue (this from the Economist).

Posted by Marty at 09:56 PM | Permalink | Comments ()

Nominet panelist adopts the willing suspension of disbelief in giving credit to respondent's version as to why scoobydoo.co.uk is a legitimate fan site and not an attempt to profit off the name.  Just ignore the fact that he sold merchandise from the site (before the demand letter), and the fact that he offered to sell the name for a lot of money to Hanna Barbera.  But you have to ignore reality to enjoy the show as well.

Posted by Marty at 09:21 PM | Permalink | Comments ()

Coca-Cola, Pepsi, the Washington Post and McDonalds moved for a TRO and Preliminary Injunction against William Purdy, an anti-abortion activits, who registered various domain names incorporating plaintiffs' names, pointing them to anti-abortion information (including fund-raising information).  See July 16 entry below for more background.  Now plaintiffs have been granted the TRO and the injunction and have been awarded transfer of the names.  The District of Minnesota decision is framed so you will have to use Court Web and enter 'Coca-Cola' as the search term to access the text.

Posted by Marty at 09:04 PM | Permalink | Comments ()

See this cnn.com story.

Posted by Marty at 08:43 PM | Permalink | Comments ()

New organizations have come out in favor of spam, via The Onion. [irony indicator on].

Posted by Marty at 11:56 PM | Permalink | Comments ()

Check out this picture of a gas station sign.  The station owner, oddly, sells SHELL gas AND its own brand (somewhat unusual).  In addition to the franchisor/franchisee issues discussed in the law.com article, what we may have here possibly is a rare real-world case of Initial Interest Confusion, where the copying of a mark brings the customer to the product, but circumstances dispel confusion before purchase.  Here, the SHELL sign brings the customer into the station, but the sign on the pump (and the lower price) alleviate confusion.  Of course here the gas station owner is allowed to display the SHELL mark - but does that sign imply that all his gas is SHELL-brand?

Initial Interest Confusion was a key concept in the MOVIEBUFF and EPIX decisions.  The MOVIEBUFF court in fact used (tortuous to my mind) analogies of  domain names acting like misleading signs on the road inducing motorists to get off at wrong exits (and then sticking around to buy something).  Well, now they have a real-world demonstration of the analogy.

Thanks to Joel for pointing this one out to me.

Posted by Marty at 10:17 PM | Permalink | Comments ()

Everything about linking from Searchenginewatch.com via Politech.

Posted by Marty at 02:19 AM | Permalink | Comments ()

Politechbot via ICANNwatch on the case of William Purdy and what looks to be another domain name as free speech case. An anti-abortion advocate is apparently registering what are described as names similar or identical to the names of newspapers.  The registrant re-directs traffic to anti-abortion sites.

I disagree with the author's final sentence, that ACPA wasn't designed to handle this.  The Lanham Act deals with the use of trademarks in the context of free speech and the caselaw is clear.  Political speech is not an absolute defense to the deceptive use of a trademark.

These names are or are not confusingly similar to the trademarks of others, the registrant does or does not have legitimate interests in registering those names (which is different from the legitimate interest in making political speech), and he does or does not seek to divert traffic from the trademark owners.  I acknowledge that the UDRP might not necessarily be appropriate for a complex case because of its limited record, but the ACPA can handle this.

UPDATE: Politechbot carries a list of the domain names in question along with a post from Purdy.

Posted by Marty at 01:40 AM | Permalink | Comments ()

This from the Washington Post about two groups fighting over the name Minority Business RoundTable.  Trademark disputes are not limited to for-profit enterprises.

Posted by Marty at 02:14 PM | Permalink | Comments ()

From cnn.com via slashdot.org re: paid search engines' tardiness in complying with the FTC order in revealing how payment affects search placement.

Posted by Marty at 09:27 PM | Permalink | Comments ()

Quick injunction received against Gator, pop-up ad specialist, by major media companies, according to ZDNet wire.

Posted by Marty at 03:40 PM | Permalink | Comments ()

Nothing to do with trademarks but interesting.   A Florida teenager was convicted of the 1999 murder of a young girl.  It was widely reported that death was caused by the boy imitating wrestling moves, and the case was widely referred to as the wrestling death case.  The Parents Television Council made the wrestling death case a feature of its fund-rasing efforts and approached Worldwide Wrestling Entertainment advertisers, presumably in an attempt to either dissuade them from advertising on wrestling shows, or to influence its content.  WWE sued PTC, arguing that wrestling had nothing to do with the murder.  Apparently they were right.  In addition to paying WWE damages, PTE has had to publish this public apology and retraction.

Gabriel Perle has an excellent chapter on libel and defamation in The Publishing Law Handbook.  Regardless of your field of law, it's worth reviewing on a regular basis.

Posted by Marty at 03:00 PM | Permalink | Comments ()

FUBU (its founders using the acronym of "For US, By Us"), sells clothing under the 05 mark, where the 05 is depicted as a numeral on a sports jersey.  It turns out that pro athletes (Gretzky being the exception) don't use numbers starting with a 0, so FUBU was able to build some distinctiveness in the number.  A knock-off specialist, with a string of demand letters to its name, began selling PLAYERS 05 sports jerseys.  Copies of plaintiff's catalog were found in defendant's premises, defendant withheld evidence of sales volume during discovery, defendant's officer committed perjury during trial.  No surprise then when plaintiff wins an accounting, lost profits and attorneys' fees.  GTFM v. Solid Clothing, dba ZAM, 01 CIV 2629 (DLC) (SDNY).

Fun fact: FUBU paid rapper LL Cool J $4 million to wear its clothing.

Posted by Marty at 01:50 AM | Permalink | Comments ()

Thursday's Wall Street Journal has an article on "spoofed songs" on file-sharing services such as Morpheus or Kazaa.  The article suggests that the record companies are now uploading defective versions of their own songs (3 minutes of static for example), so as to frustrate users from utilizing the free services.  The "major record labels neither confirm nor deny the contention" however Cary Sherman of the RIAA implicitly approved the practice, stating that copyright owners ought to be able to do "whatever they can that's lawful to protect their rights."

"Spoofing" by the rights owner raises two sets of questions, one as to trademark implications of spoofing and one as to whether the practice can be extended to the "real world" counterfeits.

If the record companies are in fact spoofing, then the practice, from a trademark point of view, is unique (to me at least).  The owner (or licensee) of the artist's trademark is intentionally distributing an inferior or defective version of the product associated with that trademark, deceiving the user (albeit a non-paying one), in the hopes that the experience will tarnish not the trademark owner but the means of distribution.  While it seems metaphysically impossible for the trademark owner to counterfeit or infringe itself, self-tarnishment seems possible (to say the least).  Also of interest is whether the free services will respond by filtering out spoofs and advertise that they offer only real unauthorized copies.

The question then arises whether spoofing can be extended to the real world in order to disrupt counterfeit operations.  An intractable problem  fighting counterfeits is that consumers knowingly buy low-quality fakes, i.e. $30 Rolexes.  It seems that the insertion of not low-quality but no-quality fakes is one of the few ways of disrupting this market.  However it seems like playing with dynamite if it becomes known that the trademark owner is responsible for the fakes. 

UPDATE: See this Washington Post article for info on a pending bill to "legalize" spoofing and other practices.

Posted by Marty at 02:31 PM | Permalink | Comments ()

Janis Ian on how she makes more money because of downloading, via Slashdot.org.

Posted by Marty at 05:19 PM | Permalink | Comments ()

The inaugural copy of The Trademark Insider is available for download from NameProtect.  The issue contains the 2001 annual rankings of U.S. trademark firms (Oblon Spivak led with 2,361 applications filed, the firm where I had been a partner, Fross Zelnick, fell to second with 1,289).  First quarter numbers for 2002 are provided as well (Blakely Sokoloff at 246, Fross Zelnick at 238).  If the first quarter numbers are extrapolated (and considering that March is the busiest month of the year for applications, don't ask me why), then 2002 looks to be somewhat slower than 2001. 

Posted by Marty at 04:56 PM | Permalink | Comments ()

Apparently women walk around naked at the Burning Man Festival, held annually in the Nevada desert.  Someone filmed some naked women there in order to sell a video.  Now the organizers of the festival are suing the video's producers under, among other theories, invasion of privacy.  It's interesting that someone can walk around naked in the desert and have an expectation of privacy, but given that the festival was likely on private property and that admission was pursuant to license (otherwise known as a ticket), then I suppose such an expectation is plausible.

Posted by Marty at 04:25 PM | Permalink | Comments ()

You have another three days to see Greenpeaces's use of this parody of Exxon's ESSO logo , which use was enjoined by a French court, according to this Findlaw article. 

Posted by Marty at 04:14 PM | Permalink | Comments ()

Bret Fausett if the ICANN Blog has penned an essay, "If I Were Stratton Sclavos," (CEO of Verisign, domain name registry and registrar).  It's longer than the essay I would have written which would have been "Stick to digital certs."

Posted by Marty at 01:39 PM | Permalink | Comments ()

There goes the greatest hitter who ever lived.

Posted by Marty at 06:38 PM | Permalink | Comments ()

Today's Wall Street Journal quotes a study by FutureBrand (a branding consultant), indicating that the NEW YORK YANKEES is the most valuable brand in sports, valued at US$333.8 million, followed by the DALLAS COWBOYS at $300.5 m and the LOS ANGELES LAKERS at $272.5 m.  Last year, a Future Brand study of sports franchises put the Cowboys at number 1, and Manchester United at number 2.

Posted by Marty at 06:31 PM | Permalink | Comments ()

New York Court of Appeals decision holds that publication on a website constitutes a single publication under the single publication rule of defamation.

Posted by Marty at 06:35 PM | Permalink | Comments ()

I don't know why lawsuits like this get filed.  Alanis Morrisette (who owns and uses alanis.com) sues Russ Smith over alanis.net  (which, he alleges, he has been warehousing).  More damages accruing to society because NSI turned the .net TLD into a sandtrap for silly litigation (but that's a rant for another day).

Instead of making everything a federal case, how about this instead: a without prejudice demand letter saying: "if in the future you use this warehoused domain name in a manner which infringes, we'll sue, and if you sell this name, we'll send the new buyer a copy of this letter."

p.s. The ZDNet article is entitled "Alanis Sues Cybersquatter."  I'm one of those trademark lawyers for famous mark owners you read the horrible things about and I'm offended that someone should be labeled a cybersquatter on the basis of a filed complaint.

Posted by Marty at 06:22 PM | Permalink | Comments ()

Craig Mende of Fross Zelnick, famous trademark litigator, writes in to report his latest victory before the Second Circuit.  Times Mirror published FIELD AND STREAM magazine for about 100 years and sold some items related to hunting and fishing.  Field and Stream Licenses Company had been selling all sorts of goods and services, including items related to hunting and fishing, for over 90 years.  The two parties had a coexistence agreement since 1984.  Now it was time for TM to sue FSLC over hunting and fishing items.

Two holdings of interest: two parties can use the identical mark and both can still own strong marks (use that the next time you get sued for dilution).  Also, this case deals with the overlap problem.  If an area of interest can be argued to be a natural area of expansion for two mark owners, the first one gets it.  If both go in and do nothing for, say 90 years, neither own exclusivity in that area.

And that's why you have to file trademark applications early and often.

Posted by Marty at 06:09 PM | Permalink | Comments ()

While I am proud of my Ping Whois (gives you full whois and whether websites and email are configured), I am always prepared to suggest other improved whois products, such as this multi-TLD wildcard search.  Thanks to Icann Blog for pointing this out.

Posted by Marty at 10:13 PM | Permalink | Comments ()

Ernie the Atorney whose blog I heartily recommend, turned me on to this article debunking the claim, "Half the world has never made a phone call," a factoid quoted by UN Secretary Generals, presidential candidates and other People Who Know The Facts.  Just remember what the Firesign Theatre said.

Posted by Marty at 06:44 PM | Permalink | Comments ()

The Wall Street Journal ran a column yesterday (if it wasn't subscription only, you would be able to read it in seconds by clicking here but it is so you can't), supporting the view that there really isn't a field of cyberlaw.  The column quotes from a law review article entitled Against Cyberlaw: "The steam engine . . . probably transformed American law, but the 'law of the steam engine' never existed."  This reminded me of Prof. Lessig's rebuttal of Judge Easterbrook's quote that "there was no more a law of cyberspace than there was a law of the horse."

Posted by Marty at 03:59 PM | Permalink | Comments ()

The FTC has warned operators of various major search engines that they have to make it clearer that companies have paid to be included in web search results.

Posted by Marty at 12:07 PM | Permalink | Comments ()

Ben Edelman of the Berkman Center at Harvard has compiled another study on domain names, this one entitled "DNS as a Search Engine: A Quantitative Evaluation."  As a matter of disclosure, I admit that I suggested this project to Ben and helped in its methodology.

The study is a first step at proving what many assert: The domain name system is a good addressing system but a bad directory.  The study took 100 famous brands, 100 randon "plain old" brands, 100 random trading names and 100 college names, and used those names as search terms in the DNS (by affixing .com or .edu to them), or search terms in google or as RealNames (while RealNames was still working).

My scan of the results is that the "dot com" assumption (that ACME can be found at .  ACME.COM) works for famous marks (because by now famous companioes have bought back their names), and works miserably for small companies.  Both Google and RelNames have statistically significant improved accuracy ratings for smaller companies.

I understand this to be a pilot study.  I hope there will be helpful feedback to design a more robust study, the point that debates such as "unrestricted TLDs vs. restricted TLDs" and "key words vs. search engines" can be fueled by more facts and less rhetoric.

Posted by Marty at 10:37 PM | Permalink | Comments ()

No comment on this copyright dispute.

Posted by Marty at 04:50 AM | Permalink | Comments ()