The Trademark Blog

The Fourth Circuit tells us:

Generally speaking, chemical crabgrass control products are most effective when applied to "pre-emergent" crabgrass . . . the products are also effective on early "post-emergent" crabgrass but are ineffective when applied to mature crabgrass plants . . .   Scotts [plaintiff] contends that the Vigoro [defendant] package misleads consumers into believing that Vigoro can kill mature crabgrass.

editor's note - I have found that doing nothing until the first frost kills the crabgrass is effective.

This is about depicting mature crabgrass on the crabgrass killer package.  Scotts has apparently been in and out of court over the Vigoro packaging which looks something like this.  Scotts argues that because the product only kills crabgrass up to four weeks old, rather than the mature crabgrass depicted on the bag, the graphic conveys the literally false message that Vigoro is capable of killing mature crabgrass.  This sounds a little suspect (I mean are they going to depict crabgrass roots on the package?) until you hear that Scotts came up wth survey evidence that 92.5%  of the respondents understood the package to mean that.  This impressed the District Court.

However, the Circuit Court threw the survey into the dustbins of expensive surveys given zero weight due to faulty methodology.  Scotts also wasn't able to show that Vigoro intentionally set out to deceive anyone into thinking it could kill mature crabgrass.  Hit the remand button.

Scotts v. United Industrial, 65 USPQ2d 1161, no. 02-1738 (4th Cir. Dec 23, 2002).

Posted by Marty at 11:16 PM | Permalink | Comments ()

OK, I need to replace my office fax and copier.  Do you guys have any recommendations? Email marty@schwimmerlegal.com.

Posted by Marty at 10:08 PM | Permalink | Comments ()

The latest report from Ben Edelman, entitled "Large-Scale Registrations of Domains with Typographicl Errors."  The author's abstract:

The author reports more than five thousand domains that consist of minor variations on the addresses of well-known web sites, reflecting typographical errors often made by Internet users manually typing these addresses into their web browsers. Although the majority of these domain names do not suggest the presence of sexually-explicit content, and although many are variations on domain names frequently used by children, more than 89% offer extensive sexually-explicit content. In addition, these domains are presented in a way that temporarily disables a browser's Back and Exit commands, preventing users from exiting easily. Most or all of the domains are registered to an individual previously enjoined by the FTC from operating such domains, and these domains remain operational subsequent to an injunction ordering their suspension.

Posted by Marty at 06:27 PM | Permalink | Comments ()

Motley Fool suggests that if Philip Morris' name change to Altria succeeds in diverting attention to its tobacco suit exposure, AOL TIME WARNER will change its name to WHEN I SNAP MY FINGERS YOU WILL FORGET THE MERGER EVER HAPPENED.

Posted by Marty at 06:27 PM | Permalink | Comments ()

Imaginarium is a sub of Toys R Us.  It sells the kind of educational toys I wish my kids would like, instead of Transformers.  In addition to stores it has a website at imaginarium.com, which re-directs to an Amazon site, per a marketing arragnement.  Step Two is a Spanish company which has a sub also named IMAGINARIUM, which also sells educational toys.  It's website at imaginarium.es has a similar blue rectangular logo.  Their stores allegedly have the same "unique facade" as Toys R Us' Imaginarium stores.

Toys sued Step Two for trademark infringement in the U.S.  The District Court in New Jersey dismissed for lack of personal jurisdiction.  Third Circuit reviewed.

At first glance, Step Two appears to have neither systematic nor specific contacts with the U.S.  Its website is in Spanisn, it's  designed for Spanish users and orders are only accepted in Spanish currency.  The site states that goods can only be shipped within Spain.

Toys made two trap sales - employees (with hispanic surnames) placed orders from the U.S. which were fulfilled.  Now, these sales are not going to create specific jursidiction - you cannot create your own jurisdiction, as they say.

But what the two trap sales did accomplish, it seems, was (1) undermine the affidavit from Step Two stating that it had never shipped into the U.S.; and (2) suggested that if Toys was able to conduct jurisdictional discovery, it might uncover more shipments into the U.S. (or other relevant contacts which could support personal jurisdiction - Step Two did make purchases from U.S. suppliers who Toys suspects, I suspect, of helping Step Two rip off Toys' trade secret information).

Accordingly, the Circuit Court has reversed the dismissal and remanded to allow Toys to conduct discovery relating to jurisdictional.

Toys R Us v. Step Two, No. 01-3390 (3d Cir Jan 27 2003) (thanks to How Appealing for spotting the text).

Coupla points: this case now is one of the "goto" cases when researching an Internet jurisdictional issue, as it lays out the previous law nicely.  Also, if you play with the metasearch, you will see that Step Two has the upper hand, registration-wise, in Europe.  Don't let this happen to you!  Consult international trademark counsel! I'm one.

Posted by Marty at 06:15 PM | Permalink | Comments ()

Al Jardine was one of the other members of the Beach Boys.  The BEACH BOYS trademark is owned  by a corporation owned by Brian Wilson, the estate of Carl Wilson, Mike Love and Jardine.  Any shareholder was to be able to use the name pursuant to a license, however Jardine didn't come to terms with the corporation. Jardine and Love began touring with separate bands.

Jardine promoted his tour as AL JARDINE of the BEACH BOYS and Family and Friends; THE BEACH BOYS "FAMILY AND FRIENDS"; and BEACH BOYS AND FAMILY among other names.  There were incidents of actual confusion - some show organizers canceled bookings after learning that "Jardine's band wasn't what they thought it was."  What that probably means was that they learned Mike Love wouldn't be singing.

The BEACH BOYS corporation sued Jardine for trademark infringement.  District court ruled against Jardine at smmary judgment. Setting aside whether there was a valid license, the Ninth Circuit analyzed Jardine's fair use defense on appeal.

There are two types of fair use in Ninth Circuit land: descriptive fair use and nominative fair use.  Descriptive fair use is the use of a term in its primary, non-trademark meaning.  In this situation it would have been using the term Beach Boy to refer to a boy on a beach.  That was not the situation here.

Nominative fair use has a three part test: (1) the product can't be readily identifiable without use of the term; (2) defendant uses only what is reasonably necessary to identify its products; and (3) the user must do nothing to suggest sponsorship or endorsement by the trademark holder.

As for number one, Al Jardine is allowed to indicate that he is a former Beach Boy.  He doesn't have to say that he was a member of that band headed by Biran Wilson which released Pet Sounds, you know the one . . . So he passes test number one.

Second, he used only what was reasonably necessary - he didn't use Beach Boy logos, Beach Boy album covers, didn't use more than was needed to identify his role as a Beach Boy (but see comment below). Two for two.

Jardine screwed up on element three.  By displaying the term BEACH BOY more prominently than FAMILY AND FRIENDS, he suggested sponsorship.  Also, by using BEACH BOYS in the name of his band, he caused confusion (I think that this fact represents "taking more than you need" and could have been mentioned in element two).  The fact that there had been actual confusion weighed heavily against him.

Injunction affirmed.   Full text here.

P.S.  Here is an ad for AL JARDINE'S FAMILY AND FRIENDS.

Posted by Marty at 11:39 PM | Permalink | Comments ()

Here's an article about a trademark dispute but this comment isn't about the dispute itself.  It's about the fact that the reader's understanding of the dispute would be enhanced merely by depicting the logos involved.  The owners the 5 A Day For Better Health logo say that the 3-A-Day For Stronger Bones logo looks "suspiciously similar.   This linking thing isn't that difficult.

Posted by Marty at 03:57 PM | Permalink | Comments ()

Further coverage on the Register.com takeover battle.  Say one thing: entrust managment of your name portfolio to a law firm, you don't worry about staff being distracted by takeover battles.  Partner defections, maybe, takeover battles, no.  Interesting quote:

"They're incredibly difficult people to deal with, and that's one of the big problems when it comes to anyone buying them out," a source familiar with the situation said.

Posted by Marty at 10:46 PM | Permalink | Comments ()

Suppose you grow grapes for a living and you believe that your grapes are better than everybody else's grapes.  In fact, you spend a lot of money branding your grapes so that people will choose your grapes, not just anybody's grapes.

Now here comes the state telling you that you have to contribute money to some grape marketing board so that it can run a stupid generic grape advertising campaign, which in your view, sends the wrong message that grapes are grapes.  Why should you be forced to pay money for a message that (1) you don't agree with; and (2) might hurt you competitively?

Here's a Ninth Circuit decision discussing compulsory agriculture advertising laws - thanks to How Appealing for the link.

Posted by Marty at 09:13 PM | Permalink | Comments ()

Cert has been denied in Mattel v. MCA, the Barbie Girl case, in which Mattel, owner of rights in the BARBIE doll ("the American girl with the fictitious figure") protested a song entitled BARBIE GIRL.  The Ninth Circuit decision (background and text here) had concluded with the admonition that both sides should chill.

Posted by Marty at 09:05 PM | Permalink | Comments ()

Only lawyers may make ex parte communications to the Commisioner of the Patent and Trademark Office.  Governor Jeb Bush is not a lawyer, he is the brother of the man who appoints the Commissioner of the Patent and Trademark Office.  According to this Washington Post story (additional background here), he wrote a letter to Assistant Commisioner which suggested that the PTO find for Bacardi in a matter.  According to the article, the Trademark Trial and Appeal Board has now held that the letter was a permissible status inquiry, and not advocacy.  The decision is not available as of yet through the TTAB.

Given that Bacardi had contributed $50,000 to Gov. Bush's re-election campaign two weeks prior to the letter being written, that was an expensive status inquiry.

Posted by Marty at 08:11 PM | Permalink | Comments ()

Via IcannWatch.  Verisign proposes to charge a $85 wholesale price to registrars when registrants renew after the domain name has expired, but before the end of the redemption grace period.  Now there are no additional charges for renewing late. 

Posted by Marty at 10:21 PM | Permalink | Comments ()

Undeservedly short answer to the excellent questions asked by Ernie the Attorney here:

Denise does not likely have nationwide common law trademark rights in the term BLAWG even though she coined it because, as far as I know, she does not use it as a trademark.  Specifically, she uses BLAWG to describe the class of blogs known as law blogs, and does not use it to identify a source of goods or services.

She does appear to have nationwide common law rights in the mark BAG AND BAGGAGE for the provision of legal information.  She could also consider coming out with a line of BAG AND BAGGAGE items similar to those she discusses here.

One wonders what would happen if another attorney name Ernie was to advertise himself as ERNIE THE ATTORNEY. One may use one's own name to identify themself (as our readers know) unless such use causes confusion.  I would happily sign an affidavit that to me, the mark designates no one other than blogdom's Ernie (and his place on the Userland Top 100 would be good additonal evidence of h sucsecondary meaning).

Inherently registrable blawg names include Bag and Baggage, InstaPundit, How Appealing, Copyfight, Excited Utterances (one of the great blawg names), and LawMeme, as they are either coined, arbitrary or suggestive of law blogs.

Attorneys Suck describes one quality of the provision of legal information and would require secondary meaning to be protectable as a trademark.

As for Trademark Blog, it's a good thing I own the domain name.

Posted by Marty at 10:16 PM | Permalink | Comments ()

The judge in the LINDOWS csae has dismissed Lindows.com's motion for summary judgment, ruling that it is a disputed factual issue as to whether WINDOWS was the generic term for "graphical computer operating environment" software.  Text of order here.  The case now goes to trial in April.

A key holding in Part VI of the Order is that the court declined to determine whether the relevant date for determining genericness should be 1983, when MS adopted whether the mark, or the present or perhaps 2001 when Lindows adopted the mark.  The facts were disputed as to the status of the term in 1983, and that was sufficient to dismiss the motion.

The Lanham Act indicates that a generic mark never becomes protectable - that would suggest that the relevant inquiry should be whether the mark EVER became generic, and if it did, it can never be "reclaimed."  So if WINDOWS was generic the day before MS adopted the mark, that's the end of it - no trademark.

On the other hand, this may be an odd case.  For one thing, I would submit that WINDOWS is absolutely not a generic term for graphical operating environment software today.  No one would go into a store and ask for windows software, not expecting to be given an MS product.  Of course. it's the actions of MS which create that reality, and that cuts both ways.

On the third hand, consider the equities of the case.  This is not a situation in, for example, 1984, where a company like Quarterdeck (remember them?), is using the term generically and MS is asserting rights.  This is a situation where a well-funded company adopted LINDOWS in 2001 knowing that WINDOWS was functioning in the marketplace (if not in the Lanham Act), as one of the most valuable trademarks in the world.  This may be an argument to give the situation in 2001 some weight.

As an aside, the decision, and supporting material Lindows has supplied on its website provides a stroll down memory lane for we geezers who used personal computers in the early 80's (not that I long for the KayPro I used in law school).

Posted by Marty at 05:51 PM | Permalink | Comments ()

 When I met InstaPundit at a conference in November, I shamefully admitted to him that I didn't know what 'fisking' meant.  He patiently explained that it is a line-by-line analysis of a piece. This article appeared in today's NY Times.  You will have to forgive my knee-jerk reaction to any article which contains the quote "Trademark law is a problem," and then supports that assertion with the author's free association to trademark disputes which involved celebrities or big companies.  OK, here goes.  Non-indented text mine, blue indented text their's.

"AT&T Ad Trips Over a Trademark

By NAT IVES

Freedom of expression, it turns out, may not be for everyone."

OK, you've got my attention.

"Kembrew McLeod, assistant professor of communications studies at the University of Iowa, believes that "freedom of expression" — or at least the phrase — belongs to him, because he registered it as a trademark in 1998. And now that AT&T is using the phrase in some print ads, he wants the company to stop."

A David and Goliath story, good, go on. 

"Yesterday, Mr. McLeod sent AT&T a "cease and desist" letter, asserting that consumers might infer a link between the company and his anti-corporate publication, "Freedom of Expression."

I checked and Mr. McLeod's registration covers creative writing booklets, a far cry from telecommunication services.  Maybe he has a magazine on the side.  There is an illustration of the AT&T ad in the Times and FREEDOM OF EXPRESSION is used as copy in an ad, arguably not trademark use.  There is a fair use defense in this type of fact pattern which AT&T is or is not entitled to.

 The bigger idea behind his legal action, he said, is to object to corporate power over words, speech and even ideas.

But his demand letter is the assertion of such power.  Did he put a little 'just kidding' emoticon at the end of his letter?  And he and the author of the article should know) that trademark law already embodies the fix he wants, namely the fair use defense. 

"I do want to register my genuine protest that a big company that really doesn't represent freedom of expression is trying to appropriate this phrase," he said.

But AT&T isn't claiming exclusivity in the phrase.  Why symbolically protest a claim which isn't being made?

AT&T has not received the letter and will not comment before it does, said Jeff Roberts, a company spokesman"

Must have been sent regular mail.  And if AT&T doesn't ever reply to this letter, will the professor file an ironic lawsuit?  Because Federal Rule 11 prohibits 'just kidding' suits.

 "The notion of intellectual property became tabloid fodder in 1993 when NBC lawyers tried to prevent David Letterman from taking skits like Stupid Human Tricks from "Late Night" to his new CBS show.

Wait, I'm confused.  We were talking about some kind of public interest thing.  David Letterman's IP dispute with NBC was a common commercial dispute (albeit one which involved David Letterman).  Is the point that tabloids began covering IP issues in 1993?  So this is a tabloid trend?   

Then the game show hostess Vanna White successfully sued Samsung Electronics for making a commercial with a robot in her likeness without her consent."

I'm still confused.  Using a cartoon likeness of Vanna White without her authorization in a commercial advertisement is or is not a violation of her "personality rights," a concept dating back a hundred years.  What has that to do with freedom of expression?

 "Dust-ups proliferated . . .

Says who?

and by last October, the premise was pervasive enough to drive a plotline on an episode of "Curb Your Enthusiasm" on HBO in which the comedian Richard Lewis tried desperately to prove he coined the all-purpose pejorative, "blank from hell" (as in "nanny from hell")."

Funny episode.  But I don't think the premise was necessarily IP, I think the premise was the vanity of authorship.  Richard Lewis didn't want money, he wanted to be credited in Bartlett's.

You know, the season finale with the chef with Tourette's, that might be the funniest episode ever.

 "Trademark law really wasn't that big a problem several years ago," said Lee Tien, senior staff lawyer at the Electronic Frontier Foundation, a technology-oriented civil liberties group in San Francisco.

Oh-oh.

Traditionally, the litmus test was customer confusion: if a potential trademark infringement confused customers, it was probably illegal, he said.

OK.

But the courts increasingly have ruled that diluting a brand — by using a similar name even in an entirely different business — is against the law, Mr. Tien said.

This wasn't a judicial trend, the law changed.  Federal law was amended in 1995 to make nationwide a concept which had previously been the law in many states - that dilution of a trademark was actionable.  But now at least this article has a theory with a testable premise in line with the opening paragraph.  The Federal Dilution statute may have unintended impact on civil liberties.

"And the spreading reach of the Internet has brought every McDonald's dry cleaners and McDonald's car wash into potential conflict with the McDonald's Corporation."

Well, the statute's not really retroactive, so not every McDonald's dry cleaners.  But wait, are we talking about the effect of the dilution statute on civil liberties, or on choosing business names?  Because we could have that premise also: the new federal dilution statute creates uncertainty in naming businesses.  By the way, if you substitute KODAK for McDONALDS in the sentence above, dilution sounds like a plausible concept.

One result is a lawsuit from Victoria's Secret in Columbus, Ohio, part of Limited Brands, accusing a store in Elizabethtown, Ky., originally named Victor's Secret, of dilution. Although the store was renamed twice — Victor's Little Secret and then Cathy's Little Secret — the case still landed before the United States Supreme Court in November.

OK, we're sticking with the small business angle.  But apparently the Supreme Court is going to help out on the uncertainty problem.

"No one would think for a moment that Victoria's Secret has anything to do with Victor's Little Secret," said Jonathan Band, a partner at the Washington office of Morrison & Foerster. "But he's clearly trying to trade on the name."

The reader would be more apt to agree with this statement if the article had indicated that VICTOR'S SECRET was a lingerie and sex toy shop.

The court now has to decide how much damage, if any, Victoria's Secret has been done, he said.

Close enough.  If you read the transcript of the oral aruments, the Supreme Court isn't sure what's being asked of it either.

A ruling is expected this summer.

"While such contests often pit large trademark holders against mom-and-pop companies, it is not always that way. Behemoths are subject to scrutiny as well, including Microsoft, which is suddenly defending its trademark on the word "Windows" in court.

The article just free-associated and introduced Microsoft.  We now bring our MS baggage with us as we evaluate its case.

Microsoft began the legal dispute when it filed suit against Lindows .com Inc., in December 2001, asserting that Lindows, a maker of Linux-based software, was freeloading on the Windows name.

So why did the owner of Lindows choose LINDOWS?

Microsoft said it had invested $1.2 billion in marketing Windows, which it had successfully registered as a trademark. Lindows .com later sued to strip Microsoft of its trademark, arguing in part that "windows" was too generic to trademark. The case is pending."

The focus of the article has gone from "freedom of expression" to "celebrity IP disputes" to "effect of dilution law on civil liberties" to "effect of dilution law on small businesses choosing names" to "trademark stories the Times have covered in the past month which involve Microsoft."

 "Daniel R. Harris, partner at the law firm of Clifford Chance, which is representing Lindows.com, said Microsoft wanted to reserve a common word exclusively for its own marketing.

Given that trademark law allows registration of dictionary words, and has for a long time, this is both legal and common.

"They're trying to use their monopoly power to monopolize a word out of the English language," he said."

Populist arguments from the world's largest law firm.  APPLE and MACINTOSH are words out of the English language.  Apple can plausibly challenge the use of LAPPLE or LACINTOSH for linux-capable computers.  Is WINDOWS for GUI software against LINDOWS for GUI software different?  The real issue in the LINDOWS case was stated previously: was WINDOWS a generic term for windowing software when Microsoft took that word.  The prohibition against generic and descriptive words protects other traders who may wish to use that term in connection with their own goods.  Incidentally, I'm aware that I an arguing with Lindows' lawyer now, not the article.

"Not surprisingly, Microsoft takes a different position. "Our viewpoint is a fairly simple one," said Jon Murchinson, a company spokesman, "that Lindows not free-ride on the investments that we've made in building Windows into one of the most recognizable brands in the world in the last 20 years.""

OK.  Microsoft is either right or wrong. 

 "The stakes seem lower for AT&T.

Right, we were talking about AT&T and freedom of expression a while ago.

The ads using "freedom of expression" ran only in college-oriented newspapers during the third quarter of last year, said Mr. Roberts, the AT&T spokesman.

For Mr. McLeod, however, a confrontation with AT&T could generate welcome publicity, and not only for his belief that private ownership of language can impede the free flow of information."

Which belief was not supported by a single instance of "private ownership of language" being utilized against public use of information.in this article.

His trademark certificate will be part of an exhibit of art on the fringes of intellectual property, entitled "Illegal Art," opening in Chicago on Saturday.""

See, everybody has something to sell.    

Posted by Marty at 11:06 PM | Permalink | Comments ()

There is apparently a battle for the control of publicly traded domain name registrar Register.com (ticker symbol RCOM).  RCM Acquisition made an unsolicited offer last week, now Zackfoot Investments has made a higher offer.

Other publicly traded companies in the "brand" sector are Verisign (ticker VRSN), Tucows (TCOW.OB), Information Holdings Inc. (IHI), Melbourne IT (MLB on the Australian Exchange) and NetBenefit (NBT on the London Exchange), if you were thinking of putting together a Naming Mutual Fund or something.

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

This article from the Internet Law Researcher, reprinted on the INTA website, is a good list of IP resources on the web.  Disclosure: the article says nice things about this blog.

Posted by Marty at 09:13 PM | Permalink | Comments ()

BULLION is a mass of gold or silver. BOUILLON is a clear soup from beef. chicken or other meats.  BOUILLIOUN is a surname of a former president of Boeing and a registered trademark of Bouillioun Aviation Services.  BOUILLABAISEE is a fish chowder. 

Registrant filed for BOULLION.COM.  She testified in this UDRP that she had intended to file for BULLION.COM, and put up a site having something to do with precious metals (which she never did).  Complainant sent a letter asking for the name and registrant offerred to sell it for an exceedingly high amount of money.

Panelist, suspecting typo-squatting, states:

It is difficult to know exactly what was in the mind of Respondent at the moment she registered the domain name, in terms of good or bad faith. However, the fact remains that soon thereafter, she began receiving emails intended for Complainant and did not make any effort to consider changing the domain name. Instead, she chose to attempt to profit from the confusion and sent financial solicitations via email to Complainant’s employees. Knowing of the misspelling of the word for gold bullion (her alleged motive for registering the domain name), she continued with the domain name containing the incorrect spelling.

Two other very relevant facts are determinative of this case:

1) There is no disclaimer whatsoever by Respondent on its website to the effect that it is not affiliated with Complainant, which implies an intention to profit from web traffic confusion with Complainant.

2) The extraordinarily high asking price for the domain name, between U.S. $500,000 - $ 1.37 million, obviously in excess of Respondent’s costs in registering the name, or even of Respondent’s claim to try and recoup its $ 70,000. business investment.

CONCLUSION - Respondent did not change the domain name when she soon became aware of its similarity with Complainant’s mark. Instead, she saw the tactical potential to try and take advantage of the situation."

Well, that may be, but IMHO, the "reversible error" is the phrase "It is difficult to know exactly what was in the mind of the respondent the moment she registered the name . . ."  It is my understanding that bad faith has to be shown at the time of registration and afterwards, and when the panelist concedes that it is hard to infer such intent, then, even if the panelist suspects cyber-squatting, the case is not suitable for the expedited, limited-record UDRP proceeding.  While respondent's post-registration behavior may be repugnant or greedy or bad, it's not cybersquatting if there was no some type of bad faith at the moment of registration.

For a cases where panelists do suspect that the respondent is not so decent, but the record isn't sufficient to transfer the name, see the RAIDERETTES and the FOREIGNER decisions.

p.s. Thanks to the Intellect Law Group for bringing this case to my attention.

Posted by Marty at 03:38 PM | Permalink | Comments ()

LEGO bricks, with their studs with 360 degrees of clutching power, lie in the interstices of several forms of intellectual property: patent, copyright and trade dress.  Its success forces Lego to fight on many fronts.  It has now prevailed on a copyright theory in China, against a company which copied its bricks.  Interestingly, the remedies included seizure of the machinery to manufacture the duplicate bricks, and the publication of a written apology.  This is significant in China's attempts to "normalize" its treatment of IP rights (but see  . . . )

Posted by Marty at 02:28 PM | Permalink | Comments ()

In this question to a small business advisor from entrepreneur.com, we disagree with the bit about hiring a patent lawyer to file a trademark application.  We also disagree with the bit about filing  trademark applications oneself.  Previous discussion on who should file here.

My theory is that the common confusion between patents and trademarks is caused by the fact that there is one government agency, namely the Patent and Trademark Office, to handle these two separate rights. 

Posted by Marty at 05:49 PM | Permalink | Comments ()

Washington Post editorial entitled "Free Mickey Mouse," advocating "fix" of copyright system.

Posted by Marty at 04:51 PM | Permalink | Comments ()

Monster Cable Products (perhaps you have their speaker wire), also sells alkaline batteries.  The packaging for the batteries claims that they last 25% longer than standard alkaline batteries.  Energizer, which, with Duracell and Rayovac, provides 95% of the standard alkaline batteries sold in the U.S.,  took umbrage at the clam and hired an independent lab to test, and it found that Monster batteries lasts 9% less than those of Energizer.  Here is the false advertising complaint via Amlaw.com.

Stickler point:  Energizer alleges that even Monster's own packaging is an admission of falsity.  The packaging shows a bar graph comparing MONSTER batteries which last 230 hours, to Brand A, which lasts 170 hours, and to Brand B, which lasts 190 hours.  Energizer alleges that 230 is 18% more than 190, not the claimed 25%.  That may be, but I'm of the view that 230 is 21% more than 190.

Posted by Marty at 10:43 PM | Permalink | Comments ()

Professor A. Michael Froomkin, one of the editors of ICANN Watch, has authored an upcoming article for the Harvard Law Review entitled "Habermas @ Discourse.net - Towards a Critical Theory of Cyberspace."  The article suggests that the Internet Engineering Task Force is an admirable form of decision making body.  There is also a bit on blogs.

Posted by Marty at 08:58 PM | Permalink | Comments ()

At some point, the Supremes will render a decision in the VICTOR'S LITTLE SECRET case, which will tackle just what in the world one has to prove when one proves trademark dilution.  So, to prepare for cocktail parties with your trademark lawyer friends, you may wish to review:

1.  Oral Argument transcripts;

2.  Respondent's Brief;

3.  Government amicus brief;

4. INTA amicus brief.

If you have a link to the petitioner's brief, please send it in.

Posted by Marty at 08:33 PM | Permalink | Comments ()

Dulces Anahuac of Mexico sells salt-flavored lemon candy under the trademark LIMON 7.  It also apparently still makes candy cigarettes, but that's another story.  It granted an exclusive license to Salt of the Earth to sell LIMON 7 candy in the U.S.  You can read from the complaint here, via Amlaw.com, how the deal went sour.

This case illustrates the sad but true practice pointer that when you are drafting a license agreement, you have to visualize your client suing the other side some day.

Posted by Marty at 05:50 PM | Permalink | Comments ()

You will notice a link to the left which say "Instant Message Us Now."  Nathan the IT department hooked it up as part of an experiment with the use of instant messaging in providing legal information.  Our IM address is schwimmerlegal.

Disclaimers: Mere communication with a lawyer does not an attorney/client relationship make (mutual agreement does that).  IM may not be an appropriate means of disclosing confidential information.  So don't.  Your mileage may vary.  All stunts performed by professional lawyers on a closed course.

Posted by Marty at 04:48 PM | Permalink | Comments ()

Slow news day as both the Demys news service and UDRPLaw.net ran stories on Michael Douglas' victory in a ERDRP action against someone who registered michael.douglas.name.  I represented Michael Douglas.

The fellow who registered michael.douglas.name also registered mick.jagger.name, russell.crowe.name and robert.diniro.name.  So here's an algorithm the .name registry could  use during the registration process - if the applicant for a .name already owns at least one other .name, then return the application, ask for more information supporting the claim, and then process the application by hand.

Of course this would reduce  the registry's cash flow by a couple of hundred thousand dollars.

Posted by Marty at 04:34 PM | Permalink | Comments ()

Thanks to Dave for the link.  While you guys are here, feel free try the Free International Trademark Metasearch and the Domain Dossier look-up tool (enter only the string - not the TLD).

Posted by Marty at 07:33 PM | Permalink | Comments ()

As previously blogged, CBS, American licensee of the rights in "Survivor," protested ABC's show "I'm A Celebrity, Get Me Out of Here" on "look and feel" grounds (see complaint at prior link). ABC has now prevailed at the preliminary injunction stage.  I'm not finding Judge Preska's decision in the Southern District on Court Web yet.  When I get a link to the decision, I'll pass it on.

Posted by Marty at 07:20 PM | Permalink | Comments ()

The Singaporean law firm of Rajah and Tann directs me to more coverage of the trademark application for .SG, brought by SGNIC, the domain manager of Singapore's .sg.  Concerned parties have until January 25 to oppose the application. Maybe ICANN should.

Folks quoted in the article raise the concern that the domain manager will use the registration against domain name registrants.  I can't rule that out but if I had to speculate, I would say that SGNIC will use the registration to police the name distribution channel.

As an aside, there is a quote to the effect that it is unprecedented for a domain manager to own a registration for the country code.  Yes, with an asterisk.  Dot TV, the manager for .TV, owns a U.S. registration for a DOT TV logo (which disclaims the words DOT and TV).

Posted by Marty at 04:33 PM | Permalink | Comments ()

A specimen is worth a 1000 of my words.  The European Court of Justice delivered an important decision last week on dilution, finding that a stylized DURFFEE logo diluted the rights of the famous DAVIDOFF logo.  Alas, the ECJ decision had no renderings of the two logos and I could find none.  Now, Stefan JAnzen emails me from Berlin with a PDF file of a German law periodical with depictions of the DAVIDOFF and DURFFEE logos.  Thank you Stefan!

Posted by Marty at 04:17 PM | Permalink | Comments ()

Amy Harmon wrote an article in today's NY Times entitled "A Corporate Victory, but One That Raises Public Consciousness."   One quote stuck out for me:

"In 1998, the [Act] was passed with hardly any debate after heavy lobbying by the Walt Disney Company . . . "

This set off a memory.  With the thanks of Nexis, a colleague, acting on my hazy recollection, was able to pull an article from the February 23, 1995 New York Times entitled "A Rights Movement With Song at Its Heart" (page 13, Section C).

The article described a meeting of a nonprofit group named Amsong, consisting of composers and children of composers, and indicated that it was lobbying Congress on behalf of proposed bills to extend copyright terms.  The president of Amsong, the daughter of Richard Rodgers, indicated that her organization was representing ". . .people who are putting a child through school on one song they wrote."

The article does not indicate that copyright extension was to the benefit of large entertainment companies.  In fact, the only reference to externalities had the opposite inference: Amsong's lawyer stated that "as works fell out of copyright, record companies and producers, freed from having to pay royalties, stand to reap a windfall  . . ."  There is no mention of Disney or any other entertainment company in the article, or to the fact that the products of the first era of American mass media, most notably Mickey Mouse, were hurtling towards the public domain.

I remember reading this article in 1995 thinking (1) how brilliant the PR strategy was, as this was the only human face of copyright extension; and (2) how amazingly unanalytical and uncritical the article was.

So is this a corporate victory which raises the NY Times' Consciousness as well?

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

Now that my estate is assured of those 20 extra years, I am going to begin work on that novel I have been putting off.

Posted by Marty at 05:51 PM | Permalink | Comments ()

Here's the decision (via Copyfight via Lessig).

Dissent by Breyer, J.

Dissent by Stevens, J.

SCOTUS Blog commentary on the decision.

Copyfight and Law Meme will be burning up the blogosphere on this one.

Slashdot on it too.

Posted by Marty at 03:48 PM | Permalink | Comments ()

Here's a Wired.com article on Overpeer, the company which performs spoofing services for entertainment companies that wish to damage files.  My concerns remain. 

Posted by Marty at 11:19 PM | Permalink | Comments ()

Someone registered a domain name which is a one-letter variation of my client's famous trademark (same fact pattern as the GE case below, different client, this happens a lot).  One of the 3 elements I have to establish to prevail in a UDRP is bad faith.  Because registrants tend not to create written evidence of bad faith, this usually has to be proven using inference.  The most common evidence of bad faith tends to be a pattern of similar behavior on the part of registrant.

The problem is that patterns are getting harder to prove.  One cause is the fragmentation of Whois.  Since the registry/registrar era began, there is no central whois which allows for searching by registrant name (and of course registrants, like the one in this case, give multiple fake names when registering domain names).  In this situation I had to trace back using an admin email address to find a telephone which I Googled.  That revealed a UDRP decision against the "true" registrant in which they registered a typo-version of someone else's famous trademark. 

But here's the thing.  If I settle with this registrant, there will be no UDRP decision.  Given that whois will give the date of the transfer as a new "Creation date," there will be no record that the prior registration ever existed.  The next person that this registrant rips off will have no way of knowing that this guy did the exact same thing to my client.

Which brings me to today's topic: market solutions for regulatory short-coming.  Snapnames (provider of SnapBack name "back order" services and whose State of the Domain reports I have praised previously), and Dialog (a Thomson Group company), have come up with a WhoWas database containing archival whois data back to 1997.  The service is available both to Dialog subscribers and as an open access credit-card based Web service.  The GC at SnapNames was nice enough to demo the product for me and it worked as advertised.

Personally, I would rather that ICANN press the registry operators to provide access to archives so that it could be easily established whether, on any given day a given domain name existed and who was the registrant, but if the Lord had intended simple solutions to the DNS, He/She wouldn't have organized ICANN as a not-for-profit California corporation.

Posted by Marty at 06:36 PM | Permalink | Comments ()

I represented General Electric in this UDRP victory over RaveClub Berlin (one of Mr. Zuccarini's aliases).  It was a default but allow me to bask in the glow of a file that can be closed and sent to storage.

Posted by Marty at 03:46 PM | Permalink | Comments ()

This is from National Law Journal's "The Docket:"

Man says show, movie infringe on his name
A Hot Springs, Mont., man who legally changed his name to Jack Ass in 1997 has filed a lawsuit against Viacom International Inc., the parent company of MTV, producer of the Jackass television show and movie. In his complaint, the plaintiff alleges that he changed his name to Jack Ass and created a character named Andi Ass to raise awareness about the dangers of drinking and driving after his brother Andy was killed in a vehicle accident. He accuses MTV of copyright infringement.
Ass v. Viacom International Inc., No. DV-02-111 (Sanders Co., Mont., Dist. Ct. Nov. 29).
FOR PLAINTIFF: pro se

Posted by Marty at 06:55 PM | Permalink | Comments ()

The Supreme Court denied cert  today in Ty, Inc.v. Publications Int'l Ltd ., 292 F.3d 512 (7th Cir. 2002) (Upholding fair use of BEANIE BABY marks in collectors' publications, Posner., J.).

Posted by Marty at 05:52 PM | Permalink | Comments ()

SCOTUS Blog's extensive linkage of the NIKE commercial speech case here.

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

Mattel requested that the Supreme Court hear its appeal of the Ninth Circuit decision in the BARBIE GIRL case (via Law.com).  This is the source of the now-famous "The parties are advised to chill" order, reported here.

Posted by Marty at 02:00 PM | Permalink | Comments ()

China has apparently blocked all blogs hosted by Blogspot (this is a Userland blog and hasn't been blocked (yet)).  For details, see Scripting News.

Posted by Marty at 04:46 PM | Permalink | Comments ()

is the real deal.  Click here.

Posted by Marty at 02:32 AM | Permalink | Comments ()

If you are losing your trademark suit at the trial level, then, as I always advise my clients, the options are settlement or appeal, not murdering the judge.

Posted by Marty at 10:43 PM | Permalink | Comments ()

To the person who came to my site using the Google term "Find Current Addresses Boat Owners Saudi Arabia," I'm sorry to disappoint you, but as long as you're here, would you like to file a trademark application?

By the way, the previous item I ran on someone getting here via "Days of the Week Panties" has itself trapped someone else using that term.

And to all you bloggers out there, please use the term MARRIOT SISTERS on your site to take some of the load off my server.

Posted by Marty at 08:14 PM | Permalink | Comments ()

This is an important ECJ decision clarifying the protection of well-known marks.  Davidoff has a famous stylized logo which it uses in part for jewelry.  A Hong Kong company named Gofkid adopted the name DURFFEE and used virtually the same script I cannot find a specimen of the logo on the web.  Davidoff sued, arguing in effect that the DURFFEE logo diluted the DAVIDOFF logo.  Whether dilution protection was available when the goods in question were identical or similar had not previously been clear.  Now it is: Davidiff prevailed.

Click here for the text of the decision and use DAVIDOFF as a search term (unfortunately the decision does not display the marks).

Posted by Marty at 08:03 PM | Permalink | Comments ()

Icann Watch has shamed me into commenting on Singapore's application to register .SG (the country-code for Singapore) as a trademark, by wondering out loud what the Trademark Blog thinks on this.  I had ignored the time yesterday because, to paraphrase Stephen Daedulus, "Domain Name politics is a nightmare from which I am trying to awake." 

First, as a matter of disclosure (and credentials, I suppose), I have advised clients on the registrabilty of top level domains as trademarks, and have an active matter on the topic, so I'm going to pull punches and merely set out the issues.

By way of background, there is no divine revelation or treaty as to who should be the manager of a country code.  You have a four way brawl between (1) the sovereign, (2) the incumbent domain manager (which sometimes is a not-for-proft entity and sometimes is a for-profit entity like Verisign or Neulevel), (3) ICANN, and (4) Everyone Else.  If this is of interest to you, you can click here for an unending list of materials on ccTLD management.  Read RFC 1591 first.

So the news of a domain manager or sovereign filing for trademark protection for its ccTLD creates a parade of horribles.  Will trademark protection give it undue power over (1) ICANN; (2) domain managers; (3) users?

My answer: no more power than it already has.

The article expresses and then rebuts the fear that if the country code is trademarked, then the domain name user becomes a licensee subject to control.  But bear in mind that we already have a situation where people use email or promote websites which contain trademarked terms (AOL or HOTMAIL for example).  These trademark owners, when they choose to intervene with content, do so through Terms of Service, not trademark.  If a person uses the email address JOE@AOL.COM in connection with his business, that is understood not to constitute trademark use of AOL.  He would have to actually name the business JOE@AOL.COM for it to rise to trademark use.  That is certainly US and EEC law (and while I invite comment from Singaporean counsel, I would be shocked if if were not the law there as well).

So while Singaporeans may already have concerns over content management by their government (the article mentions that domain name registrants are subject to some sort of TOS), were the government to obtain .SG as a trademark, this would not add to those concerns.  And we're talking about Singapore.

As to mis-use of a trademark registration as an incumbency hedge, let's get away from the Singaporean context (because there the domain manager is so closely aligned with the government).  Would trademark registration by either the sovereign or the incumbent domain name manager tilt the balance of power.

If a sovereign already in charge of a ccTLD obtains a registration of that country's TLD, then the power struggle is already over.

If a sovereign not yet in charge of a ccTLD obtains a registration, then it is going to use its power as a sovereign to obtain control anyway, and trademark law will be an afterthought.

If a domain manager obtains a registration, and then loses its delegation as domain manager, and a new domain manager steps in, then all other things being equal, that country's court would likely allow the new domain manager to fairly use the TLD to describe the country codes.

I also dimly recall proposed ccTLD best practices requiring the domain manager to renounce intellectual property claims in the TLD itself.

As to this particular application, the article did not state what services were claimed (And I don't believe there is an online Singaporean database to check), so I hesitate to comment further on that application.

Two asides - this might catch on among other ccTLD managers as a means of policing the registrar network.  My response to that is that that can be accomplished with a simple certifiction logo.  Furthermore the doctrine of trademark exhaustion will limit effectiveness of using a registration in the TLD itself as a policing tool in the re-seller market.

Second - there was an interesting detour some years ago when the operator of the alternative root TLD .WEB tangled with an entity named CORE, which wanted to run a .WEB TLD.  Google IOD CORE .WEB for more on this.

Posted by Marty at 05:45 PM | Permalink | Comments ()

Coverage of Intel's new CENTRINO brand.

p.s. Intel registered the centrino.com domain name back in February.  It filed trademark applications for CENTRINO and INTEL INSIDE CENTRINO in October.

Posted by Marty at 11:29 PM | Permalink | Comments ()

Branding by carmakers - via cnn.com.

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

A Mercedes dealership obtains the toll-free number 1-800-MERCEDES in the mid-80's.  Mercedes complains but doesn't really do anything about it.  The dealership goes a step further, and licenses the number out to six other Mercedes dealerships around the country (so if calls come from certain area codes, they are routed to those delaerships, otherwise they go to the original dealership).  Where Mercedes is during this, the case doesn't say.  In 1997 Mercedes terminates the dealership.  It then takes three years to file suit against the dealership, which still, apparently, is licensing out the 1-800-MERCEDES phone number.  The District Court rejects Mercedes on summary judgment. 

On appeal, the Court says "There is no dispute that [the dealership] only licensed the phone number but did not advertise or promote Mercedes' protected marks."  Which strikes me as odd.  The Court then says that domain name cases don't apply here.  It then concludes that:

. . . the licensing of a toll-free telephone number, without more, is not a "use" within the meaning of the Lanham Act, even where one possible alphanumeric translation of such a number might spell-out a protected mark.

And affirms the dismissal.

OK, maybe this decision was right on the record, but I'm skeptical that it is possible to market a service involving routing of calls to 1-800-MERCEDES to MERCEDES dealerships without using the mark MERCEDES, as use is defined in the Lanham Act.  Also, I would have liked to have known how the Court felt about the laches and estoppel issues here.

Decision here.

If anybody gets the number 1-800-TRADEMARK BLOG and markets it to trademark lawyers, I'm coming after them not only on trademark grounds but on unjust enrichment and conversion as well. 

Posted by Marty at 10:52 PM | Permalink | Comments ()

A lawfirm may not advise a client on its rights vis-a-vis another client (without the second client's waiver).  When evaluating trademark search report, a lawyer should not evaluate marks owned by other clients of the firm (although given that these reports contains several hundred hits, it is logistically difficult for a lawyer, even one with a fairly good computerized conflict checking system, to not inadvertently evaluate a mark owned by a client). 

One problem this presents is that the lawyer feels that he/she is doing the client a disservice by not commenting on a potentially dangerous hit.  He/she ought to say in the opinion letter something along the lines of "Ref. 43 is owned by another client and we cannot evaluate whether or nor there is a potential likelihood of confusion .  ."

However,  if Ref. 43 is a serious show-stoper, the lawyer might worry about the client not bothering to get a second opinion and walking into a mine-field.  You could call up the client and say "You ought to get a second opinion on Ref. 43, I mean you really really ought to get a second opinion and I'm just going to put this opinion letter on the side until you do"

The posters on the INTA listserv were having fun agonzing over the metaphysical parade of horribles arising from such cute practices.  HOWEVER I don't think anyone on the list was ready for one admission today:

I also caution against discussing the SearchClient's interest with a fellow attorney whose is primarily responsible and/or "possessive" of PriorClient, even within the same firm. I had the unpleasant experience of mentioning a possible conflict to such an attorney, only to watch him immediately call "his" client and advise them of the SearchClient's interest and use (both clients were existing clients with related, but not identical businesses and had different contact attorneys). This call was before a full analysis could be done of the search report and without a chance to consider or discuss the conflict of interest.

My jaw figuratively dropped when I read this.  If you find yourself in the position of attorney one and this happens, advise the management of your firm and retain personal outside counsel.  If you find yourself in the position of attorney two and you thought it was ok to disclose the confidential information of one of one of your firm's clients to another of your clients, go to your firm's library and read the whole book on professional responsibility, write the word "fiduciary duty" 100 times, and retain outside counsel.  If you are hiring partner when something like this happens, review your hiring practices (and tell your firm that it should retain outside counsel).

Then there's the issue of admitting this on the INTA listserv.

Posted by Marty at 10:21 PM | Permalink | Comments ()

Small business owner asks small business advisor Alice Jacobs:

Q: I am planning to launch an online business that markets a specialty product. I checked to see if the domain name I wanted was available. Unfortunately, the only addresses left for me to choose from are limited to one of the the new endings, .US or .info. Which one do you think is better?

Her answer here.

Posted by Marty at 11:08 PM | Permalink | Comments ()

An application for RED BULL for tequila is rejected by the TTAB on the basis of prior registrations for RED BULL for scotch whiskey and malt liquor.  Although apparently there aren't manufacturers who sell tequila and whiskey or malt liquor, the public might assume that there are.  Via the Finnegan firm.

Posted by Marty at 03:50 PM | Permalink | Comments ()

Konica and Minolta announced yesterday that it will merge to form Konica Minolta Holdings.  Congratulations to:

Registrant:
Jinhee Lee
   Rm. 101-1210, Ssangyong Apt., 702, Changsin-3 Dong Chongro-Ku
   Seoul

   Domain Name: KONICAMINOLTA.COM
   Registrar: HANGANG Systems,Inc. dba doregi.com

   Administrative, Technical, Billing Contact:
      Jinhee Lee  Applelee@lycos.co.kr
      (02)-762-7483
      
   Record created on.......: Jan  07, 2003

Mr. Lee also registered KONICA-MINOLTA.COM.

Second prize goes to:

PBP
      Prasanth panikkasseril
      704 N bruns lane
      Springfield, IL 62702
      US
      Phone: 217 720 0413
      Email: prasantpb@hotmail.com

   Registrar Name....: Register.com
   Registrar Whois...: whois.register.com
   Registrar Homepage: http://www.register.com

   Domain Name: KONICAMINOLTAHOLDINGS.COM

      Created on..............: Tue, Jan 07, 2003
     

Konica Corporation of Japan today registered KONICAMINOLTA.INFO and KONICA-MINOLTA.INFO, however they are disqualified as the trademark owner, its employees and their families are not eligible to enter the sweepstakes <irony indicator>.

Posted by Marty at 03:17 PM | Permalink | Comments ()

I'm sorry I missed this when it came out in September.  Here's an article from Telephony (via ICB Toll Free News) regarding the practice of mis-spelled toll free numbers (as in 1-800-OPERATER instead of 1-800-OPERATOR).

Here was a strange Sixth Circuit case  from 1996 in which Holiday Inn, owner of 1-800-HOLIDAY was not able to prevent the use of 1-800-H0LIDAY (that's a zero).

Posted by Marty at 10:26 PM | Permalink | Comments ()

Via BNA Internet Law News, an article regarding the ABA attempting to define the practice of law, so as to allow states to enforce statutes that prohibit the unauthorized practice of law.  A pending defintion: "the application of legal principles and judgment with regard to the circumstances or objectives of a person that requires the knowledge and skill of a person trained in the law," would, in my view, cover some functions in trademark practice now performed by non-lawyers (evaluating search reports and preparing trademark applications, for example).   The FTC and the DoJ have asked the ABA to narrow the definition on the grounds that too broad a definition will reduce competition and leadto higher fees for legal services.

Posted by Marty at 06:50 PM | Permalink | Comments ()

I am struck both by the brazenness of the domain name registrant in this story, and the writer's failure to make any kind of comment that this person is admitting to actions which carry hundreds of thousands of dollars in statutory damages. The article seems to be saying "Commit cyber-squatting - you'll make some money."

Posted by Marty at 06:08 PM | Permalink | Comments ()

On the one hand, kanes-furniture.net might infringe the trademark rights of Kanes Furniture.  On the other hand, given that kanes-furniture.net appears to hae been instrumental in channeling consumer complaints to the Florida AG which led to a suit against Kanes Furniture, there is an element of retaliation to this trademark suit which led to the shutting down of kanes-furniture.net.  Via the St. Petersberg Times.

Posted by Marty at 05:01 PM | Permalink | Comments ()

From the article referenced in the next item:

"We need to put in speed bumps to keep people honest," said Jack Valenti, the president of the Motion Picture Association of America, which is lobbying federal regulators to require many devices to incorporate technology that prevents consumers from sending digital media files over the Internet. "If we don't, our future is bleak."

All right-thinking people like speed bumps - they keep children from getting run over.  Is that what DRM systems are like?

Posted by Marty at 01:07 AM | Permalink | Comments ()

This NY Times article is a must-read on digital rights management.

Law school hypo - Customer buys, let's say a Tivo-enabled receiver from a satellite or cable tv provider. Vendor does not reveal to customer that the box contains DRM technology which vendor can enable remotely.  Vendor does so, effectively prevent customer from engaging in legal behavior, such as copying for time-shifting purposes.  Discuss the rights of the parties.  Be sure to analyze under both state fraud laws and federal consumer protection statutes.

p.s. Here's a starting point if you don't get the Top Cat reference.

Posted by Marty at 12:55 AM | Permalink | Comments ()

Via BNA Internet Law News we learn of a decision from the Eastern District of Louisiana, Greg Lloyd Smith v. Intercosmos Media, civ no. 02-1964 Section C, 2002 US Dist LEXIS 24251 (ED La Dec. 17).  Plaintiffs brought state tort claims against Defendant, a domain name registrar.  Plaintiffs claimed to have been libeled by various domain name registrations.  The name of the domain registrants were fictitious and plaintiff advised the defendant, which did not block the websites and did not revoke the registrations for the domain names. Defendant argued that the state claims for defamation and libel and for damages and injunctive relief were preempted by the 1996 Communications Decency Act (CDA), 47 U.S.C.S. §  230, and that the CDA provided immunity for all the claims. The plaintiffs also alleged claims for (a) negligent performance of duties of a domain-name registrar under La. Civ. Code Ann. art. 2315; and (b) injunctive-relief claim for defamation.

Held:  Defendant was immunized from liability for the negligence claim because it met the three requirements of the CDA immunity: (1) it qualified as an interactive service provider; (2) it was not the source of the alleged defamatory statements; and (3) the claim treated it as the publisher of the alleged defamatory statements. The claims for injunctive relief with regard to either defamation and libel, or negligence and fault under art. 2315, were precluded by the immunity afforded by 47 U.S.C.S. §  230(c)(1).

Irony: The CDA was supposed to encourage policing by intermediaries such as ISPs.

Strange Concept: Treating a domain name registrar as an ISP.

Strange Background: Google Greg Lloyd Smith Bonnier to get some strange background on plaintiff.

Bad Side Effect of Decision: Registrars will spend even less effort weeding out obviously fraudulent whois info.

But The Real Question Is: What Does Ernie Think?

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

UDRPlaw.net, a terrific resource for all things UDRP, has published its list of  "the more interesting, controversial and relevant domain name decisions of the past year."  Keep your eye on the last case on the list involving BARCELONA.COM, now on appeal.  As the case stands now, the owner of a Spanish national trademark has standing under ACPA, which is not the case under any other provision of the Lanham Act.  I probably should include the appeal on my list of trends to watch in 2003.

Posted by Marty at 08:10 PM | Permalink | Comments ()

The Ninth Circuit's order in the SEX.COM case and some comments from Bag and Baggage.

Posted by Marty at 08:01 PM | Permalink | Comments ()

This article reports that Verisign, registry operator of .com, is returning to the NETWORK SOLUTIONS brand for its registrar unit.  If so, it's UK operations will have to do without the domain name NETSOL.CO.UK, which, as reported here, was dropped and registered by someone named NameGrab.  As to the reputation of the VERISIGN and NSI brands, Icann.blog made the comment I kept to myself.

Posted by Marty at 03:36 PM | Permalink | Comments ()

More on the sex.com litigation via Law.com.  The Ninth Circuit has punted the case to the California Supreme Court.  At issue is registrant's abilities to obtain compensation in part from NSI, due to its allegedly negligent handling of his domain name which was the subject of a fraudulent transfer.  The fraudfeasor has no visible assets so NSI is the likeliest source of recovery. 

Posted by Marty at 03:16 PM | Permalink | Comments ()

Law.com on KPMG Consulting's re-branding to BEARING POINT.

Posted by Marty at 03:08 PM | Permalink | Comments ()

Do a Google News of Peter Pan Copyright and you will coverage like this of the lawsuit filed by owner of the Peter Pan copyright.  Peter Pan appeared in a series of works in the UK in 1904.  Determining when and if characters fall into the public domain can be complex (see this excellent resource for international copyright sources).

A famous UK solicitor sent me this link to Section 301 of the UKCopyright Designs and Patent Act of 1988 which appears to grant ETERNAL royalties to the Hospital for Sick Children (the author of Peter Pan assigned his rights to the Hospital in 1929).  It's not a copyright extension, just eternal royalties for usages of the work.  The solicitor explained to me that when the provision came up for discussion, no member of Parliament was prepared to stand up and say "no, I vote against giving money to the Hospital for Sick Children."

I hear that Disney is considering buying the Hospital for Sick Children and using it as a holding company for its IP rights.  Just kidding.

Posted by Marty at 09:42 PM | Permalink | Comments ()

Here is a DMCA demand letter from attorneys for Dow sent to the Yes Men, originators of a Dow parody site.  For those of you wishing to use the letter as boilerplate, the second sentence contains a typo and "Dear Verio" is probably not standard business salutation.

More information on the Dow dispute is here and here.

More links to other people's demand letters here and here. 

Posted by Marty at 12:47 AM | Permalink | Comments ()

Thanks to How Appealing for the link to this NY Times article on the effect of the expiration of European music copyrights as great recordings from the 50's go into the public domain under a 50 year term for copyright.  In theory, it would be legal to place a European public domain recording on a European website. 

Posted by Marty at 10:42 PM | Permalink | Comments ()

Two years ago today I began a project for Amazon.com and that was the first billed minute of my own practice after I left the mother firm.  A couple of days later Fred at Richemont sent over an assignment.  Jane at Bird and Bird was another early supporter.

Today Schwimmerlegal has over 2000 lawyers and annual billings of over US$1.4 billion.  It is the sole tenant in the 80 story office tower looming over Bayberry Drive in Mt. Pleasant, NY.  And we still provide the best value in copyright, trademark and domain name law.

I would like to thank Nathan the IT department, Anna the everything else department, and my virtual firm of Nadia and Aaron.  Blog thanks to Ernie and Bret.  And a special thank you, I love you, etc. to Melinda.

OK, the third year begins, line forms to the right.

Posted by Marty at 04:18 PM | Permalink | Comments ()

I'm not going to write "Top 10 IP Law Predictions for 2003" because I could be wrong (and Google would cache how wrong I was).  Better: "Top 10 IP Law Trends to Look for in 2003."  Problem:  I can't think of 10.

1.  The Eldred decision will come down eventually.  If I were smart enough to know how the Supreme Court would decide, I'd be working at Goldstein Howe.  But either way, the decision will force us to confront the copyright term issue. If the Sonny Bono Act is upheld (ok, I predict it will be), then there will be added vigor to movements like Creative Commons and perhaps we will see a drive to amend the Copyright Act.  And copyright owners will explore how trademark will protect in the absence of copyright.

2.  The Victor's Little Secret case will be decided and the old jazz standard "What Is This Thing Called Dilution?" will have some new words to go with its ambiguous melody.  At issue: whether the plaintiff has to prove actual damage from dilution as opposed to likelihood of damage. 

3.  Madrid Protocol - Good thing for US trademark owners, as one application will suffice to cover trademark applications in numerous countries.  We are likely to see implemnation this year (Don't worry - I'll keep you informed).  Bad thing for non-US trademark lawyers as they won't get paid to file non-US applications by US companies.  Bad thing for US trademark owners as they won't get paid to file US trademark applications by non-US applications.

4.  Digitization of the Trademark Procedures: My international trademark metasearch couldn't exist four years ago.  I couldn't have handled the number of applications I did this year without electronic online filing.  The real cost of portfolio management (should) come down every year as digit-pushing replaces paper pushing.

5.  Erosion of Western Brand Power - First, there is a something of an anti-brand intellectual current, as exemplified by Rev. Billy's Church of Stop-Shopping and Naomi Klein's No Logo book.  Then there is the fact that we are in a consumer-spending downturn when people are a little less likely to pay for a name.  Finally, there is the mainfestiation of anti-Western sentiment as local brand loyalty - case in point MECCA COLA.

I expect to finsih my trends to watch list by mid-December.  Stay tuned.

Posted by Marty at 04:02 PM | Permalink | Comments ()

This is DUCKHORN WINES, from Napa.  This is DUCK WALK Vineyards from Long Island, near my mother-in-law's beach place. This is an article from today's NY Times about Duckhorn protesting Duck Walk's use of a Duck as a trademark.  Duckhorn filed an action alleging that the LI winery chose a duck to intentionally and maliciously trade on Duckhorn's goodwill (according to the Times article). This is the website of the Long Island Ducks, a minor league baseball team.  Here is a webpage for DUCK AND DECANTER which owns a federal registration for that mark covering among other things, wines.  Here is a webpage for another wine named DUCK POND CELLARS.  Here is the Long Island Duck, a duck shaped building in Flanders, LI.  Here is a recipe for Duck in Wine sauce.

Posted by Marty at 04:57 PM | Permalink | Comments ()