29
Aug/03

Statute of Limitations in Trademark Cases – FORDWORLD.COM


6th Circuit decision upholding an award of punitive damages under ACPA against an individual who registered the name FORDWORLD.COM and attempted to sell it to Ford Motors. The case provides stautory construction as to how to apply ACPA to domain names registered prior to the enacment date of ACPA (November 1, 1999).  Also, while courts may sometimes apply analogous state statute of limitation to federal actions, there is no statute of limitations applied to Lanham Act actions.

Aside: FORD is up there with DELTA and UNITED in the list of well-known marks that are not exclusive.  This fact is usually deployed in the domain name debate in the context: “how do we know that the registrant of FORDxxxxx.COM targeted Ford Motors and not Ford Models, for example.  Well, in this case, the registrant sent an email to the CEO of Ford offering to sell the name.

Ford Motor Company  v. Peter Catalanotte,  No. 00-75260, (6th Cir. August 28, 2003).

          



29
Aug/03

Verisign and Wait List Service


A not-flattering article on Verisign’s Wait List Service via The Register.  As mentioned here earlier in a piece about the skeletons of domain names, the Register article points out that a lot of the demand for expired domain names stems from a desire to utilize the pre-existing network of links and bookmarks to the domain name, a network that becomes obsolete (and mis-leading) when ownership of the domain name changes hands.



29
Aug/03

Knock-offs Are Rip-offs


Here are two very different treatments of the knock-off problem.

This is an article from the Washington Post reporting on the “Get Real” campaign by the interior design industry making the business case against customers purchasing knock-offs: inferior manufacture means less value to the customer.  That’s the real Herman Miller Noguchi table pictured right.

In contrast, here is what in my view is the irresponsible piece from the Rocky Mountain News I mentioned yesterday making the case for buying infringing merchandise and actually providing URLs for websites that sell what at first glance looks like infringing merchandise.

I will be surprised if the Rocky Mountain piece stays online past the weekend.  They are likely to hear from LVMH, Burberry or Dooney and Bourke by then.

The fact that style columnists for a major city daily could run a piece like this illustrates two points:

The moral argument against purchasing knock-offs does not resonate with a significant part of the population (but looking at the music download situation, this is not shocking); and, I think, more importantly:

 The business argument against purchasing knock-offs does not resonate with a significant part of the population.

 The ‘Get Real’ campaign looks like a step in the right direction.  Brand owners need to communicate that manufacturers who aren’t concerned with respecting the rights of others, probably don’t value customer satisfaction too highly either.

 Most knock-offs are rip-offs.



29
Aug/03

Can You Trust the People in the Authentication Business?


A not flattering account of financial moves by domain name registrar Register.com (registry operator of the security-oriented .pro top level domain) in the NY Times (registration need).



28
Aug/03

Copyright Registration Services and the Practice of Law


I learned of a ‘copyright registration’ sevice via a copyright blog, which appeared to recommend the service but overlooked a few details.  ICANN Blog touches on some points.  I would like to add some more.  The service advertises that it reviews the document for ‘errors and omissions.’  Would such an error include whether you are claiming copyright in the correct work and in the correct author’s name?

In fine print on another site the service claims that it isn’t practicing law (I guess because the guy behind the service isn’t a lawyer).  I think if you take money for reviewing legal documents for ‘errors and omissions,’ then you are providing legal advice, whatever you want to call it.  You can call your aunt, your uncle, but she’s still your aunt.

Here’s the link to the Copyright Office’s online registration service.



28
Aug/03

Will the Rocky Mountain News Start Accepting Ads From Knock-Off Artists?


This column from the Rocky Mountain News recommending the purchase of knock-off products (and encouraging confusion with sentences such as [website] carries BURBERRY when the authors appear to know that the site carries BURBERRY knock-offs) seems somewhat irresponsible

Counterfeit trademarked products are illegal and for good reason. The makers of counterfeit products steal from trademark owners, steal from the government and steal from consumers. Manufacturers of integrity who pay their taxes and honor customer complaints, do not go into business under someone else’s name.  Manufacturers of integrity do not copy others designs, and then advertise themselves as being ‘inspired’ by that designer.

The legal issues raised in promoting infringing products, and the paper’s relationship with its advertisers, I leave to the paper.

 



28
Aug/03

House Hearing on Whois and ICANN


The House Judiciary Subcommitee on Courts, the Internet and Intellectual Property, will hold hearings on ICANN and Whois next week.  Rep. Lamar Smith (Texas), the committee’s Chair and Rep. Howard L. Berman (California), the ranking Democrat wrote to Commerce Secretary Donald Evans raising questions about Whois issues.

I find the last two paragraphs of page two of the letter of particular interest, as they state that ICANN is aware of registrars’ systematic non-compliance with their accreditation agreements, and mention ICANN’s apparently conscious decision to not enforce those agreements.  See “Pornography for Children, Zuccarini, Joker and ICANN’  for background on ICANN’s failure to make Joker.com honor its accreditation agreement with regard to the UDRP or accurate whois data. 

More comments on the House hearing here via ICANNWatch.



28
Aug/03

Apple iTunes Parody


A parody of Apple’s iTune site via Ad-Rag.

More agita for Apple here.



28
Aug/03

That's Some Catch, That Catch-22


I’m getting calls and letters asking me to blog the Abercrombie ’22’ matter, in which Abercrombie is suing a competitor, American Eagle Outfitters, for its alleged infringement of Abercrombie’s claimed common law trademark in the number 22 (arising from use in its HOLLISTER line).  Why this suit is getting press may be due to a popular perception that trademark owners unreasonably take things out of the public domain.  If Abercrombie establshes a monopoly in 22, the rest of us will have to go straight from 21 to 23.

As a trademark case, the issue is not novel.  As Prof. McCarthy notes in section 7.15 of his treatise:

As early as 1882, the courts recognized that numbers, like any other visual symbol, could function as a mark:

[I]f for a long period of time he had used the same figures in combination, as “3214,” to distinguish his own goods from those of others, so that the public had come to know them by these numerals, he would be protected (citation omitted).

Numbers, like any symbol, are capable of being descriptive of the goods on which they are used, and thus require proof of secondary meaning for protection or registration. For example, the mark “76” used by Union Oil Co. was held to be descriptive of gasoline in that 76 is within the range of numbers used to indicate octane and Baume ratings of gasoline.  Similarly the mark “pH 3.5″ was held descriptive of the degree of acidity of a drug. (citations omitted).

My unscientific speculation is that Chanel’s trademark, No. 5, is the most famous number trademark.  Pizzeria Uno’s trademark lawyer has contacted me to suggest that UNO is the most famous number trademark.  Levi’s owns 501 and 505 (it shares 505 with a cleaning solution).  And let’s not forget 007.

Abercrombie will or will not be able to establish that it has acquired secondary meaning in 22 as its trademark. Assuming it can, Eagle is or is not infringing that trademark.  A possibly relevant fact is that Abercrombie reportedly has sued Eagle three times recently (and lost each time). 

A case of a manufacturer, Fubu, that was able to prove that it had secondary meaning in a number trademark, 05, was reported here, here.



26
Aug/03

Time to Look at IcannWatch


Check out IcannWatch today.  Good pieces on upcoming Congressional hearings, the domain name indsutry’s tendency to pre-sell things that don’t exist (to people who don’t want them), a voting system for domain names, .name’s second bite at the apple, and the UDRP.