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I'm clearing out for Europe, wending my way eventually to the INTA meeting in Amsterdam. I'm bringing my wifi card, my ethernet cable and two cans and a string so if I can figure out a way to blog, I will. If not, see you May 10.
If you are going to be in Amsterdam, give a holler (or an email).
My anonymous source, Tom at Encirca, tells me that landrush period for the .PRO registry is showing that old sign of strength for a domain - interest in generic names. So names like commercial.law.pro and tax.cpa.pro and healthy.med.pro are going fast (I made those up as examples, btw). Encirca is an accredited registrar for .pro, so Tom ought to know. There is both a sunrise period and a UDRP for .pro.
Reuters reports that the RIAA sent out 200,000 copyright infringement warnings to users of the Grokster and KaZaa file-sharing networks this week. The RIAA plans to send out 1 million messages a week.
According to Brandweek, quoting a CLC.com study, the best-selling University trademark, according to royalites, is North Carolina. Rounding out the top ten: Michigan, Tennessee, Florida, Texas, Oklahoma, Penn State, Nebraska, Georgia and Florida State. The top selling manuacturer of University-branded apparel was Nike, and of non-apparel was Electronic Arts.
Blogs, Esq., an article from Corporate Counsel magazine. I should probably re-name my site A Trademark Blog, so as to rank higher in these alphabetical lists of law-related blogs (might hurt my secondary meaning argument, were I to file, however).
Text of German decision prohibiting pop-up ads, discussed here yesterday, again thanks to BNA Internet Law.
I get the critical last sentence in this article from a newspaper located about 20 minutes from Volo, Illinois. Background here.
Worldcom changing its name back to MCI is only the most recent example of re-branding to avoid badwill associated with a trademark. We will likely not see ADELPHIA, GLOBAL CROSSING or ENRON used much in the future even if the businesses themselves continue. Louis Tompos, a 3L, argues in a note in the Harvard Law Review that re-branding can cause the type of consumer confusion trademark law is supposed to guard against. He argues that people believe "If I had known it was really ValuJet, I would not have chosen AirTrans." He suggests that some sort of double-branding period be mandated, similar to the Prunes/Dried Plum model.
Having read the abstract, I wonder if existing law isn't sufficient. A new name (or more to the point, a denial of connection to the old name) may or may not be a false statement of origin actionable under Section 43(a) of the Lanham Act. Usually defendant says that they are someone they are not, here they say that they are not who they are.
'Badwill,' 116 Harv. L. Rev. 1845 (available on Westlaw).
The BNA Internet Law Newsletter (recommended free subscription here) reports that a German court has ruled that pop-up ads triggered by a user leaving a website are illegal, as they force users to take notice without consent. Case number 2a0 186/02 (landegericht).
If you haven't heard of or read about this decision by 10 AM Monday morning, then you're just not trying. Dive into Copyfight for limitless links.
No, really, here. Via Matt Rolls A Hoover. Can we expect more comic books from NGOs?
Charles Douglass, inventor of the Laugh Track, has died at the age of 93. Here is an article from sciencenews.org reporting an experiment that laugh tracks didn't affect an audience watching The Simpsons (perhaps becuase that show is actually funny). Those results somewhat contradict this study on canned laughter here where canned laughter increased 'mirth results' (now there's a name for a blog). More on laughter here.
Important case from the Central District of California regarding direct, contributory and/or vicarious liability of peer-to-peer networks. Big win for P2P. Ramifications for record industry spoofers.
Coverage here at the Times, here at Slashdot, and here at Siliconvalley.com.
Further rumination: If these networks are legal, and they are competitors of the record companies' own online ventures, and the record companies authorize agents to flood these networks with bad products, thus damaging the networks to the point where they can't carry on business . . .
OECD on ccTLD Administration, including review of trademark and whois policies.
That said, Volvo may still not have this domain name dispute thing straight.
The front page of today's Wall Street Journal has "As Apple Stalls, Steve Jobs Looks to Digital Entertainment" which gives some credence to the view that in the end, the computer hardware business will save the recorded music business. But, to show you my skewed view of the world, here is the part that caught my eye, describing negotiations between Pixar and Disney:
Mr. Jobs was intimately involved in all aspects of the negotiations. At one point . . . he haggled with Disney over how the two companies' logos would appear in film credits and advertising.
Now there's someone who appreciates what I do for a living.
Marketwatch on the 'bubble' in search stocks such as Overture and Ask Jeeves (registration is required after the story is 24 hours old). In addition to the reasons specified in the article why these stocks are perhaps over-priced, there is another one: legal uncertainty. If keyword sales helps a company sell binoculars more efficently to people searching for finches, than that's fanstastic. What's unsettled at this time is the legal status of Search Company selling [Trademark of A] as a keyword to A's competitor. The lower court decision in Playboy v. Excite is, imho, a badly reasoned case that should not predict how the 9th Circuit (and other circuits) will rule. I have not seen figures indicating what percentage of targeted advertising sales come from keywords consisting of trademarks (some companies, such as Google, impose terms and conditions which would appear to help it lower its exposure to litigation arising from a third-party protest).
Furthermore, the FTC has already shown that it is paying its attention to the manner in which search engines display paid-for search results in comparison to non-paid-for results. This suggests that not everyone is taking heed. Stock-buyers beware.
Depicted above: a product from the company that appears to have purchased 'bubble' as a keyword from Google. This product is known as 'economy bubble.'
So you will notice two things about the metasearch. The first is that Canada is not working. That is Canada's fault. Second, we are starting a registration process. The first time you log onto the metasearch or the domain dossier you will be asked to supply an email address. It has to be a real email address because we will immediately send you a verification link. Then you click a couple of times, set a cookie, and forget this ever happened (just like when you use nytimes.com). Your data is maintained under the SchwimmerLegal privacy policy, which is not me pantomiming locking my lips and throwing away the key. We will not reveal the data to third parties. We will not send you email advertising low mortgage rates. We do not log (have never logged) the actual search terms. We may send you IP alerts and information about the firm.
Some unknown number of you are reading the Blog using aggregators and may or may not have visited the Website itself. If not, you are missing out on nifty features we have used to decorate the from-the-factory Userland template.
Starting from the lower left, above the Creative Commons license, is a link to ccTLD reference information.
Above that is the Domain Dossier, which allows you to input a string and returns whois data for the major gTLDs (warning - this tool requires patience during U.S. business hours).
Then there is the recently repaired International Trademark Metasearch, a free tool that allows you to search trademark registries in 11 major jurisdictions (including the CTM and Madrid).
The contact button allows you to contact me and retain my firm for your domestic and international trademark, copyright and domain name needs.
The instant message button allows you to instant message me, assuming I'm at that computer at the time (the button says "I'm Online" when what it means is: "this computer is on.").
Going to the right side of the frame, we see the calendar, which should probably be labeled "browse archives by date."
And finally, we see the recently repaired Google tool, which allows you to search the Blog's archives.
Thanks, enjoy your visit.
The Wall Street Journal's Cranky Consumer column (Page D2 today, no link) compared search engines on various tasks - finding a specific product, finding a local business, etc. Recommendations - Froogle for finding the radio, AOL's yellow page service for zip-code based searching of local businesses. Singled out for criticism - MSN, for being the least clear about graphically distinguishing paid- from un-paid search results.
I tried out MSN's search and I see what the Journal is talking about. In fact, if I hadn't read the Journal's article, I wouldn't have been able to figure out which hit results were paid-for (they have a small 'about' link next to them which, I imagine, no one clicks) and which hits were on page one because of relevance. One has to question why MSN goes to these lengths to obscure what Google's communicates easily).
Search engines can function as powerful brand directories but not if there is a disconnect between user expectations and user experience.
Nike v. Kasky, the commercial free speech case, will be argued before the Supreme Court Wednesday. Here, via SCOTUS Blog, are links to everything you could possibly want to read about the case, including many many briefs.
Dave and Doc lobby Google to introduce a "date of first use on the Web" feature. I second that. That would be immediately useful in trademark work, where timing sometimes is everything. It wouldn't be authoritative because of the unknown unknown "dark web" in the past (uncached web pages), but still it would be helpful.
This will be interesting. Madonna has reportedly uploaded "decoy" files to peer-to-peer networks, in order to discourage piracy. Users who believe that they are downloading Madonna's new album receive instead a recorded admonition from Madonna herself advising the user to respect the copyright in her work (not precisely in those words).
When the record companies began 'spoofing' the P2P networks, I wondered aloud what precisely might happen if it became known that an artist was disseminating low-quality or no-quality versions of one's own work under one's own trademark, and I referred to one possibility as self-tarnishment.
Well, from a branding point of view (which is what I had in mind when I said what I said), we are seeing something of a backlash against Madonna. Look at the comment thread here filled with threats never to buy her records again. Also, her website has been hacked. Whether she makes this back with re-gained sales, hard to tell.
The trademark analyis is more complex. This assertion that Madonna is possibly abandoning her mark may go too far. In any event, how Madonna could be said to abandon her mark to the point that she couldn't prevent another recording artist from naming themselves Madonna is hard to imagine.
The trademark analysis may hinge on the legality of a 'normal' transaction on a peer to peer network and the user's expectations. When someone is downloading a copy of an album from a peer to peer network, and they believe that they are downloading an unauthorized copy of a copyrighted work (or have an objectively unreasonable belief that they are authorized to download the work), is that transaction even considered to be lawful commerce? Does the law protect infringers from being deceived?
On the other hand, if these P2P transactions are legal, well, then, the spoofer might have some problems, trademark and otherwise.
Plasticbag.org rebutting arguments that search engines will reduce the importance of domain names. Many accurate observations, but, in my view, they better support the argument that search engines will not decrease the importance of brands.
An attentive reader, inspired by the Spaldeen piece below on protectable rights in a public's nickname for a product, forwards this pertinent story from winebusiness.com. A $1.99 wine by Bronco Wine named Charles Shaw is popularly known as TWO BUCK CHUCK. A third-party has now come out with its own TWO BUCK CHUCK wine. Now all Blog readers will know what law governs rights created by nicknames (should it come to that),
Ironic tidbit: Speaking of nicknames adopted as trademarks, the attentive reader works at MOFO.
How one man made art of Google AdWords.
"The Oakland Raiders have asked a judge to prevent the Tampa Bay Buccaneers and the Carolina Panthers from wearing their uniforms for games in California because they violate the Raiders' trademark rights."
suggests an absurd image.
Spalding has announced that it will sell its non-golf business to Russell Athletic. This article says that the sale will include ownership of the SPALDING name for those sporting goods, making SPALDING one of the better known split-ownership marks.
The article does not mention the SPALDEEN mark. If you grew up in New York City, then you owned a Spaldeen, period. I will not go into a maudlin reverie about stickball now but I wouldn't mind a quick game of chinese handball. The name derived from the Noo Yawk attempt to pronouce Spalding. At some point the company woke up to the prevalence of the alternate name and acquired a federal registration for SPALDEEN covering high bounce balls.
Other companies have aquired protectable rights in nicknames for their products created by the public, COKE, HOJO, AMEX, MICKEY D's and BIG BLUE being examples. SUNNY D is probably not an example as I doubt anyone other than a copywriter ever used that term. Usually the companies adopt those nicknames and they become plain old trademarks, sometimes they can assert rights merely on the use by the public. An excellent summary of the caselaw on the protectability of brand nicknames by the Arent Fox firm is here.
History of the Spaldeen, chinese handball and asses-up here.
TechLawAdvisor's explanation as to why Sony dropped the SHOCK AND AWE game is dubious.
The Abu-Ghazaleh firm on Iraqi trademark law.
The domain dossier takes a string and searches the whois of the major TLDs (com, net, org, info and biz). It reveals that domains names beginning with JESSICALYNCH, PFCJESSICALYNCH and PFCLYNCH are pretty much all gone by now. Other people named Jessica Lynch (presumably) registered jessicalynch.com and jessicalynch.net previously. The rest got snapped up on April 2 or 3. A few jessica-lynches have been registered as well. The UDRP does not protect personal names as such.
The Wall Street Journal has an article entitled "Tool Traps Poachers of Web Names" in which they give a nice plug to BrandCrawler, a service from BulkRegister. Last Thursday's Journal mentioned GenuOne's product (discussed here previously). I'm of several minds (and have various conflicts) when discussing tools which allow for policing or searching names on the Internet.. In the Journal article, the first paragraph tells the success story of the National Guild of Hypnotists, which used BrandCrawler to discover www.nationalguildofhypnoists.com. I thought to myself: "they needed someone else to find that one?"
The first generation of policing oriented spidering tools had their eye up to the wrong end of the telescope. When searching a mark, you want every conceivable hit, but when you are policing a mark, you want only a manageable quantity of relevant hits. You don't want the chaff to obscure the wheat, and you don't want to needlessly start the laches clock running by learning of a problem you don't have the resources to deal with today. Therefore raw spidering, which produces phone-book-sized reports of hits, wasn't very useful (without someone taking the time to methodically review them). The next generation, such as GenuOne, which uses its own heuristics to suggest relevancy, is a step in the right direction.
I haven't tried out BrandCrawler so I can't comment. A competiting domain name watch product is CheckMark (disclosure - I know the owner) which I did try out and liked. CheckMark is good at handling typo-marks and also ccTLDs. For DIY domain name policing you may consider periodically checking out DomainSurfer, which searches for the presence of a string anywhere in the domain name.
As to policing the presence of a term on the web content, I'm not sure the magic compromise between comprehensiveness and relevancy has yet been achieved. It is tempting to put a term in DogPile and conclude that if a problematic website isn't showing up in the top ten hits there that it isn't worth worrying about (that, unfortuntely, is a fallacy). Tools such as GenuOne go beyond merely finding a hit and comment on the content itself - for example it attempts to identify websites which might be selling unauthorized or grey market versions of a product. However I believe that such products are not priced for small businesses as of yet.
There are many useful free or reasonably priced policing tools out there (like my poky domain dossier, best used during non-business hours), but the small to mid-sized business might not know they exist. One thing I do with clients is 'interview' them as to how their brand is being used on the Internet, and then we come up with a mix of DIY and other services which either my crack staff or outside vendors provide.
Different types of policing tools, including pepper spray, here.
Eugene Volokh via Slate on why Pfc. Jessica Lynch, like Zelig, doesn't own the rights to her own life.
Explain-o-joke: In Zelig, the main character sells the rights to his life story to a movie studio. There's a lawsuit and in the settlement, he only gets back the boring parts.
An article from Slate on the fake Puma ad and a different way of looking at tarnishment - subviral marketing.
Initial Interest Confusion (IIC) is, imho, one of the key doctrines in the treatment of trademarks on the Internet. If a user is diverted to a website through the unauthorized use of a trademark (in a domain name, meta-tag or some other method), but any confusion is dispelled prior to purchase, is that trademark infringment (or some other form of unfair competition)? The Ninth and Seventh Circuits believe IIC exists in an Internet context. Other courts dismiss it, believing that users are inured to winding up at the wrong place (and getting over it).
It is therefore frustrating when a partial record suggests that IIC could have been argued and evaluated. Defendant had been selling plaintiff's product on a webpage which included plaintiff's mark in the pathname (the stuff after the top level domain in a URL). When defendant switched products, it didn't bother to change the webpage URL, so plaintiff's mark remained (this is the page here by the way, which has been changed). Defendant's page continued to appear in searches for plaintiff's mark. Plaintiff sued for trademark infringment.
The Sixth Circuit held that unauthorized use of a trademark in a pathname of a URL is not actionable, finding, quite sensibly, that use of (an unpromoted) URL is not trademark use. It is possible to use a pathname as a trademark (some movie companies have, putting pathnames on posters), it's just not practical, given that they tend to be long and ungainly. In any event, this defendant didnt use the URL as a trademark, it just used it as a URL.
This would have been an interesting case if it were shown that the existence of plaintiff's trademark in defendant's pathname diverted search engine traffic. Then we might have had an initial interest confusion discussion. However, as the very last footnote indicates:
IPC [plaintiff] also complains that a2z's [Defendant's] portable-computer-stand web page is listed as one of the hits when one does an Internet search for the term "laptraveler." IPC's own expert, however, testified that "the path name does not bias a search engine." In addition, IPC has offered no proof that defendants did anything nefarious to cause search engines to hit a2z's web page when searching for "laptraveler." For instance, IPC does not present any evidence that defendants referenced "laptraveler" in the metatags of a2z's portable-computer-stand web page. See Promatek Industries, Ltd. v. Equitrac Corp., 300 F.3d 808, 812-13 (7th Cir. 2002) (holding that the defendant's reference to the plaintiff's trademark in the metatags of the defendant's web page was a violation of trademark law). The record does not contain any evidence that explains why a2z's web page is hit when performing an Internet search for "laptraveler."
And with that mystery unresolved, the case was dismissed.
Interactive Products v. a2z Mobile Office Solutions, No. 01-3590 (6th Cir. April 10, 2003).
Denise collects links on yogi's behaving badly. The founder of Bikram Yoga is attempting to enforce copyright in his style of yoga and trademark in his name.
New York Yankees great Yogi Berra was so named because he reminded a childhood friend of a yogi he had seen in a movie.
It is generally accepted that the Hanna-Barbera character YOGI BEAR is named after Yogi Berra and the Yogi Berra Learning Museum of New Jersey contains Yogi Bear items.
Yoga Bear provides yoga therapy.
The Trademark Project, a new blog, became aware of a pending application for the mark TOP TEN TTAB DECISIONS OF 20** filed by a trademark lawyer, for articles about decisions of the Trademark Trial and Appeal Board. The blogger notes that the mark seems descriptive, and also, it appears to be an unregistrable phantom mark. It asks "Someone please explain this one."
Without commenting on this particular application, Trademark Project's query seems to concern what are known as phantom marks. When someone uses a series of marks that are mostly similar but might differ only through a single term such as a date, or flavor, or topic, there is an economic motivation to file a single trademark application and leave one element blank (the Phantom element). IDG, for example, owns a 1995 registration for "_____ FOR DUMMIES."
However, a Federal Circuit case in 1999, In re International Flavors & Fragrances Inc., 51 USPQ2d 1513 (Fed. Cir. 1999), suggests that such registrations are not enforceable. Furthermore, PTO Examination Guide No 1-99 says that the PTO will reject such applications, on the grounds that phatom marks violate the one mark per registration rule. See the Examination Guide for work-arounds. I note that IDG owns an additional registration for the term FOR DUMMIES.
Information on King Feature's Phantom character here.
Boston.com reports that a German Federal court has ruled that TopParty for plastic containers is not confusingly similar to the TupperWare mark.
Information on hosting a TupperWare Party here.
Audio file of TupperWare burp here.
Several readers pointed me to this article indicating that Sony has 'registered' the term SHOCK AND AWE in the U.S. for video games. I did not see Sony's name among the 15 applications for SHOCK AND AWE or SHOCK & AWE that the U.S. trademark database here shows as having been filed since March 20. It's not possible to say whether any of the listed applicants were working as agents for others. One applicant, Trademarks, Etc., is in the business of filing trademark applications for others. One applicant appears to have crammed goods and services from approximately 20 classes into his single class filing, and will likely receive an office action requesting an additional $7000 in filing fees.
As for a SHOCK AND AWE video game, well, to quote Donald Rumsfeld, this is not a game. I think these filings are in poor taste and disrespectful to the families of those who lost lives in this conflict.
Waxy.org has used Google to compile a list of the most frequently mispelled, uh, misspelled words on the Internet. Via Kottke.org.
EEC Advocate General Jacobs has issued an opinion disagreeing with a Court of First Instance decision, recommending that OHIM reject a trademark application filed by the Wrigley company for the mark DOUBLEMINT, on the grounds that it is descriptive, either of a gum which contains two types of mint, or of a gum which has, uh, double the normal amount of mint.
AG Jacobs distinguished this from his previous opinion in BABY-DRY where he found that the term was registrable for diapers because:
"Whilst each of the two words might form part of expressions used in everyday speech to designate the function of babies nappies, their syntactically unusual juxtaposition was not a familiar expression in English, either for designating nappies or for describing their essential characteristics."
DOUBLEMINT did not have syntactically unusual juxtaposition. MINTDOUBLE would have. In finding DOUBLEMINT unregistrable, AG Jacobs cited the common rationale for barring registrability to descriptive terms, namely, as the Germans put it, "freihaltebedurfnis," the need to keep free [for other merchants in the trade to use].
In contrast, the term BABY-DRY "is not suitable, in the ordinary language of trade, as a designation of characteristics of the product in question" and therefore there was no public interest in preventing its monopolization.
Wrigley possibly could have overcome the freihaltebedurfnis argument with a better showing of secondary meaning. It did proffer registrations it held for the mark in most EEC countries. However, these registrations were discounted by the AG, in part, because they covered stylized or design versions of the mark, and thus didn't prove registrability of the word mark alone.
AG Opnion in OHIM v. Wrigley, Case C-191/01 P here. Court of First instance decision here. BABY-DRY cite is Judgment of 20 September 2001 in Case C-383/99 P Procter & Gamble v OHIM [2001] ECR I-6251
ADDENDUM: Amadeu Abril i Abril correctly took me to task for the first version of this piece. This was an AG Opinion, not a decision of the ECJ. I had incorrectly stated that the AG "reversed" a lower court decision - he can't - he can merely recommend that the ECJ reverse the decision. His opinion carries great weight but the ECJ is not bound to follow him. In other words, it is conceivable the ECJ can ultimately find DOUBLEMINT to be registrable.
Here is the weakness and strength of blogging - quck and easy to make mistakes and corrections.
For those of you planning to attend the INTA meeting in Amsterdam in May, but who haven't booked a room, there are still some rooms available through cheaphotels.com. Here are 20 things to do in Amsterdam other than discussing trademark law. Here is the Hip TravelGuide to Amsterdam. Email me if you have good ideas for stuff to do there.
This article reports that Taiwan is likely to join the ranks of those countries which grant protection to sound marks. The U.S. has done so for some time, starting in 1951 with the NBC chimes. Other famous sound marks include the "Intel Inside" bah-buh-buh-bah! sound and the Merrie Melodies Looney Tunes jingle. For more on sound marks, here's an article by Candida Hinton, and an international INTA survey.
Proving that even trademark officials can be confused, in the article mentioned above the head of the Taiwanese trademark office is asked to give examples of sound trademarks, and he refers to "the roaring lion at the beginning of every MIRAMAX movie."
Yahoo has a new enhanced search page which acknowledges the different types of searches users conduct - "full text," topical index, yellow page, and news. I tested it out with some absolutely unique marks or mark plus descriptors (VEUVE CLICQUOT, ROLEX, SONY CAMCORDER), some generic terms, and some "common names" (DELTA, ROYAL, LLOYDS). I felt that the "sponsored" hits overwhelmed the web results, sometimes pushing them off the screen. That would be more appropriate for the yellow pages, where users expect display ads to supplement and visually overwhelm the bare bone listings. The yellow page directory was much more effective than a web search engine for local-oriented inquiries such as ARMONK PIZZA. It is still hard to efficiently identify, for example, the places that sell a HP Printer near me.
p.s. Typo-squatting does not appear to be a problem using these search engines.
More info from Yahoo here.
The Dow Jones wire is reporting that Ty's (maker of Beanie Babies) petition for cert has been rejected in the BARGAINBEANIES.COM case, so this Seventh Circuit decision on the fair use of a famous trademark in a domain name stands.
I just received an email request from Bangladesh asking if he could have the Bangladesh MECCA COLA rights. Resisting the temptation to ask for an upfront cash payment, I directed him here.
Explanation to those just joining us: because the Google gods love blogs, my site is one of the first non-Arabic sites appearing in a Google search for MECCA COLA, as a result of my running several pieces on it.
Indian cybersquatting case regarding DELHIHIGHCOURT.COM and DELHILOWERCOURT.COM, via Kamudi Online via NameProtect.
What do trademark lawyers charge? There isn't a lot of hard data but I have anecdotal evidence as to what constitutes "market," at least in my part of the world. Therefore my jaw dropped when I took over two clients recently and saw their old bills. One NYC trademark boutique (not on anybody's short list) was charging $975 to file a trademark application (plus government fees). The NYC office of a large white-shoe firm was charging $1000 (plus fees) to file a U.S. renewal affidavit. I could double my rates, do the work myself without a paralegal, and still under-price those firms. Some mega-firms are up front about their cost structure, telling clients that they build their IP departments for bet-the-company litigation, not trademark prosecution (we're built for both). I don't know what the boutique was thinking.
Habeas sells an anti-spam solution consisting of a copyrighted and trademarked Haiku. The Haiku must be appended to an email in order to pass through a Habeas spam filter. Thus mis-use of the Haiku, Habeas argues, is copyright and trademark infringement. Habeas has now announced the first batch of copyright and trademark suits against spammers who allegedly mis-used the Haiku.
Strange article via NameProtect regarding a German lawyer hassling Linus Torvalds, owner of the LINUX trademark, in Germany. Misinformation, possible due to bad translation: while German trademark law does contain a 5 year user requirement, a German registration does not expire after 5 years as the article implies (German trademarks have 10 year terms, same as the U.S.). If challenged in a cancellation proceeding, Torvald would have the opportunity to show that he uses or authorizes the use of the LINUX mark in Germany. However, the article is a report of this original article in German (which I cannot speak) and maybe it gets it right. There is apparently no reference to Tux the penguin in the article. More on Tux here.
SPEJBL and HURVINEK are famous marionettes in Prague. This article from Prague Post Online reports that a dispute regarding the ownership of their names has now been resolved in favor of the creator's estate. More on SPEJBL here and here. Puppetry links here.
A little bit of a puff piece via the Sydney Morning Herald but still a clever demonstration as to how color can designate origin and function as a trademark. Eco-Bananas has been granted a trademark in Australia for its red tips made of wax placed on the end of its bananas. The article indicates that there are 74 color trademark registrations in Australia, including one owned by Kraft for silver for cream cheese.
We previously reported that the NFL sued former Oakland Raider John Vella who had named his chain of sporting good stores RAIDERS LOCKER ROOM. Yahoo now reports that the case has been settled and the stores will be re-named JOHN VELLA'S LOCKER ROOM. Playboy v. Welles, the relevant caselaw on one's ability to trade on one's past, here.
The ICEE mark is owned by an entity itself owned by several of the ICEE product regional distributors, including plaintiff ICEE Distributors and defendant J&J Snack. J&J began selling ICEE frozen tubes in Plaintiff's territory. Plaintiff received an injunction on both breach of contract and trademark dilution grounds. The Fifth Circuit affirmed the injunction on the contract grounds, however it held that Plaintiff had no standing to bring the dilution claim, as it was an exclusive licensee and not the trademark owner. For the decision, click here and use ICEE as a search term.
Dastar v.Twentieth Century Fox will be argued before the Supreme Court today. The issues presented are:
1) whether the Lanham Act protects creative works from uncredited copying, even without a likelihood of consumer confusion, and 2) whether a court applying the Lanham Act may award as damages twice the defendant's profits for purely deterrent purposes.
Comprehensive introduction to case here via SCOTUS Blog.
Predict the decision here.
Extensive trademark complaint filed by Philip Morris against alleged cigarette counterfeitors, via Amlaw.com.
Interesting aside: included in the complaint is an allegation that defendant's imported "grey good" Marlboros (authorized when sold outside the U.S but imported against the trademark owner's wishes). In order to overcome "trademark exhaustion" (that the trademark owner cannot exert control over its goods once they have been sold), the trademark owner must establish that the non-U.S. goods materially differ from the U.S. version. Here, Philip Morris alleges that its non-U.S. cigarettes are materially different because, in part, the package doesn't offer redeemable "Marlboro Miles."
UPDATE: Famous and well-known trademark lawyer Peter Sloane from the Ostrolenk firm writes in to point out that in Philip Morris v. Allen Distributors, 51 USPQ2d 1013 (SD Ind. 1999), the Court ruled that the absence of redeemable Miles did constitute a material difference in the non-US manufactured Marlboros. It should be noted that in that case, and here, Philip Morris alleged that the grey good Marlboros were also materially different because they were not subject to domestic quality control programs.
You can watch the war or you can watch ABC's "Are You Hot: The Search For America's Sexiest People." Here, via Amlaw.com, is Howard Stern's complaint alleging that he has acquired secondary meaning in a similar concept on his TV show in which people of undeniable beauty judge those less fortunate than they. It seems that ABC hired away his executive producer and head writer while negotiating with Stern, so there are theft of trade secrets and tortious interference claims along with the state unfair competition cause.
Here is a website "Hot or Not" in which you can judge others' appearances. Here is an application if you wish to be a contestant on "Are You Hot." Here is a blurb about another ABC show accused of lack of originality recently.
Plaintiff and Defendant are competitors. Defendant published numerous references to Plaintiff (including news of legal troubles and consumer complaints) such that Defendant sometimes appeared as the first hit when Plaintiff's name was used as a search term. The reference in the search engine was (accurately) labeled as "complaints about plaintiff." Plaintiff brought false advertising claims and also argued "initial interest confusion." Users looking for plaintiff's site would find their way to defendant's site, and not "take the trouble" to navigate back to plaintiff (or as the Sevent Circuit once put it: "Those who window shop, linger to buy.").
On reconsideration, the North District of California has reversed the injunction based on trademark law. The defendant met the three part test - used the mark to accurately describe plaintiff; reproduced the mark only to the extent necessary to identify plaintiff; and did not cause confusion. (See a recent previous Ninth Circuit fair use analysis here).
This is an important case regarding how use of another's trademark affects Internet navigation. Commentary from EFF here. Read the case slowly and carefully. J.K. Harris v. Kassell, No. 02-0400 CW (N.D. Cal March 28, 2003).
Drudge Report article on Marvel suing Sony over rights to Spiderman 
Article on Dr. Seuss estate protesting Manahattan restaurant named ONE FISH TWO FISH 
