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March 31, 2003

How Are You Spelling CNN?


Thanks to TechLawAdvisor for emailing me about this WSJ Article on the increased use of search engines.  It cites a report discussed here earlier regarding the increasing use of both search engines and direct navigation to access websites.  However given that the report bundles both bookmarks and URLs under the heading 'direct navigation,' this particular report does not support the article's thought that domain names will become irrelevant (although this is the second time in a week that someone other than me expressed that fanstasy outloud.)


Strange but true: The outbreak of war has made CNN one of the most searched-for terms in search engines, which, the WSJ author notes, given CNN's location at cnn.com, is equivalent to calling up directory assistance and asking for the number for 1-800-FLOWERS.


UPDATE: (actually an improvement): An astute reader (the best kind) writes in to point out that typing CNN into Google and hitting "I'm feeling lucky" involves fewer keystrokes for the user who wants CNN but isn't precisely sure it's at www.cnn.com. As a bonus he provides this nifty article with a graph of people who typed in CNN on 9/11 and discussed Google in depth. One more argument for using real navigational systems like directories instead of guessing domain names.

Their Characterization, Not Mine.


Brandchannel article on the value of 'low-brow' brands such as WWE, NASCAR and Elvis.


Elvis belt-buckle available here.

March 28, 2003

It's Who You Know

The Trademark Blog is one of 10 Lexis Websites of the Month.  Because one hand washes the other I am naming Lexis the computerized legal research service of the month.

Twomey to Head ICANN

Paul Twomey will be the new president and CEO of ICANN.  Announcement here and coverage via IcannWatch here.

Including A Picture of a Jack Russell Terrier

Recent UDRP cases involving Disney and Jack Russell Terriers are discussed here at UDRPLaw.net.

What the World Has Been Clamoring For

ICANN posted these "Criteria to Be Used in the Selection of New Sponsored TLDs."  Commentary from people who disagree with me here.

Example of Secondary Meaning in Color

New UPS logo, discussed here.  UPS press release on new logo here.  Background of old logo, desgined by Paul Rand, discussed here.  Track your UPS package here.  Episode of LARRY SANDERS where Artie's son quits job in entertainment to join UPS in order to wear brown shorts discussed here.

March 27, 2003

But You Should Still Always Tell The Objectively Reasonable Truth

Not really trademark law but it happened in a trademark case:  Defendant tells his law firm a cock-and-bull story.  Submits the story in an affidavit.  The law firm didn't necessarily believe the story but later testified that it believed that the story was possibly true.  The district court held that the law firm's belief was objectively unreasonable and sanctioned the law firm.  On  appeal, the Second Circuit holds that in this situation, where neither the adversary nor the Court gave the law firm the opportunity to withdraw the challenged papers, for purposes of sanctions the law firm should be held not to the "objectively unreasonable" standard" but a "bad faith" standard.  There was no finding of bad faith. Click here and search for In re Pennie and Edmonds, 02-7177, March 14.

Aggregators: I Would Like To Clarify Our Agreement

I am very happy to make an RSS feed of this web site available to aggregators who make NON-COMMERCIAL use of the feed.  There is someone out there who is aggregating 40 law blogs and attempting to sell advertising.  Please either stop selling the advertising or stop including my blog.  Also, there is someone out there who appears to be attempting to sell access to various law blog archives as a premium service.  My archives are available free on this site.  Stop attempting to sell my content.


UPDATE:  I suppose that someone who is selling advertising in order not to make a profit but to defray bandwidth charges is still making non-commercial use of the feed.

March 26, 2003

Appellations of Origin of the Day - Oil and Vinegar

My wife made a Toscano oil and Modena Balsamic Vinegar salad dressing last night.  Olives have been grown in Toscano or Tuscany since 700 BCTOSCANO is an appellation of origin for olive oil.  Histories of balsamic vinegar suggest that it is so named because it had the healing qualities of a balm.  It was first prepared in Modena in Italy as early as 1046.  MODENA is an appellation of origin for balsamic vinegar.  Usually, consortiums of local growers control and monitor procedures for producing products which may bear these appellations of origin.  The European Union's register of appellations of origin is here.

March 25, 2003

Brand As Navigator - Let Your Fingers Do The Froogling

Over the past few months I have written a series of pieces under the heading "Brand as Navigator" on the general topic of how trademarks functions as navigational aids (domain names, paid search, meta-tags, keywords).  Identical or similar trademarks are able to co-exist in the real world with (acceptable levels of) confusion only because of implicit or explicit context (most notably indications of geographic location and field of goods).  FORD, without context, can be a misleading keyword, metatag or domain name.  The DNS, which could be a smart system but is administered like a dumb system, will never function effectively as a brand navigational system until it embodies similar levels of context to that of a directory.  It seems that it would be better instead to just build good directories.


Consider in contrast telephone numbers.  What is Sony's telephone number?  On the whole, the telephone numbering system is "dumb" in the sense that there is no relationship between the number and the resource (8xx numbers being an exception).  There are sometimes trademark cases arising from telephone numbers (1-800-MERCEDES being a recent example), however I would say such cases are rare (for a variety of reasons).  Because telephone numbers are not guessable, there is (virtually) no equivalent to cyber-squatting.  The context which allows common names to "resolve" without confusion is supplied outside the network by 'smart' navigational systems -  yellow page directories for example.  The topical headings "Modeling Agencies" and "Automobile Dirs. - New Cars" allows for two unrelated entities to utilize the common name FORD across the telephone system.


The domain name system is half-way between a smart system and a dumb system and that's what causes the trademark problems.  Some 'one-of-a-kind' names can only designate one origin without confusion- TEENAGEMUTANTNINJATURTLES.COM or FORDMODELS.COM for example.  Unfortunately, all these names are distributed as if they were 'dumb' names - first come, first served.  So you can register a unique name before the unique name's owner did.  And this feature of the DNS lead to millions of dollars in external costs. 


In order to reduce some of the external costs arising from mis-allocation, the DNS is taking half-steps towards being a smart system.  Through the UDRP and through 'sunrise'-like allocation systems, there is some attempt to match 'one-of-a-kind' names to their 'rightful' owner after-the-fact or before-the-fact (I am using quotation marks like tongs to handle hot terms).   I think that both registrars and trademark owners are not satisfied with the level of cost arising from the present allocation method.  Also, these remedial systems are themselves mis-used.


Making the domain names themeselves smarter a little bit reduces external costs a little bit.  With "chartered" TLDs there is some attempt to build context into the name itself.  DELTA.AERO cannot be confused with Delta Dental.  The early reports are that there is no abusive registration within the structured TLDs (and little non-abusive registration as well).  However, while adding structured TLDs  will result in lower external costs than adding, for example 1 or 2 more unstructured gTLDs, I think that neither course will solve the issue of how to allow for quick navigation to small (commonly-named) businesses.  Neither the creation of 100 more .com's, nor the creation of a .PIZZA, will satisfy all the JOEs and JOHNs who want to be known by a short name on the net.


As a short aside, I note that domain names can be made dumber as well and this would (1) reduce external costs while (2) expanding the namespace.  If you just needed a domain name, you could be assigned a name like the old Telex address system - there would be no semantic meaning, but it would consisting of randomly generated numbers and phonemes (like MARTRADE7).  It would be memorable in a short-term memory sense, not a branding sense.  This would move the DNS away from being a bad directory and back to being an addressing system (which it was engineered to be).  This would also reduce domain names to fungible commodities (with lower prices).


Getting back to the common name problem, I submit that the "meta-problem" for brand owners (large and small) is not really how to minimize the external costs of the DNS (although that problem has kept many people like me busy for years).  The real "meta-problem" is how to allow brands to efficiently function as navigators.  Guessable domain names for all is not logistically possible but browsable names are.   Browsable, granular search engines, can allow me to ask for SONY, and distinguish between the SONY manufacturer, the SONY-authorized service center, and the cheapest place to get a SONY camcorder.  Also, I can look up BROADWAY PIZZA and get the one in Armonk, not the ones in Manhattan or in Minneapolis.


It seems that the web is making progress towards such services.  I would certainly keep an eye on Froogle.  I was also intrigued by 37signals.com which is demonstrating a "better Google." (I learned of this via Kottke.org).  So we should expect search engines to continually improve.


However something that can accelerate towards browsable brand navigation will be the promotion of such systems by brand owners.  We see brand owners identifying AOL keywords in advertising - I don't see advertisers communicating other ways to identify their web presense.  At some point businesses may say in their ads, "To order, Google [or Froogle or Overture] Joe's Pizza, Armonk" (or words to that effect).

March 24, 2003

Halo v. Blue Halo

Halo Management describes itself as a "Strategic Intellectual Asset Management" company, run by a patent lawyer.  Its services are described here.  It owns a federal registration for HALO for, among other services, web hosting services.  Interland is a hosting company that offers BLUE HALO ARCHITECTURE hosting services.  Here is a copy of Halo Management's trademark infringement complaint against Interland.

March 19, 2003

Warning: This Post Contains Links to Adult Content and Possible Trademark Dilution


First there were the unauthorized PUMA ads (background here, here and at this point, everywhere).  Now we have ads disavowed by NOKIA and by VICTORIA'S SECRET.  Bear in mind that there are differences in degree to ad parodies.  There are ad parodies clearly presented as parodies (WACKY PACKS, for example).  There are parodies which ought to be understood as parodies, such as SIMPLY PORN).  There are parodies that ought to be understood as parodies but fool some of the people some of the time (MICHELOB OF.3d 769).  And then there are hoaxes of sufficient quality that, if coupled with a statement of authenticity, cause consternation to trademark owners (disclosure - I have responded to this letter on behalf of two websites).


And then there are conspiracy theories about viral marketing campaigns.  No comment.


Museum of Hoax Photo Gallery here.


 

All This Talk of Concurrent Use Is Making Me Hungry


Terrance Brennan is a noted Manhattan restaurateur who recently opened TERRANCE BRENNAN'S SEAFOOD AND CHOPHOUSE.  The NY Times (registration required) reports that he prevailed yesterday in a lawsuit brought by the Brennan's Inc, described as "the company that runs the 53-yr old restuarant in New Orleans."  Showing how much he learned during this experience, Terrence Brennan is quoted today saying "I didn't know you could copyright a name." (OK, to be fair,  I can't cook).


Unfortunately Judge McKenna does not appear to participate in CourtWeb do there's no decision to link to.  There's more to the case than the Times reports.  In addition to the personal name issue there is a messy concurrent use situation.   Brennan's Inc. has multiple locations and does have a federal registration.  However there are least two other split-offs from the Brennan family, one group which owns some concurrent rights in the mark BREAKFAST AT BRENNAN'S (outside of New Orleans) and one group which runs DICKIE BRENNAN'S STEAKHOUSE (in New Orleans), whose website begins "Not affiliated with Brennan's Restaurant."


I would hope New Orlean's favorite Attorney, Ernie, can provide us with some local color on this story.


UPDATE:  Ernie reports that he once worked as a waiter for a Brennan's restaurant named THE COMMANDER'S PALACE and that it was there he learned all the really useful stuff he knows.

March 18, 2003

If You Are Vin Diesel, Yell Really Loud

This should take your mind off things for at least 30 seconds.

Domain Name Renewal Scam

Domain name renewal was not complex enough, so now be on the look-out for a scam email from mailto:noreply@melbourneit.com.au which advises people that if they renewed domain names through MSN or Yahoo or other resellers, then they need to renew through Melbourne IT.  Melbourne is the true registrar for MSN and Yahoo and many other ISPs - the problem is that the email is a fraud (according to this article).

"Coke Presents the NCAA Tournament from the Pepsi Arena"

Now here's ambush marketing.  Pepsi owns the naming rights to an arena in Albany that will host part of the NCAA Tournament.  Coke is sponsoring the Tournament itself.  The Pepsi signage will be covered up.

March 17, 2003

Three Way Car Trade Dress Tussle

South Bend Tribune on trademark issues inviolving the HUMMER and the Jeep and the Avanti XUV.  Interesting history of the Jeep.

March 16, 2003

Blog Holds Trademark Robot Hostage


Don't know what to make of this.  NameProtect offers trademark policing and monitoring services.  I assume that in order to monitor usage of a trademark on the Internet, it must employ some type of spidering software (or 'bot).  Little Green Footballs is a blog that writes on political issues.  It keeps track of 'bots and in fact publishes an evil robot list.  It claims that it "caught" a NameProtect bot in a "bot trap."  The post contains an interesting comment thread with many suspicious comments as to what the intruder was doing nosing around. 


Bot Traps were originally intended to defeat spammers and email scrapers.  I suppose they could be used against search engine and trademark monitoring bots as well, making both less effective.  I wonder if it is possible to build an "invisible web site," which would be of interest to a variety of unsavory groups, including trademark counterfeiters.


Info on Isaac Asimov (author of I Robot and other robot novels) here.

March 15, 2003

And Of Course Freedom Fries With That

This NY Times article (registration required) discusses the possible effect of a war on American brands.  The article also announces the debut of the McARABIA, a new sandwich from McDonalds consisting of chicken and salad in a bread pocket.  Last week, someone attempted to firebomb a McDonalds in Saudi Arabia.  No word on whether McDonalds will serve QUIBLA COLAGoogling McFALAFEL tells the story of a previous not so successful foray into this area.

Note to Pyra, Radio and Other Blogging Software Companies

As a new revenue source, you might want to offer bloggers libel and advertising injury insurance. 

March 14, 2003

Question for Discussion re Scraping and Wraps

I was mulling the ramifications of the scraping decision in Texas this week as I was standing in my driveway removing my home-delivered NY Times from its blue plastic wrapper, when the thought occurred to me: "Jeez, when is this winter going to end?"  Also: if the NY Times printed a shrink-wrap license on this blue pastic bag invoking provisions regarding what I could do with the unprotectable facts in this paper, would a Texas (or some other) court enforce them?  Does it have to be a shrink-wrap, can the Times merely print a "Browse Wrap" on its front page? Should a click wrap or browse wrap on a website treated differently than the theoretical one on  a front page of a newspaper?  Should the Times begin selling even newsstand copies in plastic bags with terms and conditions printed on them?


TechLawAdviser gives his answer here.  Others?



Home delivery of the Times here.

March 13, 2003

More on Fake Puma Ads


Maybe we need something to take our minds off impending war but the fake Puma ad story is taking on a life of its own.  Instapundit implies that Bill O'Reilly thinks the ads are real (CORRECTION: Mr. O'Reilly was really talking about PONY and it's use of a porn star for its ads.  I guess PONY and PUMA are confusingly similar).  MemeFirst reports that it was called by Puma and asked to take them down.  Salon was asked to remove the ads on the Reverse Cowgirl's Blog  (which also reprints some reader comments from Adland).  Some people are speculating that Puma did create the ads in order to deny them.  Some people are speculating that Adidas created the ads.  I suspect either Walt "Clyde Puma" Frazier's involvement or that of the Dancing Baby.


As to the threats that are being bandied about to those folks reproducing the ad on their sites, let's go over some (U.S.) ground rules.  If you're not using the trademark in commerce, you're not infringing and you're not diluting.  If you re-publish a false statement with the indication that it is false (and in fact publish it because its falsity is news), then you are not commiting libel or trade disparagement.  Now, if you're the person who created the ad, and then disseminated it indicating that it was an authentic Puma ad, that's a different analysis.

However, Grotter Is Being Represented by Snape

J.K. Rowling and AOLTW are moving in Dutch court to enjoin publication of "The Magic Double Bass, a book featuring a girl named Tanya Grotter, an orphan with magical powers and a strange mark on her face."  She also flies on the cover of her book and her name is written in a letters with sharp angles.  The Googlism of Tanya Grotter says that she is not a copy of Harry Potter so that's that.

Who Owns MARCH MADNESS?


The Illinois High School Association began a basketball tournament in 1908.  By the 1930's, it was referring to it as March Madness.  By the 70's, it had become an official name for the tournament.  It's unclear (to me) when the NCAA (and Brent Musberger) began referring to its tournament as March Madness but it did begin licensing the mark around 1973.  IHSA sued but failed to enjoin the NCAA use.  IHSA v. GTE VantF.3d 244 (7th Cir/99/1996).  Some settlement ensued and the marks appear to be pooled in an entity controlled by both the NCAA and the IHSA, and both parties use the mark (the IHSA differentiates its usage somewhat by using the term "AMERICA'S ORIGINAL MARCH MADNESS").  IHSA MARCH MADNESS merchandise is available here and NCAA March Madness merchandise is here.


Neither side claims exclusive rights to the concept of the office pool.


UPDATE:  Patrick Jones at the must-read UDRPLaw.net points out March Madness Assn v. Netfire, 162 F. Supp.2d 560 (ND Tex 2001) for more on the history of the ownership of the MARCH MADNESS mark.

March 12, 2003

Do Fries Come With That Shake?

Kottke.org claims that french fries were developed in Belgium, apparently a controversial assertion according to this history of french fries.

Our Prices Are Insane and Protectable!! part 4


FareChase uses software to "scrape" pricing information from American Airlines' website.  AA has now enjoined FareChase in Texas state court on a trespass theory.  Denise (attorney for FareChase), has all the relevant papers, including a copy of the Temporary Injunction.  Quote from another FareChase attorney:



. . . the court has, by this order, created a new property right not only for AA but for all large companies with Internet Web sites: the right to monopolize forever public information.


More on asserting rights in published prices here and here.

I WIll Not Post The Fake Puma Ad


Somebody created two ads showing a woman performing a sex act on a man.  Both are wearing PUMA sportswear, the PUMA stripe prominently displayed.  The ads were forwarded to Adland with the comment that these ads ran in a Maxim-like publication in Brazil, a claim plausible only if you consider the high-fashion quality of the photos, and ignore the ejaculate.  Puma has now sent a demand letter to Adland (which responded by pixillating the trademark).  If Puma had a sense of humor, it could have said something like "Of course the ads are fake, that's a discontinued line."


Which brings us to tarnishment, and the debate as to whether an actionable form exists.  Setting aside Adland's First Amendment defense, does this ad cost Puma any money?  Is there a lost sale, a lost licensee?  Last week's Victor's Secret case expresses the sentiment that tarnishment reflects poorly on the tarnisher, not the tarnishee.  Of course, if the tarnishment takes the form of a hoax, then that might not be true (among those who never learn that it is a hoax).


p.s. I'm not posting the ad because in a random survey, I have determined that the ad is offensive to some.  If you wish to take an affirmative act and view the fake PUMA ad, click here.


p.p.s. Puma is upset by the fake ad, but Gucci paid money to run the brand positioning ad to the right.  To paraphrase Spinal Tap, there's a thin line between tarnishment and fashion advertising.  More on that here.


UPDATE:  Actual Malice blogger guest-writes on TechLawAdvisor on Puma.

March 11, 2003

Bright Lights, Big Citi



Citigroup v. City Holding, 9 Civ 10115 (RWS) (SDNY Feb 7, 2003) (available at Courtweb).  Citigroup fails to cancel CITY INSURANCE registration and apparently tolerates use of CITY-variant marks by City Holding of West Virginia (see photo left).  Double edged sword:  Citigroup had previously had to argue that it could co-exist with a CITY-variant mark in the financial field.    The long decision contains an interesting history of Citigroup's policing efforts over the years.  Tidbit: The CITIBANK mark has 89% consumer awareness (although the decision does not indicate if that is aided or unaid brand awareness).


Prior decision here.

Proposed Balancing Amendment to DMCA


Via Copyfight, the text of the proposed "Benefit Authors Without Limiting Advancement or Net Consumer Expectations" ("Balance") Act.  ISTTRNOTB (I'm serious, that's the real name of the Bill).  Key provisions include Section 3, which expands and clarifies a consumer's fair use rights to make home archival copies, Section 4 which clarifies the first sale exhaustion doctrine and Section 5, which allows you to throw a digital copy against a wall in order to break any DRM device which was preventing home copying.  This bill was introduced by Silicon Valley's Congressperson.


Off-topic communism shirt available here.

The Name Says It All

Sunday night it was called Roogle.  Background all the way over here.  It would have killed them to have called a trademark lawyer before they picked a name.  I mean, I put in an instant message feature for people in a rush.

March 10, 2003

Infringement is in the Eye of the Beholder

Via BipLog, here is infringement art.

SOUR Is A Descriptive Term for Grapes


If you happen to invent something like a new grape, and have to name it, choose a term that describes it.  If you would rather pick a catchy name that suggests an attribute, then you ought to do a name search.  Here is the February 20 press release from Cornell announcing its creation of the 'Abundance' grape.  Here is the article with the interesting headline "Grape Violates Trademark Law" announcing that Cornell has changed the name to Gr-7 after getting a demand letter from the ABUNDANCE WINE Co.


ABUNDANCE, as used by Cornell, suggested an attribute of the grape.  Descriptive terms for that attribute would have been HIGH-YIELD or HARDY or something of that nature.

Brand As Navigator - CitySearch Institutes Local Paid Search


Today's NY Times features an article about USA Interactive's CitySearch network instituting paid keyword searching at the local level.  The question of competition with global search engine arises.  The article gives the example that someone can put in "laser surgery" on the Atlanta site.  But right now I can "Google" "Atlanta laser surgery" and get hits that seem relevant (and I get a sponsored link for "Atlanta's laser specialist.").   The quality of the results may vary of course on the quality of the database.   A directory consulting firm, the Kelsey Group, indicates that 43 percent of small businesses, do some form of advertising on the Internet, and thus are "findable" by global search engines. 


By the way, we see the drawbacks of search - the returns for both sites joined together cosmetic laser surgery with eye laser surgery - two different markets.  The less specific the search term, the less accurate the results.


I'm all for focused directories and I've no issue with (non-exclusive) sales of topical keywords. To me it's the equivalent of a shoe store paying the local yellow page directory to be listed under shoe stores.  It's when the keyword sold is a brand name that, imho, trademark issues arise.  I hope that the Ninth Circuit will decide the Playboy keyword case soon so that this industry can develop with some guidance on the point.

So Who Does Own The Domain Name System?

I don't have the sitzfleisch to weigh in on the question as to whether "Governments own a part of the domain name system as a matter of international law," but ICANNWATCH, which believes this theory is "unprecedented and unsupported," does.  This is part of a larger article predicting that Paul Twomey, an Australian politician, will become the new president of ICANN.  There are interesting allegations that Mr. Twomey has mis-used the .biz IP claim service. 


ccTLD and international law fans will also closely follow the dust-up reported here between the government of Niue, a small Pacific island whose country-code, .nu, is administered by a business out of Massachusetts.  The government of Niue is not ok with that now.


 

The OOGLE Family

Slashdot announced the debut of ROOGLE, a search engine for RSS feeds and worried out loud "Let us hope it does not get in trouble because of its name."  Given Google's use of FROOGLE as well as GOOGLE, it can plausibly claim an OOGLE family, and Slashdot was right to worry but apparently behind the events. Roogle now announces on its home page "The name 'Roogle' will change."

March 09, 2003

Reading Other People's Mail - Lynne Cheney v. WhiteHouse.Org


Time on their hands.  The Counsel to the Vice President (of the U.S.) wrote a demand letter to the operator of whitehouse.org asking that it remove this fictitious bio of the VP's wife, Mrs. Cheney.  Some might view the fake bio to be political speech.  The VP's lawyer believes that the disclaimer indicating that the website is a parody is insufficent.  They're probably bummed about the clown-nose photo as well.  Perhaps VP Cheney has coulrophobia. 

Go to the site - you be the judge.


I appreciate that the government should incur expense for ensuring Mrs. Cheney's physical safety.  However, while the letter does mention mis-use of the presidential seal, the thrust of the letter alleges violations of Mrs. Cheney's rights of privacy and publicity, torts suggesting economic harm.  As such, it's interesting that the government pays for the lawyer (I'm not familiar with the law on this - if you are, please share).


Practitioner's Note: Further proof that protesting something is the best way to ensure its universal dissemination.


Side note: in checking this out I mis-typed and wound up at www.whitehous.org, which I recognize from previous matters as a Zuccarini typo-site. Don't hit that link if you don't want to spend several hours killing pop-up ads.   It's great that children might be searching for info on the White House and find "Hanky-Panky-College."


Further aside: Coulrophobia is the term for fear of clowns.  I read that on the Volokh Conspiracy so it must be true.

March 07, 2003

More On Victor's Secret


The street.com on what was dumb about the Victor's Secret case.

For Those of You Thinking of Blogging . . .

. . . the lovely Denise has compiled a list of all the information on blogging imaginable.

Not the Story of My Life

Not trademark law, but the law as to what extent a fictional character may be based on a real person is always of interest.  A non-fiction book portrayed, in part, plaintiff.  The book was sold to Paramount, which produced "Hardball."  Keanu Reeves plays the part of a character who appears to be based on plaintiff, with a couple of unflattering characteristics thrown in.  Plaintiff sues for libel, defamation and related claims.  Seventh Circuit analysis here.  Muzikowski v. Paramount, No. 01-4314 (7th Cir, Mar 6, 2003).

March 06, 2003

Maybe You Shouldn't Define Yourself By What You Once Were

John Vella played for the 1976 Super Bowl Champion Oakland Raiders.  Now he owns sporting good stores and has a website.  Here is some imagery from his website at raiderlockerroom.com:



Terri Welles used to be Playmate of the Year.   Here is some imagery from her website at terriwelles.com.



The NFL has now sued Vella for unauthorized use of RAIDER trademarks.  Here is the decision from Playboy v. Welles, the Ninth Circuit case which sets out the line between truthfully describing your credentials and infringing upon the trademarks owned by those credentials. 

Mr. Rogers Testifies On Behalf of Boston Strangler


Apparently Mr. Rogers gave key testimony in Sony v. Universal, the Supreme Court case which cleared the way for home taping.  The story of the testimony is here, via The New York Lawyer.  Good quote:


My whole approach in broadcasting has always been "You are an important person just the way you are. You can make healthy decisions." Maybe I'm going on too long but I just feel that anything that allows a person to be more active in the control of his or her life, in a healthy way, is important.


Oblique title reference explained here.

Attention Law Students Within Commuting Distance of Westchester

I have openings for part-time legal assistants.  Email your resume to marty@schwimmerlegal.com.  A demonstrated interest in IP (other than telling me you like the Blog) is preferred.

March 05, 2003

May A Thousand Coke Cans Bloom

The Coca Cola Company has updated its Chinese script logo in time for what its press release refers to as The Year of Coke.  The designer indicates that his goal was to "create a Chinese equivalent with the unique Spenderian style fluidity while imbuing it with a modernistic touch."  The famous COCA COLA logo is in Spencerian script. 


More on branding in China here.


 


Cultural Revolution poster from here

Cardozo Law Conference on ICANN

I will be participating on a panel on "The UDRP and International Lawmaking" (I am in favor of both) at a conference on ICANN at Cardozo Law School in NYC, Monday March 17. Details here.

Do You Own The Domain Names You Think You Own?

Before you do anything else, go make a list of every domain name you think you own.  Include the ones which aren't active, or which merely re-direct.  Now look up the whois of each and every one of them, making sure that ALL the contact information is correct.  And (assuming you still own the names you think you own), update any incorrect contact data.  Next, go extend the terms of the names you absolutely can't allow to drop.  If you have just missed the renewal date, you have 30 days under the "redemption grace period."


Remember, some employees, when they leave your employ, tend not to say to you "By the way, in one year, three months, the renewal notice for your valuable domain name will be sent to what by then will be my inactive email address."


Maintaining domain names apparently is not that easy.  It is my understanding that there is a certain large domain name company which offers portfolio management services.  It drops so many names under its care that it has hired an outside company to act as a stalking horse to buy them back.


I used to think that an opt-in auto-renew policy would solve the problem of inadvertently dropped names, and I lobbied a little for that at the IPC.  Verisign ignored the concept (it was proposing its Wait List Service at the time).  One of my clients (a Registrar) explained to me another problem with auto-renew.  The registrars would get killed on credit-card charge backs.


So the best procedure right now seems to be maintaining accurate lists of your domain names, and getting long terms for the valuable ones.


 

March 04, 2003

Victor's Little Secret Wins. Actual Dilution is Required. Unanimous!!


The owners of the VICTORIA'S SECRET trademark failed to establish that an adult novelties store named first VICTOR'S SECRET and then VICTOR'S LITTLE SECRET diluted its trademark. Decison here.  Background here.


As to whether the standard under the FTDA should be actual dilution or likelihood of dilution, the Lanham Act says "causes dilution" not, "causes dilution or likelihood of dilution."  So that's that.


Also important : the Court implies that the junior mark does not have to be identical to dilute.


Also important: ". . . mental association will not necessarily reduce the capacity of the famous mark to identify the goods of the owner, the stautory requirement for dilution under the FTDA . . . 'Blurring' is not a necessary consequence of mental association. (Nor, for that matter, is tarnishing.') (pg. 15).


Now the process of amending the law begins.


UPDATE:  SCOTUSBlog, provides commentary on the decision here and a different Marty at SCOTUS discusses the decision further here.  I do agree with his comment that this Court is hostile, not so much to dilution, but to the tautological manner in which dilution has been proven until now.   BUICK SHOE POLISH is dilutive because BUICK SHOE POLISH is an example of dilution.  I do not agree that the Court thought that VICTORIA'S SECRET is less deserving of protection because it consists of dictionary words.  The problem in this case was not the fame of the mark VICTORIA'S SECRET.  The problems were (imho) that defendant's mark was no longer VICTOR'S SECRET but VICTOR'S LITTLE SECRET, and that it is expensive to prove dilution, assuming it really exists.


Vintage undies picture from here.

Brand As Navigator

StatMarket reports that direct navigation - typing a URL into a browser's address bar, or using a bookmark, is increasingly being used to access a website, at the expense of links and search engines.  Direct navigation is used 64%, up from 53% a year ago.  Links and search engines are being used 35%, up from 46%. I would have liked to see the breakdown between URL's and bookmarks but this article doesn't provide it.

Third Circuit Clarifies Standard of Review for UDRP Proceedings: De Novo


Lee Strasbery played Hyman Roth in Godfather Part 2 but before that he was famous as an acting coach, training Marlon Brando and Marilyn Monroe among others.   Someone named Dluhos registered LEESTRASBERG.COM.  Strasberg's estate, owners of a federal regsitration incoroporating the name, protested.  The Strasberg estate brought a UDRPand Dluhos went into civil court, pro se, and filed all sorts of actions, including constitutional attacks on the UDRP.  He screwed up service so the UDRP was not stayed, and the panel issued a decision against him.  Dluhos amended his complaint and the district court reviewed.  It dismissed Dluhos' claims and upheld the UDRP decision, reviewing it under the strict standards of the Federal Arbitration Act.  Under the FAA, you essentially have to show that the arbitrators were either corrupt or on crack before the Court will vacate the arbitration.


The Third Circuit reviewed.  Held:  The FAA only applies to non-binding arbitration where the arbitration might realistically settle the dispute.  Because the UDRP was expressly intended to not deprive parties of access to civil courts, it does not fall under the FAA.  However, a district court may still review a UDRP decision because 15 USC Sec 1114(2)(D)(v) of the ACPA (Section 32(D)(v) of the Lanham Act) provides jursidiction from it to do so.  The case was remanded for a de novo review of the UDRP  action (which will now in effect become an ACPA action).  Dluhos v. Strasberg, no. 01-3713 (3d Cir Feb 20 2003).


Thank you to nerdlaw.org for bringing this case to my attention.

March 03, 2003

IPC Meeting in NYC This Week

The Intellectual Property Constituency of ICANN will be meeting this Friday at INTA's offices (1133 Ave. of the Americas, NYC, NY) at 11 AM.  The meeting is open to members.  We will be discussing the upcoming Rio meeting of ICANN. There will be phone participation.  Organizations or individuals may join the IPC and receive instructions as to the secret handshake.  Membership information is here.  Officers of the IPC will stay after the meeting to give autographs.

March 01, 2003

The Daily You

Check out the Harvard news/blog aggregator (ignore how my images are screwing up their formatting).  Was it Nicholas Negroponte who coined the phrase "Daily Me," when referring to the potential of the individual to create a daily newspaper out of news sources the individual pre-selects?  Aggregators bring us a step closer to the Daily Me.

SpongeBob SquarePants Barbie

Instapundit on cross-branding.

The 4 Door CHRYSLER DIMETRODON



Thanks to a reader at Kilpatrick Stockton for sending me this article from SeattlePi.com on the re-branding of AvenueA to AQuantive, Inc. It sounds like a somewhat typical experience for a company going through a name-change but I disagree with two statements in the article.  The first is the comment that dictionary words are either not protectable or prohibitively expensive to protect.  I don't think that's universally true.  Trademarks consisting of dictionary words such as RED STRING SOFTWARE or BLUE ANT ADVERTISING would make fine (and probably affordable) trademarks.  Second, I disagree that all the good animal names for cars are taken, as the chart of the Permian Era illustrates (this from Ditmars and Carter's The Book of Prehistoric Animals, London 1935, via The University of Brighton's School of Design site).