24
Dec/02

What Were The Most Important Moments in IP Law in 2002?


And what should we look out for in 2003?  Write me at [email protected] and give me your nominations (don’t say “The decisions in Eldred and Victor’s Little Secret cause I already have those on the list).



19
Dec/02

The Shape of Trademarks to Come


Justice Jacob of theUK will refer to the ECJ whether the shape of Unilver’s VIENETTA ice cream is a registrable as a trademark.  My legal assistant, apparently a fan of the prduct, has offerred to testify on Unilver’s behalf, that she would be able to identify the product’s origin by shape alone.

Here is some introductory information from INTA on non-traditional trademarks.



19
Dec/02

JGLOW BY J. LO Not Yet A No-Go


Jennifer Lopez’ GLOW BY J.LO scent has apparently survived a preliminary injunction action brought by Glow Industries.



19
Dec/02

Chicago Cubs Sue Rooftop


The Chicago Cubs are suing “rooftop operators” who charge people to sit on rooftops overlooking the friendly confines of Wrigleys Field.  This was the fact pattern in my law school copyright exam. Seriously.  The law.com article mentions that there’s a copyright claim which might refer to the fact that the rooftop guys apparently have TV sets up there (because the baseball game itself isn’t a fixed work).  This is one of those rare and elusive unjust enrichment fact patterns in IP law.  More coverage here and here.



19
Dec/02

May BE not


Eighth Circuit affirms lower court decision enjoining May Department Stores from using BE as a line of clothing as a result of likelihood of confusion with BeBe clothing’s senior BEBE mark.  BeBe’s employees’ testimony of instance of actual confusion makes up for absence of survey evidence.  Thanks to How Appealing.



18
Dec/02

Her Majesty the Queen Just Another Name-Grabber


 Her Majesty the Queen and the country of New Zealand brought a UDRP against the registrant of NEWZEALAND.COM.  Regardless of your view as to whether country names or appellations of origin should be protected, they’re not covered by the UDRP.  NZ attempted to argue that because NEW ZEALAND is an appellation of origin, it is a trademark as well.  The panel was having none of that and found the Queen to be guilty of reverse domain name highjacking.  (Wipo Decision No. D2002-0754 – not posted yet but look back here in a day or two).

Now, this same country was able to pry away NEWZEALAND.BIZ from this same registrant.  Appeal?

I worry for the presiding panelist, Tony Willoughby.  If you hold that your Queen is a reverse domain name hijacker, are you imprisoned in the Tower of London?



17
Dec/02

The ROLLS ROYCE of Branding Mistakes


My former Mother Firm used to send demand letters on behalf of Rolls Royce telling people that they could not describe their product as the ROLLS ROYCE of trash compacters (for example). Apparently, according to today’s New York Times, they should have been sending Thank You letters. This advertising column reports on a trend of using unrelated brand names to sell brands. Examples include: comparing a SATURN sedan to GREY POUPON (to mean “not bland”), and labeling MILLER LITE “the WD-40 of Conversations” (beer as social lubricant, not grease).

As an ad-exec claims, “When you use a brand as a celebrity, you’re leveraging a well-known name to create an image of your own. […] It’s a very telegraphic way to communicate.”

Uh, exactly.

I can think of three reasons why brand owners should not do this: dilution, genericism, and tarnishment.

First, the conventional wisdom is that trademark dilution by “whittling” occurs when a previously known brand is juxtaposed with an unrelated product. The cognitive psychological underpinning of why dilution should be a tort is that the brand owner has successfully invested in brand recognition in a tight stimulus-response loop. The stimulus, namely, the brand, produces the response, namely, recall of that manufacturer’s product. The presence of usage of the brand to an unrelated product, e.g. BUICK shoe-polish, disrupts that tight stimulus-response loop. Google the string “Welkowitz Swann dilution” for more information.

The second danger is that this encourages the use of the brand to stand for the product-category, and that’s genericism. The usual suspects include aspirin, escalator, and thermos.

And finally, I would be worried about tarnishment by metonomy. This is when a brand name is used to denote a concept. You know it as “SPAM” (to mean unwanted e-mail, not the pork product) (this is not realy actionable, but the owners of SPAM will tell you it’s a bad thing).

The article indicates that these commercials have a “legal acknowledgement that appears in tiny type at the bottom of an ad,” which “suffices as compensation for the brand giving the piggyback ride […].”

No comment on that (unless you’re a client).



17
Dec/02

Dial 431.322.12 For Fake


So the National Law Journal ran a short piece on page A14 of this week’s issue entitled “Urban myth takes.”  It seems that someone got it in their head to put a disclaimer on their site saying that if you are affiliated with [law enforcement, or such and such a group] then if you enter this site you will be violating Code 431.322.12 of the Internet Privacy Act . . . and you cannot threaten our ISPs [etc.]”  However there is no such Act.  But many sites copied this disclaimer.

Here’s something fun to do: use “431.322.12 [famous designer trademark]” as a Google term and you will get a nice list of websites selling knock-off (and possibly counterfeit) versions of that designer’s product.



16
Dec/02

Happy Birthday


to my lovely wife Melinda.



16
Dec/02

I Love .LA Correction


I’ve read the ICANN announcement on the .LA ccTLD more closely (at the urging of two readers), and they are quite correct, there is nothing to suggest that the new domain manager will operate .LA as an ‘open’ domain – that is to see allowing registrations to non-Laotions.  Accordingly, anyone with plans for movies.la, etc., will have to wait, or more to Laos.

p.s. To immediately reprimand me for the dissemination of incorrect information, please use the Yahoo Instant Messaging feature on the left tool bar.  If I am the computer and see the message notification, I will either respond to you at once, or pretend I’m not at my computer.