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Free tip (as I confront this issue for the millonth time) when drafting a licensing or distribution agreement. Make the following point unambiguous:
"Licensee is not authorized to register or use domain names reflecting the TRADEMARK or variant thereof in whole or in part."
For Japanese Baseball fans: the Hanshin Tigers have come to a settlement with a fan who registered the trademark HANSHIN VICTORY. Via the Mainichi Daily News.
Not sure what to make of this IPKAT item on fictional characters, The Tweenies, suing the BBC for human rights violations under Article 9 of the European Convention on Human Rights. The piece notes that fictional entites such as corporations can assert rights under this convention so why not ficiutional characters as well.
EasyJets ads may be confusing but they are not offensive. While reprimanded for ads that don't clearly disclose fare information, its ads that disclose women's breasts with the tagline "Discover Weapons of Mass Distraction" were found by the UK Advertising Advertising Authority to be distasteful but not offensive. Via AdRants. JupiterResearch reports that the woman whose breasts they were wasn't aware those were her breasts in the ad.
People have filed U.S. trademark applications for WEAPONS OF MASS DESTRUCTION, WEAPONS OF MASS CONSTRUCTION and WEAPONS OF MASS INSTRUCTION, but have not yet filed for WEAPONS OF MASS DISTRACTION.
The Sierra Club advises us that:
Hummerdinger.com is a work of parody and is in no way affiliated with or authorized by General Motors Corporation, as far as we know. Also, any resemblances or similarities between this aforementioned work of parody and real life are either a) crafted with satiric intent or b) complete and utter coincidence.
Via Prof. Lessig's blog, a movie review from Newsweek of THE LEAGUE OF EXTRAORDINARY GENTLEMAN. It is not a rave review of the movie, but it is a rave review of artists reworking material in the public domain.
Tidbit: The movie has a character referred to AN INVISIBLE MAN because of prior rights in THE INVISIBLE MAN.
The PYCNOGENOL case, discussed here previously, has been affirmed by the Ninth Circuit. Defendant, a competitor of plaintiff, placed plaintiff's trademark in its website's meta-tags. Such use caused confusion and therefore did not pass the Ninth Circuit's test for nominative fair use. There is no discussion as to whether defendants use caused initial interest confusion or 'regular' confusion, nor was there any elaboration of the lower court's concept that 'unreasonably pervasive' meta-tag use is too much meta-tag use.
Horphag Research v. Pellegrini, no. 01-56733 (9th Cir July 29, 2003).
When domain names expire they leave skeletons - networks of inbound links that continue to funnel traffic to that name, even if ownership has changed. Via eWeek, we learn that Microsoft owned HARDWARE-UPDATE.COM and used the name for a site featuring Windows drivers. The domain name is embedded in various error messages in Windows 2000. However, Microsoft did not renew the domain name and Ultimate Search, a company that specializes in this sort of thing, scooped it up. Now the page provides sponsored links, courtesy of Overture. The article reports that the top sponsored link pays over $3 a click-through.
A loyal Trademark Blog reader forwarded us this Wine Spectator article about the use of the JOHN HANCOCK signature on wine. In this case the winemaker's name is John Hancock and that is his signature. Nevetheless, he has received a protest from the John Hancock insurance company.
Yes, you can fairly identify yourself as the source of goods. No, you can't use your own name as a trademark if it causes confusion. Ah, but can you use your own name if it allegedly causes dilution?
Nothing to so with trademarks but I thought I would share this with you. Here is a link to Time Magazine's digital archive, an article entitled the Top 50 Cyber Elite of 1998. No. 11 is Bernie Ebbers. The last lines are:
Though some are hesitant about the performance of the new MCI-WorldCom, company earnings have increased at least 20%. WorldCom is here to stay. It's a smart addition to any portfolio.
OBELIX and his friend ASTERIX are French cartoon characters (with a cult following in the U.S.). IPKAT reports that Obelix, who, incidentally, built Stonehenge, recently obtained a novel trademark ruling in Portugal involving obtaining damages without establishing actual lost sales.
Business Week and Interbrand have released their annual list of the Top Global Brands. The top ten, and their estimated brand vaule in billions is reproduced below. The whole list can be accessed here and the article here:
. . . then you should write (see the 'contact me' thing on left frame) and share with us your thoughts on the tax implications of the SEX.COM decision (see below), holding that a domain name is intangible property, and not a contract for services.
The Ninth Circuit has issued a decision in the SEX.COM case. Kremen had registered SEX,COM back when domain naems were free. Someone named Cohen sent a forged letter to NSI (the .com regsitrar) asking that it transfer control of the domain name. NSI complied. One of the facts with which I am not aware (and which is not articualted in this decision), is when Kremen notified NSI of the forgery, what was its rationale for refusing to comply. Kremen regained the domain name but has not been able to collect meaningful damages from Cohen (who is now a fugitive from justice). Kremen sued NSI for damagesas well.
The Ninth Circuit has tossed out Kremen's contractual theories, stating that because Kremen did not pay for the domain name (this was in the pre-domain name fee days) he did not have a contract with NSI. This again raises the question, if NSI didn't have a binding contract with Cohen, why didn't it give the name back to Kremen once the forgery was established.
However, the Ninth Circuit did hold that Kremen had an intangible property right in the domain name. And now the case has been remanded to determine if NSI has liability for giving away that intangible property to a third-party.
Kremen v. NSI, No. 01-15899 (Ninth Cir. July 25, 2003)
My wife and I saw Roxy Music at Radio City last night. As we were leaving, we overheard an older woman (I mean older than everybody else there, who were all pretty old - I mean Bryan Ferry is 60) talking to a Radio City employee. She seemed to be saying that she wanted her money back because someone had told her that this concert would feature Radio City's famed Rockettes. I imagine her patiently waiting throughout the concert vainly hoping that Bryan Ferry and Phil Manzanera would do a high kick line.
There is something of a connection. Samuel L "Roxy" Rothafel was a promoter and brought the Rockettes , first named the Roxyettes, to Radio City. He also designed the Roxy Theater, which was a much-copied movie palace.
Bryan Ferry has indicated that he named his band Roxy Music, in part to suggest movie palaces.
So I think they should give her money back.
"Jealous Guy" was the highlight of the concert.
The term METROSEXUAL is gaining currency (see here, and here). There is even a dispute as to who coined it. The domain names METROSEXUAL.COM and METROSEXUAL.NET have been registered but are not in use. There are no trademark applications incorporating the term in the U.S. as of yet.
Sixth Circuit: Toucan Gold for golf clubs not confusingly similar or dilutive of Toucan Sam for Fruit Loops. Kelloggs argued, inter alia, that a 1982 animated commercial for Fruit Loops showing Toucan Sam talking to a golf playing bear "indicate[s] that the Toucan Sam marks are related not only to the manufacture of breakfast cereal, but to the golf equipment industry as well."
Kellogg Company v. Toucan Golf, No. 01-2394 (6th Cir July 23, 2002).
A Las Vegas company, is suing Marshall Mathers, aka Eminem, aka Slim Shady, over the right to use SHADY in connect with clothing.
Mr. Mathers apparently has another problem with slimshady.com which he does not appear to own (don't click, the thing is mouse-trapped, it re-directs, you'll get an ad for Gator, etc.).
A loyal Trademark Blog reader writes in to comment on the Atlanta Braves tissue box cover matter reproted below. Major League Baseball had written to Ebay and asked them to remove the products which were manufactured from allegedly 'licensed' fabric but the items themselves (such as aprons and tissue box covers) were not authorized by MLB. The reader notes
The fact that eBay automatically terminates auctions based on a TM claim, but doesn't provide an opportunity for the auctioneer to file a counternotice, is an interesting difference between the way TM and (c) claims are handled.
It also raises a good practice tip when sending (or responding) to DMCA notice.
IPKAT has migrated to a home here. Current articles concern Elvisly Yours and Viral Marketing.
The TTAB will honor an extension request to oppose filed in the name of the wrong party if the mistake was to form of the name but not to actual identity of the party. Opposer's entity filed an extension request using the wrong name of potential opposer. TTAB disallowed the opposition. The Fed Circuit reversed. You can get the name wrong - you just can't the party wrong.
Customer Computer Services Inc. v. Paychex Properties, 03-1148, Opposition No. 151.439 (Fed Cir July 22 2003).
Federal Circuit case remands TTAB refusal of LE MARAIS for a restaurant. The PTO had not applied the proper test as to whether there was "some heightened association between the services and the relevant geographic denotation." Direct evidence of such an association "might show that customers would patrinize the restaurant because they believed the food was imported from, or the chef was trained in, the place identified by the restaurant's mark."
In re Les Halles de Paris J.V., 02-1539 (Fed Cir July 11 2003).
Register article on a German decision upholding use of 'headline scrapers' that allow for deep-linking. Also a mention that the NY Times is talking to Google about removing its archives from Google's caches.
Interesting article form The MicroEnterprise Journal. Tabberone buys fabric as a raw material and creates items such as aprons and tissue box covers (see picture). Some items were made from fabric displaying authorized licensed copyrighted and trademarked properties, such as sports teams logos. Tabberone sells these items on eBay. In one auction the headline refers to an "Atlanta Braves Fabric Tissue Box Cover." The page indicates that it is made out of licensed MLB fabric, and that this is a "Tabberone original," not affiliated with MLB. MLB requested that Ebay terminate the auction, which Ebay did, in connection with its Verified Owners' Rights Program. Tabberone sued MLB on tortious interference and other state business torts. MLB counterclaimed with trademark infringement and related state unfair competition torts. MLB's original communication to Tabberone listed copyright as one of MLB's claims, however it is not identified in the counterclaims. This page on the Tabberone site contains the relevant chronology and links to motion papers.
Reportedly, other trademark owners have protested Tabberone's auctions and backed down.
Those of you researching at home might want to start with McCarthy's, Section 25.40 et.seq.
Fellow embroiders images of the PT CRUISER on apparel, sells it on Ebay, Chrysler protests, felow makes David v. Goliath free speech defense, rest of story here.
Trademark lawyers will smirk at the last paragraph of the story:
Because there can be several legal issues involved, professor Abrams said someone accused of trademark infringement should contact a lawyer specializing in copyright and trademark law. He noted that most intellectual property lawyers in the Detroit area are more familiar with patent law.
The Journal News is reporting a story from Bloomberg News that Verizon is suing Nextel over Nextel's recently issued registration for PUSH TO TALK (no online versions of the story available as of Sunday morning). Verizon had sued Nextel in June alleging theft of trade secrets, which suit Nextel has moved to dismiss. Nextel's registration is on the supplemental register which makes it something of a place-holder, in that it blocks later-filed applications but doesn't have the offensive capabilties of a registration on the principal register. Here's an example of descriptive use of the term by the media.
LEVITRA is the name of a new drug used to treat sexual dysfunction. It will compete with VIAGRA (see here). It has been approved for use elsewhere and is expected to be approved for use in the U.S. soon. Its manufacturer owns a U.S. registration under Section 44 (ownership of a foreign registration) but would likely be eligible for a use-based registration, as use in pre-approval trials is deemed to be trademark use.
If you put LEVITRA into search enginges, you will see that it is already a hit with the paid-keyword crowd (one of whom referred to it as a VIAGRA drug, thus mis-using two trademarks at once). At least one of the ads I saw may well be deemed to be infringing.
Question. LEVITRA is a registered mark in use with an already substantial reputation, but it is pre-sales (although it appears that there may be importation from Europe now). If it is infringed today, how are damages calculated? Defendant may or may not have profits, plaintiff has not lost sales.
MOST INTERESTING ANSWER SO FAR: Scott of New York writes in to suggest that plaintiff could move for defendant to pay for a remedial advertising campaign to repair pre-launch damage to reputation.
Great Dane postcard available here.
Salt Lake Tribune article on link how sales of counterfeit goods funds terrorism. Something similar from IPKAT recently.
INTA will be holding its annual Trademarks in Cyberspace Forum on September 22-23 in Washington D.C. I will be participating in a panel entitled: Brands as Navigational Tools. The program is here. Verizon's attorney and RIAA's attorney have agreed to a steel cage death match. Refreshments will be served.
Interesting tidbit from ICANNWatch about a domain name/trademark dipsute between the New York Stock Exchange and Afilias, the .info registry. The author of the piece, who is involved in litigation with Afilias, posted a study here suggesting that approximately two thirds of the applications filed under Afiias' sunrise program for .INFO were fraudulent.
Again, too many good items on IPKAT to point to just one.
Complainant, which does business as Stickopotamus, alleged it owned federal registrations for STICKOPOTAMUS. A competitor in the sticker business obtained STICKOPOTAMUS.COM. Are you leaning toward any party yet? Complainant lost. It didn't document its claims that it owned trademark registrations. Decision via UDRPlaw.net.
That which goes without saying sometimes goes without proving.
A group of ICANN registrars have banded together to oppose Verisign's proposed Wait Listing Service, a provess for selling places in line to wait for domain names to expire. Thus Verisign could obtain revenue from lots and lots of people off the same name. The StopWLS group moved today for a temporary restraining order against ICANN to stop implemenation of WLS. Its press release did not indicate if Verisign was named in the suit. A Canadian company sued ICANN about this yesterday. Information on Stop WLS here. Verisign's original proposal for WLS here. A company that would be affected by WLS here.
An issue that I would rather ICANN spent its resources on here.
UPDATE: Here is an Internet.com article on the lawsuit that contains a quote from an ICANN spokesperson that appears to be mistaken about the nature of the WLS, which mistake is elaborated upon here at ICANNWatch.
The Registry Pro Sunrise period has been extended to Friday. The registry goes live July 31.
Mega Bloks has prevailed over Lego in the Federal Court of Appeal in Canada in a matter regarding the look and feel of the studs and its interlocking toy blocks. Coverage here. The decision should be available here at some point. Discussion of the lower court decision is here.
The Mega/Lego dispute has been going on for some time. A discussion of a French case between the parties is here.
This is why you can never tell a client that you will definitely win. The District Court may display a 'considerable misunderstanding' of the likelihood of confusion analysis and you lose.
Virgin Enterprises owns the famous VIRGIN mark which it uses on a wide range of goods and services, including electronic equipment megastores. It also sells wireless service in other countries. Defendants sold wireless phones and wireless service under the VIRGIN mark. At the District Court level, Virgin LOST on the grounds that its rights did not extend to telecommunications services. The fact that Virgin is already using the mark in connection with wireless services in some jurisdictions suggests that wireless is within Virgin's likely area of expansion here.
On appeal, the Second Circuit said "Of course there is a likelihood of confusion."
Note to beginning trademark lawyers: this is why it is not the end of the world when you are not perfect: Even a District Court Judge (and his clerks, who probably were on law review), can issue an opinion that the Circuit Court will state shows a considerable misunderstanding of the likelihood of confusion analysis.
Interesting aside: Defendants had retained plaintiff's long-time law firm for the opinion to clear possible marks, including VIRGIN. Defendant alleged that the law firm cleared the mark. Virgin's law firm entered an affidavit that it had refused to search the mark. Virgin's law firm wasn't disqualified for a conflict of interest. Defendant wasn't reprimanded for making a false claim. ???
Virgin Enterprises v. Nawab, et. al., 02-7491 11 (2d Cir. July 11, 2003).
The Sunrise period for the .pro domain name, the domain name for professionals, draws to a close tomorrow. One registrar, Encirca, is having an end-of-sunrise period sale, offering prices much lower than other registrars. There are two types of 'sunrise' protections, ProGuard and ProBlock (but no SunBlock), explained here.
| ProGuard | ProBlock | |
| EnCirca | $600 | $1,600 |
| Registrar X | $995 | $2,950 |
| Registrar Y | $950 | $2,850 |
| Registrar Z | $896 | $2,699 |
Filmmaker in new legal tussle with pie-maker. Story here.
This case is too procedurally complex to be summarized here. However let me quote some interesting language regarding registrar immunity under ACPA.
L'OREAL brought an action in France against the registrant of LOREALCOMPLAINTS.COM. Pursuant to that action, NSI, in accordance with its policy, deposited control of the domain name with the French Court. Registrant brought a poorly-pleaded action in the U.S. against, among others, NSI. The Court made out an allegation that NSI was not eligible for the registrar-exemption under ACPA. Registrars are immune to ACPA provided they administer domain names pursuant to a 'reasonable policy' that is consistent with the policy of the trademark laws (which I understand to refer to UDRP-like policies). ACPA provides for circumstances whereby registrars lose that immunity if they, for example, transfer a domain name during pendency of an action without court order. The registrant alleged here that NSI lost its immunity because of its transfer of the name to the French Court.
The Court here held that had there been an ACPA proceeding pending at the time of the transfer, registrant would have been correct.
"Pendency of a foreign action is irrelevant ot the question of whether a registrar is exposed to liability under the Lanham Act . . Because the provisions conditioning the limitation on liability exempts the liability imposed by the Act, cooperating conduct under foreign law is given no relevance."
In the instant case, there was no ACPA proceeding when NSI transferred the name, and therefore no liability to be exempted from. It appears that once an ACPA proceeding has been filed, a registrar would lose its immunity under ACPA if it transfers a name, even if ordered to do so by a non-U.S. court.
Hawes v. NSI, (4th Cir July 9, 2003).
Welcome to TECNOLOGIAS DE LA INFORMACION, unWeblog acerca de las tecnologias de la informacion y su relacion con el derecho en Espana, por Oriol Torruella.
Hopefully I will have no further cause to post anything about Spike v. Spike TV. It has settled. First line from the E! article on the settlement: 'In what must be relief to sharp and pointy things everywhere . . . "
Now we can go on to more important matters. Someone claims that Viacom, Pamela Anderson and Stan Lee took her idea for Stripperella, the new animated cartoon on Spike TV. Via Actual Malice.
The Federal Circuit has affirmed a TTAB refusal of the mark 1-800-JACK-OFF for 'adult entertainment services' under Section 1052?(a) as the mark comprises scandalous matter. The bit about why this mark is scandalous but JACK OFF JILL is not, is worth reading. Decision here. Wikipedia on Onanism here.
"Whos the nuttiest: Viacom, Spike Lee, or New York State Supreme Court Justice Walter Tolub? If you answered, Hard to saytheyre all completely nuts, you are correct." The rest of the New Yorker article on Spike TV here (the review of MONK is worthwhile also).
Reproducing thumbnail versions of copyrighted works constitutes fair use. There's also remand on the previous decision in linking to such images. Kelly v. Arriba Soft, No. 00-55521 (9th Cir. July 7 2003).
A Court of First Instance decision upholding an OHIM decision to reject Best Buy's Community Trademark application on the grounds that all the individual elements, the words BEST BUY and the shape and color of the mark were not distinctive. IPKAT commentary here.
Best Buy Concepts v. Office for Harmonisation of the Internal Market, T-122/01 (July 3, 2003).
Good article from The Boston Globe Magazine by Tracy Mayor on fan fiction and the difficult copyright, trademark and business issues raised when fans like a work so much, they create unauthorized derivative works. Quotes from J.K. Rowling's publishers:
"From Scholastic, her US publisher: "We are very appreciative of Ms. Rowling's fans. We are only concerned with anything that denigrates the property or is disparaging of it." From Warner Bros.: "We object only to fan fiction that is offensive to children, meaning anything sexually explicit, violent, or profane."
From Rowling's London-based agent, The Christopher Little Literary Agency, this comment: The author "welcomes the huge interest that her fans have in the series and the fact that it has led them to try their hand at writing." Therefore, the agency says, Rowling and her agents act to enforce her copyrights only when there is a commercial angle, when work purports to be written by Rowling herself, or "where the fan fiction is pornographic or inappropriate for kids." "
The illustration is by Glynis Sweeny, from the Globe article.
IPKAT reports that several brand owner associations (such as MARQUES) have issued a communique in support of the European Commission's proposal to abolish the post-filing search report delivered by the Community Trademark office, OHIM. Unlike the U.S., these searches of prior filed marks are for informational purposes only and the results do not serve as bases for rejecting applications. Given that one of my clients was recently charged about $200 by the foreign associate for merely forwarding the report (and asking if I wanted a detailed analysis), abolishing the search has its merits.
Hormel, makers of SPAM, is suing SPAM ARREST, purveyors of spam-blocking software, according to this Seattle Times article.
Here is the text of Hormel v. Henson, wherein Hormel could not stop Henson from using Spa'am as a name for a wild boar in a Muppets movie. Here are the spam haiku archives. Here is the Monty Python spam sketch.
And it is interesting to note that Spam Arrest owns a federal trademark registration for SPAM ARREST (disclaiming SPAM).
More on the WhenU and Gator pop-up matters via the NY Times (free registration required).
Consumer WebWatch, a project of Consumer Union, has released a study entitled: "False Oracles: Consumer Reaction to Learning the Truth About How Search Engines Work." It reports its major findings as:
1. Most participants had little understanding of how search engines retrieve information from the Web or how they rank or prioritize links on a results page.
2. The majority of participants never clicked beyond the first page of search results as they had blind trust in search engines to present only the best or most accurate unbiased results on the first page. As a result, two-in-five links (or 41%) selected by our participants during the assigned search sessions were paid results.
3. Once enlightened about pay-for-placement, each participant expressed surprise about this search engine marketing practice. Some had negative, emotional reactions.
4. All participants said paid search links on search and navigation sites were often too difficult to recognize or find on many sites, and the disclosure information available was clearly written for the advertiser, not the consumer. Search engine sites that were perceived to be less transparent about these related disclosures lost credibility amongst this group of online consumers.
What is described as industry reaction is here.
UPDATE: The study is an 'ethnographic' study in which four cultural anthropologists spent an average of 6 hours each with 17 pre-screened 'experienced web researchers.' The study itself discusses the choice of method, and points out that this approach allows for in-depth understanding of how a small group of subjects behave. Of course 17 is way too small a number for this to be considered a representative sampling. This study does, however, come on the heels of a previous Consumer Union study of 1500 respondents, 60% of whom did not know that search engines accepted fees for placement.
Todays Times reports that U-Haul has lost a trademark and copyright case in the Eastern District of Virginia against WhenU.com, a purveyor of pop-up advertising. According to the article, no decision has been released as of yet.
Meanwhile, via InternetNews.com, a report that Overstock.com has sued Gator, the leading pop-up company.
