No criminal liability of wholesaler for printing trademark on re-packaged goods, via law.com.
A doctrine which has populist appeal and found itself codified somewhat in the UDRP, but which has NOT been trademark case law since Justice Oliver Wendell Holmes blue-penciled it approximately 90 years ago, is “the sacred right to use one’s own name.” If your name is Giorgio Armani, and you are not that Giorgio Armani, and you wish to sell clothing, while you may introduce yourself as Giorgio Armani to your friends and colleagues, but may not use GIORGIO ARMANI as a trademark. And if your name is Martha Stewart (fill in topical joke here).
Someone named Kenneth Cole successfully defended a STOP proceeding brought by the Kenneth Cole, over the domain name kennethcole.biz. Mr. Cole was not the original registrant and the panel accepted the argument that the regiIn this case, someone named Kenneth Cole, of West Virginia, defeated the KENNETH COLE strant obtained the name on behalf of Mr. Cole.
It is not clear to me why, except in the case where using the true registrant’s name would disclose confidential information (such as in the case of a new company name), why a domain name company would ever register a domain name in its own name, on behalf of a customer.
Also, as I read the case, I find myself re-calling a case I worked on for FISHER-PRICE, where a toy company went out and found a guy named FISHER and a guy named PRICE, arguing that it could then sell FISHER PRICE toys. I am also reminded of a reported case where someone went out and found a guy named ALFRED DUNHILL.
Just free associating.
UPDATE: Prof. Froomkin of icannwatch.org wrotes in to state that to the extent UDRP codifies anything, it codifies existing law, in that one can register one’s own name for various purposes (distinguishing “registration” from use as a trademark). I’ll clarify: Use of own’s own name is not an absolute against trademark infringement, registration of one’s own name is a defense against cyber-squatting (apart from the trademark ramifications).
Habanero and Scotch Bonnet are generic names for hot peppers, TABASCO is a brand name. The folk at McIllhenny have developed a strong trade dress for TABASCO, consisting in part of a white diamond on a red background, It has licensed that trade dress for a variety of products. So when someone brought out a ‘Cajun’ tanning lotion using a white diamond on a red background, and utilizing “spice” imagery, McIllhenny protested. Here is a photo and article on the dispute.
Here is a link to one of the many “private label” hot sauce purveyors.
Good collection of links from Slashdot on various copyright matters here.
Be Back Soon!
Here is the text of Lawrence Lessig’s recent speech on copyright and patent terms. I hadn’t known that Mickey Mouse’s first animated film “Steamboat Willie” was a parody of a Buster Keaton film of the time, ‘Steamboat Bill.’
Regardless of how Eldred turns out, at some point the valuable properties of the 20th Centruy will fall into the public domain (as has already happened to Sherlock Holmes and Tarzan). However the property owners will have maintained trademark rights in aspects of these properties and trademarks can be renewed indefinitely as long as you use them. As more properties created during the birth of mass media in the early 20th century fall into the public domain, we will see an accelaration in the development of the jurisprudence of the interplay between use of public domain material and trademark (the owners of properties such as Peter Rabbit and Tarzan have been litigating these issues already).
One possible argument could go like this: “Yes your honor, while this illustration of Winnie the Pooh is in the public domain as a copyright, we have been using it as a trademark for 20 years on our ‘Classic Pooh’ line of towels, and this survey shows that 75% of all respondents who see a product bearing this illustration of Pooh on a towel, believe that it originates with us.”
That’s an interesting case.
I will report without comment this article from The Times of India, which contains the sentence “the arrival of the “brand” in the past century has prompted brain evolution.” That scary thought aside, the article refers to the on-going research into the scientific basis for brand-positioning and the two key concepts of trademark law, infringement and dilution. Thanks to Xplane for this.
Is this a guy who understands the highly intricate world of technology that he seeks to regulate? Or is he a guy that sees only a world of screen doors and mosquitos?
A Washington Post article on 10 ‘critical flaws’ of rhetoric “in magazines and newspapers, on Web sites and blogs, even . . . on television.”