You've Tried the Rest, Now Try the Best
Via the Miami Herald, Pizza Magia and Papa John's have settled their lawsuit that involved trade secrets for making pizzas.
« May 2003 | Main | July 2003 »
June 30, 2003
Savage Stupidity Prevails Over Savage
SAVAGE STUPIDITY is not confusingly similar to MICHAEL SAVAGE. Perhaps he should be flattered by that. Respondent's website apparently is critical of complainant's radio show. Respondent's press release here.
Talk Show Network v. Thomas Leavitt, FA0304000155182 (NAF June 24, 2003).
Injunction Upheld in Aimster Case
Posner on Aimster. Injunction against Aimster upheld. Decision here.
Entrepreneur Media v. EntrepreneurPR
Text of the decision in the ENTREPRENEUR case. Entrepreneur Media v. Scott Smith dba EntrepreneurPR, (C.D. Cal June 24, 2003).
Volokh on Commercial Speech
Prof. Eugene Volokh, of the highly recommended Volokh Conspiracy, wrote a good concise commentary of the Nike/Klasky commercial speech case, which case the Supreme Court decided not to hear, after initially granting cert. Look for it on the editorial page of today's Wall St. Journal.
June 29, 2003
New IPKAT on the Block
There goes my monopoly on the Arsenal v. Reed case. Professor Jeremy Phillips is the founder and editor of the European Trade Mark Reports for Sweet and Maxwell (which I recommend). He and his colleague Ilanah Simons have started an IP blog named IPKAT. Its subject matter is broader than mine in that the first week of articles include pieces on trademark, copyright and patents. In fact, they advise:
We colour-code our blogs: red for copyright, teal for patents, purple for trade marks, green for confidentiality, dark blue for competition and black for everything else.
Geographically, their focus is European. Welcome to the blogging neighborhood.
Fo Sizzle My Nizzle, M'Lud.
Not trademark, but an interesting UK copyright case wherin the court must interpret the phrase SIZZLE MY NIZZLE, among others. Via IPKAT.
Ten Years After
It was ten years ago this month that Adam Curry registered the domain name MTV.COM in his own name and all hell broke loose. My old firm represented MTV. I was thrown on the case because I was the only attorney who owned a modem (maybe 14.4 but I don't remember). I saw mtv.com the first time using a text-based browser called Lynx, downloaded from my then-ISP (Mindvox).
June 22, 2003
Pornography for Children, Zuccarini, Joker and ICANN.
Perhaps parents want to show their pre-school children the BOB THE BUILDER website at BOBTHEBUILDER.COM.
Oops, that was really BOBTHEBIULDER.COM, which directs to a pornography site.
Maybe your children want to see websites about Aaron Carter, Britney Spears, Buffy the Vampire Slayer, Digimon, Dragonball Z, the Muppets, Rug Rats, or Sailor Moon. They better type carefully because domain names consisting of close misspellings have been registered for all these names, registered to someone or something named Zuccarini, and registered with a registrar named Joker.
So who picks names like these to typo-squat, and who continues to do business with him?
Zuccarini is reportedly a fugitive for justice. The FTC obtained an order freezing 5000 or so names and attempting to collect $!.8 million from him. Some U.S. registrars have complied. Joker, of Germany, refuses. In fact, he appears to have registered another 3000 names since the FTC order, according to this report. Not only that, but Joker is refusing to comply with UDRP panels ordering it to transfer names. Ben Edelman, at my request, compiled a new report indicating that there are 21 domain names subject to un-appealed UDRP transfer orders which still remain registered to the originat registrant, usually an alias for Zuccarini.
It is too easy and incorrect to conclude that this is an unsolvable problem caused by the borderless Interet. It is reasonable to conclude that ICANN can and should do something about this. Joker is allowed to register gTLDs to the root solely due to its accreditation agreement with ICANN. This agreement requires it to, among other things, enforce UDRP decisions, and maintain correct whois info (and de-register names which have willfuly false contact data). In my opinion, Joker's refusal to honor these UDRP decisions, and its actual knowledge of Zuccarini's names containing false data, puts it in breach of its agreement.
ICANN's behavior to date on Joker is sphinx-like in view of what is now common knowledge. Two years ago an attorney wrote ICANN's general counsel to advise him of Joker's systematic refusal to honor the UDRP. The letter was not acknowledged. When I indicated to a high-ranking ICANN official that I was having troubles with a registrar, his immediate reaction was: "Joker, right?"
The rationale for privatization of the DNS was that ICANN's 'web of contracts' would provide a regulatory mechanism. If ICANN can enforce the accreditation agreement, then it should either advise Joker that it is in breach of the agreement, or it should explain to the public why it chooses not to. If you are attending the ICANN meeting today, ask ICANN that question.
In the meanwhile, BOBTHEBIULDER.COM and MUPPITS.COM and many other names like them primarily of interest to children, point to pornography.
June 21, 2003
Honeywell Loses Roundness Case
Honeywell has lost its motion for a preliminary injunction regarding Eco Manufacturing's distribution of a round thermostat. Honeywell's own thermostat had been the subject of a long-expired utility patent, and thus the round shape of the dial was functional, and not protectable as trade dress.
Eco Manufacturing v. Honeywell, 1:03-cv-0170 (S.D. Ind. June 20, 2003).
No Logo, Anti-Logo and Soft Sell
June 20, 2003
Another Sunrise Period Begins
Sunrise period opens for .kids.us.
Tiger Bogies Treacherous Sixth Circuit
The Sixth Circuit has denied Tiger Woods' appeal of a decision dismissing his trademark and right of publicity claims against an artist who had included Woods' image in a lithograph entitled "Masters of Augusta" (above). In pertinent part:
" . . .we find that Rush's work does contain significant transformative elements which make it especially worthy of First Amendment protection and also less likely to interfere with the economic interest protected by Woods' right of publicity. Unlike the unadorned, nearly photographic reproduction of the faces of The Three Stooges in Comedy III, Rush's work does not capitalize solely on a literal depiction of Woods. Rather, Rush's work consists of a collage of images in addition to Woods's image which are combined to describe, in artistic form, a historic event in sports history and to convey a message about the significance of Woods's achievement in that event. Because Rush's work has substantial transformative elements, it is entitled to the full protection of the First Amendment. In this case, we find that Woods's right of publicity must yield to the First Amendment."
ETW Corporation v. Jireh Publishing, No. 00-3584 (6th Cir. June 20, 2003)
Request for Comments re SPIKE LEE v. SPIKE TV
Viacom lost its appeal of the SPIKE TV case before the Appellate Division of NY State Supreme Court yesterday. Viacom alleges that it has wasted $17 million in promotional expenses as a result of the injunction. Two reactions: first, I wouldn't be thinking about Spike TV at all if it weren't for this case. Second, Spike Lee's name is now inextricably linked with that of SPIKE TV.
If you have comments on this case that you would like to share with the world, anonymously or otherwise, please send them to mailto:marty@schwimmerlegal.com
First comment in: Anonymous of Southern Westchester writes in to say that there are 189 registrations or pending applications on the US registry containing the element SPIKE.
Anonymous writes: This will turn out not to be the Summer of Spike after the NY COA does the right thing.
Anonymous writes: Spike Jonze is a better director.
An anonymous elevator in a mid-town Manhattan skyscraper notes through the Captivate Elevator network that its poll suggests that 78% of respondents don't believe that plaintiff has a meritorious case (although looking at the questions asked I'm not sure this is an admisable survey). This is the first time I've ever cited an elevator on this blog.
TV Guide, via The Business Lawyer, says that Spike Lee is vain to think that the network is about him.
An anonymous famous trademark lawyer notes that the reported $500,000 bond is a tad short of the reported $17 million Viacom claims to have lsot as result of this 'misunderstandng.'
June 19, 2003
NZX v. NZX in NZ
Weight Watchers Trademark Dispute Settled on Points
This would have been an interesting case. Weight Watchers had sued a UK Supermarket for publishing " Weight Watchers points" on its packaging - indicating to dieters how many 'points' that particular meal would use dieter's allotment of points. But the case is reported to have been settled.
Weight Watchers success story, Fergie, depicted right.
RED BULL Defeats BULLFIGHTER in UAE
Via AME Info, RED BULL energy drink wins trademark infringement case against BULLFIGHTER energy drink in the United Arab Emirates.
U.S.-Cuba Trademark Legislation Introduced
The U.S.-Cuba Trademark Protection Act of 2003 has been introduced. The Act will seek to help U.S. trademark owners obtain protection for their marks in Cuba by starting consultations between to the two governments.
AP Photo of Castro obtained here.
June 18, 2003
Pennsylvania Goes Into the Domain Name Insurance Business
A Third Circuit decison interpreting the advertising injury provision of a commercial general liability insurance policy, holding that the insurer is obligated to pay for the insured's defense against trademark infringment involving misuse of a domain name. A plainitff had alleged that the insured had infringed its trademark in MAGAZINES.COM by utilizing MAGAZINE.COM to send traffic to an adult entertainment site.
Held: The allegation of mis-use of the domain name constitutes misappropriation of an advertising idea or style of doing business under Pennsylvania law..
Cat Internet Services v. Providence Washington Insurance Co., No. 01-4166 (3d Cir June 17, 2003) (note: this decision came out in November as non predental and has now been made precedental).
A previous piece on advertising injury insurance here.
If I Were Senator Hatch's Press Secretary
I f I were Senator Hatch's press secretary and I was trying to back him out of the remark reported in this Washington Post article where he allegedly said that maybe the only way to teach some people about copyrights would be to allow the copyright holder to destroy their computers, I would suggest to him that he say that he was not referring to destroying the computers of home users who might have in effect shoplifted a few CDs or movies, but was instead referring to those professional counterfeiters who use their computers as illegal printing presses to distribute counterfeit works on a large scale. In that sense what the senator is suggesting is not so different from the remedies for destruction of means of infringement as provided already in Section 503(b) of the Copyright Act and Section 36 of the Trademark Act. Except for the due process thing. Or maybe he should just deny ever saying it.
UPDATE: What Senator Hatch's press secretary told him to say in real life here.
June 17, 2003
Fourth Circuit Decides Fire Truck Trademark Case
Fourth Circuit decision on, among other things, the difference between making a remote junior user affirmative defense, and objecting to a geographically overbroad injunction. No discussion of the importance of trademarks in the fire truck market.
Emergency One v. American Fire Eagle Engine Company, No 02-1483 (4 Cir. June 16, 2003).
Odorama v. Odorama
Thanks to the Blog reader who sent this item in. Reeling from its recent setback in the Spike TV case, Viacom must now defend itself against allegations that its use of ODORAMA in connection with its new Rugrats movie (scratch and sniff card depicted above right) infringes John Waters' rights in the term. He used it first in his 1981 comedy Polyester (scratch and sniff card depicted above left). The director of the Rugrats movie has stated, probably without advice of counsel, that she was inspired by John Waters and meant the use of ODOROMA as an homage to him. That reminds me of Tony Roberts' line in 'Stardust Memories:' "Homage? We outright stole it." Disclaimer: that remark was not intended as subtle commentary on the merits of the matter.
Polyester card image obtained from film gallery site here.
Wall Street Journal on Paid Search
Page R1 of today's Wall Street Journal: "Playing the Search-Engine Game." Good discussion of three prominent methods of advertsiing on the web: paid listings, paid inclusion and search engine optimization.
June 13, 2003
Spike Lee v. Spike TV continued
Spike Lee wins round one against Spike TV (billed as the first network for men). A little bit of background here.
Al-Jazeera Domain Name Hijacker Account
How somebody provided NSI with fraudulent documents and hijacked the Al-Jazeera domain name here via CNET News..
June 12, 2003
Commentary on DASTAR Decision
Commentary on Dastar v. Fox Supreme Court decision via FindLaw.
Abercrombie v. Aberzombie UDRP
June 11, 2003
Carefirst Remains Blue
CareFirst is the Maryland affiliate of BlueCross BlueShield. Its press release states that a decision by a federal judge regarding reforms pressed upon CareFirst by Maryland's Insurance Commissioner "ensures its continued use of the trusted Blues trademark." The national BlueCross BlueShields organization had suspended CareFirst's affiliation and ability to use the BlueCross BlueShield mark, arguing, according to this article, that the state-imposed requirements had created a state-takeover that in effect that violated its trademark agreement with CareFirst.
Contraband in Paraguay
NY Times article suggesting that one fifth of Paraguay's economy consists of smuggling, including 95% of its domestic cigarette production. (free subscription to nytimes.com required). I can attest from personal experience that fighting counterfeits in Paraguay is made more difficult by what the article refers to as "the inefficient and corruption-plagued Paraguayan legal system."
Map of Paraguay (c) copyright 203 Lonely Planet, Publications. All rights reserved. Source of fine travel guides here.
June 10, 2003
Spike Lee v. Spike TV
Movie director Spike Lee has sued Viacom, for re-naming its TNN Network as SPIKE TV. Via Salon.
Madrid Protocol Rules of Practice Comments
Comments to the PTO on the proposed Rules of Practice for Trademark filings under the Madrid Protocol Implementation Act, from the ABA, AIPLA, INTA and various law firms and individuals, here.
Map of Madrid, copyright 2003 Lonely Planet Publications, all rights reserved, travel guides are available here.
June 07, 2003
Lacroix, Darling.
Link via Gawker, from about.com, audio files re how to pronounce designer names.
Title explained here.
Federal Circuit: Dilution As A Basis For Opposition
Federal Circuit, in the first case considering dilution as a basis for opposing an application. Opposer couldn't establish that its mark was famous prior to applicant's use of the mark. Opposition dismissed.
Enterprise Rent-a-Car v. Advantage Rent-a-Car, No. 02-1444 (Fed. Cir. May 20, 2003)
June 06, 2003
May Lawyers Advertise Using Lies, Damn Lies or Statistics?
John Baden of Kenyon brought this interesting attorney advertising case to the attention of the INTA list yesterday:
"[A] recent decision (published in BNA PCTJ 66,48(May 9, 2003)), held that "It is misleading and self-laudatory for an Ohio law firm to provide prospective clients or other firms with statistics about the number of intellectual property matters won, lost, and settled by the firm, the Ohio Supreme Court's ethics panel advised April 11 (Ohio Supreme Court Board of Commissioners on Grievances and Discipline, Op. 2003-2, 4/11/03)."
Apparently, the inquiring law firm wanted to distribute statistics about the number of intellectual property matters won, lost, and settled by the firm, including all results, both unfavorable and favorable, ostensibly as "historical data, not predictors of the future outcome of any particular case." "The board observed that the Ohio Code of Professional Responsibility forbids a lawyer to use any form of public communication that contains any "false, fraudulent, misleading, deceptive, self-laudatory, or unfair statement,'' or that contains any "unverifiable'' claim. Although the Ohio ethics code does not ban the use of statistics, they must be verifiable and their use must not be misleading, self-laudatory, or unfair, the board said."
"The board concluded that it is likewise improper under the advertising rules to list statistics about the number of wins, losses, and settlements in intellectual property matters. Such statistics imply that wins and losses depend solely upon the firm's skill and expertise rather than upon the merits, the board found. It also said that the firm's proposed use of the statistics would be self-laudatory and would create unjustified expectations that the firm is able to control case outcomes."
Still, like a pitcher's win/loss record, taken together with his ERA and his batting average against, there will be some correlation to skill. However, what might not be clear to the client, is that the perfect record would be no wins, no losses, all settled.
Photo of Greg Maddux, a pitcher with a good winning record, from Starwave.com.
June 05, 2003
Fourth Circuit Case on Abandonment
Unpublished Fourth Circuit decision. Plaintiff registered AUDITRON in stylized form thirty years ago. Record indicated that he hadn't used that stylized form for 15 years. Defendant registered AUDITRON for hi-fi speakers, and then moved into health practice management software. Defendant registered auditron.com. Plaintiff brings infringement (section 32 but not 43(a) (infringement of an unregistered mark)) and cyber-squatting causes. The cybersquatting action was dismissed as defendant clearly registered the name in good faith, having used it for years. The infringement cause was dismissed as plaintiff had abandoned the stylized form. An allegation of infringement under 43(a) could have led to an interesting discussion in view of the unusual jump by defendant from speakers to management software.
Practice point for pro se trademark plaintiffs: Always bring 43(a) because if for no other reason, your registration could get cancelled.
Another practice point: plaintiff's loss of his registered rights illustrates why someone's first trademark application should be for a word mark or 'typewriter letters' as some call it. A company is much more likely to change its stylization over time than its housemark.
Sloane v. Auditron Electronic , 02-1787 (Fourth Circuit, June 5, 2003) (unpublished).
Fat Finger Dialing, the Phone System's Equivalent of Typo-squatting.
Via ICBTollFree: AT&T is suing Sprint, One Call and ASC for what it calls a 'fat-finger dialing scheme' whereby they obtained close versions of the toll free number 1 800 CALL ATT.
MCI reportedly owns 1 800 OPERATER (as opposed to ATT's 1-800-OPERATOR).
ATT reportedly owns 1 800 CALL MCI.
The FCC on fat-finger dialing here.
Global800 law libary, including a link to the 1-800-H0LIDAY decision here.
The domain name Fatfinger.com is taken by a Cayman Island company.
Not That I Agree With EveryThing They Say
The terms and conditions for this website are pretty funny.
This Blog Depicts No Violence, Sex or Drug Abuse, But Some Aberrational Behavior
Via Politech and info-commons.org, a demand letter from the MPAA to the owner of a website named RATEDNC-17.COM, which appears to distribute 'themes' or 'styles' for Linux. The MPAA Rating System consists of certification marks. The criteria for MPAA's NC-17 mark is:
. . . IN THE OPINION OF APPLICANT'S RATING OR APPEALS BOARDS, MOST AMERICAN PARENTS WILL CONSIDER THE MOTION PICTURE INAPPROPRIATE FOR VIEWING BY ANYONE UNDER THE AGE OF 18, BY REASON OF ITS DEPICTION OR TREATMENT OF VIOLENCE OR SEX OR ABERRATIONAL BEHAVIOR OR DRUG ABUSE, OR A COMBINATION OF THESE OR OTHER ELEMENTS.
In contrast, the criteria for the MPAA's "Rated R" mark is:
. . . IN THE OPINION OF APPLICANT'S RATING BOARD, IS AN ADULT FILM IN SOME OF ITS ASPECTS AND TREATMENT SO FAR AS LANGUAGE, VIOLENCE, NUDITY AND SENSUALITY ARE CONCERNED, AND THAT BECAUSE OF SUCH ELEMENTS NO NOE UNDER THE AGE OF 17 SHOULD BE ADMITTED UNLESS ACCOMPANIED BY A PARENT OR GUARDIAN.
The International Trademark Metasearch (free registration required) suggests that MPAA has extended its rights to Europe., where the ratednc-17.com website is apparently maintained.
There appear to be no valid U.S. registrations for the term RATED X or X RATED.
The MPAA ratings database is here.
An article on how the NC-17 rating evolved out of the X rating is here.
Chinese Famous Mark Case
Fortune Magazine is suing a Chinese radio station over its use of the Fortune name, in China. This via the new China Blawg.
June 04, 2003
Request for Feedback on Registrar Compliance
Registrars of generic top level domains must be accredited by ICANN, and the registrar submits to an agreement imposing various obligations.
In May I wrote to ICANN requesting that it review whether a specific registrar was in compliance with its accreditation. I indicated that I had reason to believe that the registrar was systematically refusing to comply with orders from UDRP panels to transfer domain names. Furthermore, I had reason to believe that this registrar was maintaining several thousand domain names that it knew were registered with willfully false whois data. ICANN is currently reviewing my request.
The Intellectual Property Consitutency of ICANN is now requesting feedback regarding registrar compliance (see below). You do not need to be a member of the IPC to respond. Please note that the request focuses on instances of systematic non-compliance with the accreditation agreement. Specific complaints regarding transfer and renewal can be lodged here.
Dear All
A number of instances of registrars failing to comply with their obligations under the registrar accreditation agreement have been brought to our attention and I thought it was appropriate to raise this with the constituency as a whole in order to gauge how widespread these practices are. The areas of non-compliance with which we are particularly concerned fall into two categories:
1. Non-compliance with a UDRP decision or decision of an appropriate national court to transfer a domain name.
2. Failure to cancel a domain name following notification of false WHOIS data.
It is important to intellectual property owners that registrars comply with the provisions of the registrar accreditation agreement which relate to WHOIS accuracy and the UDRP. Please can you circulate this request amongst the relevant individuals of your organisation and let me know if you have experienced either of these problems.
If there is a serious problem with compliance with particular registrars, this is something which should be brought to ICANN's attention. To assist the IPC in doing that, please can you provide as much detail as possible in any response (obtaining client consent where appropriate) and provide contact details in case further details are required.
Many thanks
Jane Mutimear jane.mutimear@twobirds.com
President IPC
TTAB Wrap-Up
John Welch of Foley Hoag has wrtten a comprehensive article entitled "The TTAB in 2002: Strong Marks, Weak Marks, Phantom Marks, and No Marks at All." There is an extensive discussion of dilution cases including CURIOUS GEORGE vs. FURIOUS GEORGE. There is also an analysis of the ST. JOHN WORTS TORTILLA CHIP case.
Irrelevant link: Furious George Cross-Country Crime Spree game. Not the Furious George mentioned above and not authorized, etc.
Cybersquatting is Unfair Competition Down Under
Warwick Rothnie, who wears a horsehair wig because he's an Australian barrister, reports what he describes as a "reasoned decision finding that cybersquatting breaches our laws on unfair competition but is probably not trademark infringement."
Harshest comment made about the defendant: "[Defendant] clearly has no regard for the turth."
Runner-up: "[Defendant] has a law degree. He is not in the normal case of a self represented litigant who might have no knowledge of the law, albeit that his knowledge of the law might strike one as rather slight for one who holds himself out as an expert in intellectual property."
Things you learn reading trademark cases: Plaintiff, CSR Sugar, produces 4% of the world's sugar.
CSR Limited v. Resource Capital Australia Pty Ltd, [2003] FCA 279 (4 April 2003)
June 03, 2003
Fourth Circuit Reverses Barcelona.com Decision
The Fourth Circuit has reversed the lower court in the Barcelona.com case. The District Court had held that the owner of a Spanish national trademark registration could invoke the Anti-Cybersquatting Consumer Protection Act. In contrast, the Fourth Circuit held today that "It requires little discussion that this use of Spanish law by the district court was erroneous under the terms of the statute."
Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, No. 02-1396 (4th Cir. June 2, 2003).
Another Unanimous Supreme Court Trademark Decision
The Supreme Court held today, 8-0, that the Lanham Act, simply put, does not prevent the uncredited copying of a public domain work.
Dastar v. Twentieth Century Fox, no. 02-428 (June 2, 2003).