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September 30, 2003
Who Wrote The Book of Links?
Interesting piece from Dave Winer entitled "The Rule of Links." I think that he uses 'must' when I would use 'should,' but I agree with one of his central tenets, which is that if you are discussing a source that is available on the Web, it is disrespectful to your reader not to link to it (and what about those who sell access to sources that are freely available on the web? I know of one law site that does).
To tie this (link this?) to trademark law, I note that I have written a short piece on the trademark theory of Initial Interest Confusion, in which I suggest that we are seeing an emerging tort of 'deceptive diversion of traffic' (embracing cyber-squatting but other activities as well). In order to establish diversion, one would likely need to establish that users were not meandering but had a specific destination from which they were diverted. A potential plaintiff may need to inferentially prove destination by showing what were the reasonable user expectations arising from a specific navigational device, such as a URL, search engine result, banner ad, or link. For example, in the Panavision case, the Court accepted the 'dot com assumption,' namely that someone typing in [example].com, 'expected' to land on the page of the owner of the [example] trademark.
So that's where the thought of a comprehensive rules of links come in. I hope someone complies them.
First 'Dropped' Domain Name Case After Sex.com
Verisign has been sued by a domain name registrant for $3 million in damages allegedly resulting from Verisign's 'dropping' of the domain name. This is the first suit against Verisign since the Ninth Circuit held in the sex.com case that the negligent handling of a domain name registration was a colorable claim.
Second Circuit: Spider-Man Billboard Case Dismissed Without Prejudice
The owners of several buildings in Times Square had sued Sony Picutres because the movie SPIDER-MAN had contained digital renderings of those buildings altered to show different ads on the billboards than those found in real-life (presumably depriving the building owner and those advertisers of additional revenue). The district court dismissed the trademark claim on the ground that no purchaisng decision was affected by the change; the trade dress claim was dismissed because the advertisements were changed so often that there could be no protectable trade dress; and the trespass claim was dismissed because taking the digital photograph of the buildings was not deemed to be the sort of actionable contact with physical property recognized as trespass.
On appeal, the Second Circuit has affirmed the dismissal of the federal claims. However, it has reversed the dismissai WITH prejudice, instead remanding the case to the District Court to enter a dismissal WITHOUT prejudice, because the District Court should not have exercised supplemental jurisdiction over the state trespass claim. A NY State Court has not yet ruled on the question as to whether physical damage is an element of trespass - the same issue raised by the Intel v. Hamidi case - and thus dismissal with prejudice was not proper. Plaintiff can now re-file in state court should it choose to do so.
Sherwood 48 v. Sony, 02-9100 (Sept 29, 2003) (click on decisions in frame).
TTAB Documents Available Online
John Welch tipped me off to the PTO's unveiling of TTABVue, a system for viewing scanned-in TTAB documents filed since January of this year.
Se Habla Espanol
According to this WIPO press release, starting on April 1, 2004, applicants will be able to file for international trademark regsitrations in Spanish.
Nothing To Do With Radio-controlled Cars
According to the NY Times account of jury selection in the Dennis Kozlowski trial, the judge said "This is not about the toy company of a similar name."
Home of Tyco RC here.
September 29, 2003
Mr. Krabs' Trade Secret Rights in the Krabby Patty: Discuss
Mr. Krabs zealously guards the secret of his secret sauce in his krabby pattys, which he sells in his restaurant, The Krusty Krab. Plankton seeks to steal the recipe for his rival restaurant, The Chum Bucket. Mr. Krabs observes an important tenet of trade secrets, in that he maintains the confidentiality of the secret sauce recipe, and has forbade his employees, including SpongeBob, from telling Plankton the secret. If Plankton were to lawfully purchase a krabby patty, he could lawfully reverse engineer the recipe. However, Mr. Krabby has barred Plankton from buying one.
Can Mr. Krabs lawfully refuse to sell Plankton a krabby patty?
If Plankton takes control of SponeBob's brain (see episode 3), thus controlling his actions, and secures a krabby patty in that manner, can he lawfully reverse engineer the secret sauce?
September 26, 2003
Final U.S. Rules for Madrid Protcol
Rules of Practice for Trademark-Related Filings Under the Madrid Protocol Implementation Act; Final Rule, via patents.com.
Map of Madrid courtesy Lonely Planet, all rights reserved.
September 25, 2003
Searching via Amazon
Coverage on Amazon's proposed search engine from AtNewYork.com, SmartMoney.com, and InfoWorld
Nike vs. FIFA re USA 2003
Two of my favorite subjects, trademark litigation and soccer, in one story. Nike has sought a declaration of non-infringment of the mark USA 2003, apparently in response to demands from soccer's governing body, FIFA, that it owned exclusive rights in the term in relation to soccer. FIFA has previosuly established rights in terms such as France 98 and Germany 2006.
FIFA's site here.
Various soccer commercials here.
Legal Analysis of SiteFinder
Legal analysis of ICANN/Verisign contracts via ICANNWatch suggesting that ICANN has limited ability to stop SiteFinder, should it want to do so.
September 24, 2003
IPKAT on Trademark Mediation
September 21, 2003
Owners of Dewey Decimal System Sues Library Hotel Over Trademark
AP reports that the owner of the Dewey Decimal Classification System has sued the Library Hotel (a hotel overlooking New York's Public Library) over its use of the Dewey Decimal System to number its hotel rooms (for example Room 700.003 has books on the performing arts), arguing that the use of the system falsely suggests that the hotel is connected with the owners of the system.
This is a real story, not one that I got from The Onion or The Borowitz Report.
The System was invented by Dewey in 1873 but before you say Dastar, we are told that the system is constantly updated. To the best of my knowledge there is no owner of the Liannean Classification system, and therefore someone could open the Zoo Hotel and name the rooms after animals.
Recommendation for Spam Filter Software
I downloaded SpamNet today, from www.cloudmark.com, and so far it's batting 1.000 in stopping spam.
September 20, 2003
IAB Calls On Verisign To Suspend SiteFinder
The Internet Architecture Board's Commentary on "Architectural Concerns on the Use of DNS Wildcards" raises several points regarding implications of Verisign's deployment of the SiteFinder services.
1. SiteFinder affects many applications other than the Web, including Email.
2. SiteFinder disables various spam filters.
3.. SiteFinder disables foreign language error screens, replacing them with the English langauge SiteFinder site.
Its conclusion:
In conclusion, we would like to propose a guideline for when wildcard records should be considered too risky to deploy, and make a few recommendations on how to proceed from here.
Proposed guideline: If you want to use wildcards in your zone and understand the risks, go ahead, but only do so with the informed consent of the entities that are delegated within your zone.
Generally, we do not recommend the use of wildcards for record types that affect more than one application protocol. At the present time, the only record types that do not affect more than one application protocol are MX records.
For zones which do delegations, we do not recommend even wildcard MX records. If they are used, the owners of zones delegated from that zone must be made aware of that policy and must be given assistance to ensure appropriate behavior for MX names within the delegated zone. In other words, the parent zone operator must not reroute mail destined for the child zone without the child zone's permission.
We hesitate to recommend a flat prohibition against wildcards in "registry"-class zones, but strongly suggest that the burden of proof in such cases should be on the registry to demonstrate that their intended use of wildcards will not pose a threat to stable operation of the DNS or predictable behavior for applications and users.
We recommend that any and all TLDs which use wildcards in a manner inconsistent with this guideline remove such wildcards at the earliest opportunity.
ICANN Asks Verisign To Suspend SiteFinder Pending Review
From the ICANN website:
Advisory Concerning VeriSign's Deployment of DNS Wildcard Service
On 15 September 2003, VeriSign deployed a "wildcard" service into the .com and .net Top Level Domain zones. VeriSign's wildcard creates a registry-synthesized address record in response to lookups of domains that are not otherwise present in the zone (including restricted names, unregistered names, and registered but inactive names). The VeriSign wildcard redirects traffic that would otherwise have resulted in a "no domain" response to a VeriSign-operated website with search results and links to paid advertisements.
Since the deployment, ICANN has been monitoring community reaction, including analysis of the technical effects of the wildcard, and is carefully reviewing the terms of the .com and .net Registry Agreements.
In response to widespread expressions of concern from the Internet community about the effects of the introduction of the wildcard, ICANN has requested advice from its Security and Stability Advisory Committee, and from the Internet Architecture Board, on the impact of the changes implemented by VeriSign. ICANN's Security and Stability Advisory Committee is expected to release an objective expert report concerning the wildcard later today.
Recognizing the concerns about the wildcard service, ICANN has called upon VeriSign to voluntarily suspend the service until the various reviews now underway are completed."
September 19, 2003
LV Bondage Masks?
Apparently there was a lawsuit, quickly settled, involving the use of the LOUIS VUITTON mark on bondage masks and genital cuffs. Coverage here and here (NY Times reg. req.).
Now when someone Google's 'genital cuffs,' this site will rank highly. Great.
A review of Spinal Tap's Smell The Glove album here.
BTW, someone's actually selling bags named JELLY KELLYS at www.jellykelly.net.
It's Friday, Quitting Time
Via Andrew Sullivan, this has nothing whatsoever with trademark law or anything else for that matter.
But Can SiteFinder Find the Jelly Kelly?
The Verisign SiteFinder "typosquat" rhubarb continues.
Update: I had to change the name of this piece as Bret Fausett, who joins me in slack-jawed amazement at this whole thing, beat me to the joke with his take here.
Kim Davies, of CENTR (the Council of European National Top Level Domain Registries), has posted a power point presentation on how SiteFinder works, and her reaction to it.
Verisgin FAQs and other info here.
John Berryhill makes the point on the INTA list that SiteFinder re-activates every domain name ever cancelled by UDRP or other decision.
Karl Auerbach pointed out on the GNSO list that unregistered names may have previously resolved to SiteFinder now, and are now 'used goods.'
The Registrars Constituency of ICANN is considering moving to ask ICANN to ask Verisign to suspend the service.
The domain name VERISGIN.COM is for sale.
A search engine provider, Netster, has sued Verisign over the service.
The point has been made that the .MUSEUM TLD apparently utlizes the 'wildcard' technique utilized by SiteFinder and that ICANN had approved the technique.
My IT guy says "It's as if Avis modified its GPS so everytime you entered a wrong address, it gave you directions to a Sears store."
No comment from ICANN as of yet. SiteFinder returns this for www.whereisicann.com. UPDATE: This name stopped resolving to SiteFinder (hmmm) so instead I offer:
September 18, 2003
In A World Where Websites Copy Film Trailers
Third Circuit rules that Defendant's use of Disney's clip previews on its website were not fair use. Interesting 'copyright misuse' discussion of the following clause in Disney's license agreement for its trailers:
The Website in which the Trailers are used may not be derogatory to or critical of the entertainment industry or of [Disney] or of any motion picture produced or distributed by [Disney] . . .
Video Pipeline v. Buena Vista Home Entertainment et. al. No -02-2497 (3rd Cir Aug 26, 2003).
SAMSUNG Prevails in India
SAMSUNG prevails against Man Singh before High Court in Delhi, regarding defendant's sale of SAMSUNG mixers and grinders. Via Sify.com.
Re-Direction
Yet more on Verisign via the NY Times, Slashdot, The Register and Cox Crow.
September 17, 2003
Luxury Brands in India
Article from Manorama Online on growing popularity of luxury brands in India.
Verisign vs. the Patch
This Silicon Valley News article reports that the Internet Software Consortium, developers of BIND domain name software, is releasing a patch intended to block Verisign's SITE FINDER service (or, as ICANN Watch puts it, Verisign's typosquatting).
Professor Lessig may be distracted right now enjoying his new status as father, but at some point I would be interested in his take, in the context of his "Code as Regulator" framework, on this brou-ha-ha consisting of two companies taking unilateral actions affecting how the DNS operates (well, more than two, if you count MSN and AOL). Should/Does ICANN (or any other regulator or standards setting body) have a say in this?
p.s. Demonizing Verisign aside, is Site Finder a smarter form of navigation? Is user experience enhanced?
Meme Watch: WESLEY CLARK
Google WESLEY CLARK and see who has apparently purchased his name as Google keywords.
Use Domain Surfer to see who has registered WESLEY CLARK domain names in the com-net-org space.
See the unofficial Wesley Clark weblog.
See where the mis-typed WESLYCLARK.COM name points to.
Cigar Trade Secret Complaint Against Sean Combs
Theft of trade secrets complaint against Sean 'Puffy' Combs via FindLaw.
September 15, 2003
Once I Could Not Spell Syllabus, Now I'm On One
The Trademark Blog has made it to a law school syllabus.
I Saw You Standing Alone
Federal Circuit reverses TTAB's refusal of BLUE MOON and Design for beer based on prior registration of BLUE MOON and design for restaurant services, on the ground that beer and restaurant services are not all that related.
One Pill. Twenty-Four Hours. Zero Heartburn. One False Advertising Claim.
J&J-Merck has sued P&G, makers of PRILOSEC OTC, alleging that the claim "One Pill. Twenty-four hours. Zero Heartburn." and "Just one and heartburn's done" are false, as they imply that one pill will eliminate heartburn in 24 hours. In fact, according to the suit, the pill is to be taken once a day for 14 days, and may take 1 to 4 days for full effect. Via MSNBC.COM.
Making Money Off Fat Fingers
NY Times (free registration required) on Verisign's plan service regarding mis-typed URLs.
Slip Slidin' Away
In the recent comedy DICKIE ROBERTS, David Spade is seen sliding (and crashing) on a SLIP N' SLIDE, a yellow plastic sheet intended to be used when inflated and wet. AP reports that Wham-O, manufacturers of the SLIP N' SLIDE product, has sued, arguing that the depiction of the product was unauthorized, and encourages the unsafe use of the product (which is intended for children under 5 feet tall).
The suit seemed less frivolous to me after hearing that several years ago, an adult was injured using the SLIP N'SLIDE when drunk, yet sued and collected $12 million from Wham-O.
Commentary from Slate here.
SLIP N' SLIDE available here.
Talking Dog Act
$41.9 million in damages against Yum Brands, owner of Taco Bell, for misappropriating idea of talking Chihuahua, via NY Lawyer.
Talking Dog audio clips here.
UPDATE: A take on the story from the new BUSINESS LESSONS blog.
While My Trademark Lawyer Gently Weeps
In 1989 Apple Computer paid Apple Corps. (the Beatles' label) $27 million to settle a trademark lawsuit. I believe that Apple also paid several million in legal fees at the time (Apple's unsuccessful attempt at getting insurance to pay its fees reported here). Without seeing the 1989 settlement agreement, I can't comment on the somewhat surprising news that Apple Computer launched its new iTunes service without assurance that Apple Corps. wouldn't sue again. It has. Update - the WSJ reports that the suit was filed in the UK on Juy 4.
This makes Apple Computer look like a repeat offender.
A lot of coverage here.
September 14, 2003
'A Nation of Copiers'
NY Times article (free registration required) on societal attitudes towards file sharing, plagiarism and buying 'knock-off' goods.
September 12, 2003
Al Fross
Al Fross, the Fross of Fross Zelnick, died a year ago yesterday.
"Can You Type?" "Yes, But Not Accurately."
September 10, 2003
'Exactly How To Get Your Name Copyrighted'
The legal advice in this eBook, 'Name Copyrights', namely that you can avoid getting tickets for moving violations by having your 'name copyrighted' is likely incorrect. To the best of my knowledge, no provisions of either the Lanham Act or the Copyright Act will provide protection against moving violations or parking tickets for that matter. Both McCarthy's on Trademarks and Nimmer on Copyright virtually ignore the entire subject of operating a car.
For another story on the relationship between intellectual property and driving, see here (please do not email to tell me that this is a joke).
September 09, 2003
Report: 67% of Internet Users Who Download Music Disregard Copyright
The Pew Research Center has released a report in its "Pew Internet and American Life" series. The report is available here. The introduction states (emphasis mine):
"The struggle to enforce copyright laws in the digital age continues to be an uphill battle for content owners. Data gathered from Pew Internet & American Life Project surveys fielded during March - May of 2003 show that a striking 67% of Internet users who download music say they do not care about whether the music they have downloaded is copyrighted. A little over a quarter of these music downloaders - 27% - say they do care, and 6% said they dont have a position or know enough about the issue.
The number of downloaders who say they dont care about copyright has increased since July-August 2000, when 61% of a smaller number of downloaders said they didnt care about the copyright status of their music files.
Of those Internet users who share files online (such as music or video) with others, 65% say they do not care whether the files they share are copyrighted or not. Thirty percent say they do care about the copyright status of the files they share, and 5% said they dont know or dont have a position. "
September 08, 2003
WhenU / U-Haul Decision Released
Via Internetnews.com, Judge Garlad Bruce Lee of the Eastern District of Virignia has released a decision holding that WhenU's pop-up ads do not infringe the trademarks or copyrights of U-Haul. I have not gotten my hands on a copy of the decision yet.
Google Toolbar 2.0 that block some but all pop-ups (apparently neither WhenU's nor Gator's) available for free download here.
But Will the Record-Buying Public Grant the RIAA Amnesty?
Google news on the RIAA announcement on amnesty.
DMCA and WFUV
WFUV is my favorite radio station. Vin Scelsa's Idiot's Delight" is one of my favorite radio shows. You can listen to WFUV's live streaming audio by clicking on "Listen Live" at www.wfuv.org here. If you are interested in why the station can't reproduce its exact radio programming on the Internet, click on the "Why no Idiot's Delight . . . " on the Listen Live page for WFUV's discussion of how the DMCA affects a radio broadcaster.
September 05, 2003
Congress on Whois
CNET News.com and ICANN Blog on yesterday's Congressional hearings on Whois accuracy.
September 04, 2003
The Face of Typo-Squatting?
More on the arrest of Zuccarini here. I assume that this is a courtroom artist sketch, appearing in the NY Post account of the arrest, the first arrest under the Truth in Domain Name Act.
By the way, Zuccarini's domain names, such as botthebiulder.com, are still active at the time of this posting. By his own admission (according to published reports) Zuccarini deliberately chose names that would appeal to children because 'children mispell things." The names lead to porn sites.
Alternate title for this piece: End of Cupcake Party? (explanation: Zuccarini used many aliases, many of which included the word 'Cupcake.' One alias was Cupcake Party).
Test Case For Re-sale of Legally Downloaded Music
CNET News.com article on test case where individual is auctioning his 99 cent purchase of an iTunes song (Double Dutch Bus, by the way) on EBAY. EBAY has indicated it will stop the auction.
September 03, 2003
How IKEA Comes Up With Those Names
OK, it's barbarism on our part, but my wife and I make fun of the names of IKEA furniture. And now revealed in this Transblawg article is IKEA's method for choosing those names.
IKEA Jerker computer table, shown right, available here.
IKEA Jerker fansite here.
Gator v. L.L. Bean
The Ninth Circuit found that California courts could exercise general jurisdiction over L.L. Bean, based on its continuous and systematic contacts with the state, specifically those contacts arising from its operation of a 'virtual store' over the Internet, national advertising and mailings into California. While it had never registered to do business in California, L.L. Bean derives 6% of its sales from California and sources products from there. Bancroft & MAsters v. Augusta National, 223 F.3d 1082 (9th Cir. 2000) is one of the few other 9th Circuit cases evaluating whether contacts over the Internet can give rise to general jurisdiction (in that case, they didn't).
L.L.Bean has sent a demand letter to pop-up ad promulgator Gator. Gator filed a declaratory judgement in California. I recently downloaded Google Taskbar 2.0 and it has blocked 200 pop-up ads in the week I have had it. That's 200 fewer interruptions in a week.
Too Subtle For Parody
Tanzania Tanning Salons of Florida has successfully enjoined the use of TANZANIA by the country of Tanzania. It will now seek damages. More info here.
Thanks to Sean for pointing this out.
Tooth Free To Use By All
District Court of Massachusetts: Plaintiff Straumann fails to show secondary meaning to establish trade dress protection for dental implants. Requisite John Welch pun: Trade Dress Claim Bites the Dust.
Straumann v. LifeCore Medical, 00-10602-RCL (D. Mass. Aug. 29, 2003).
Demand Letter to Google from Kazaa
DMCA notice letter from Kazaa to Google aslking it to 'disable access' to sites that allegedly infringe Kazaa's copyrights. These sites apparently show up in Google searches for the keyword KAZAA.
September 02, 2003
Shameful Self-Promotion
My server log indicates that traffic in the month of August was five times that of June '02, the first full month of The Trademark Blog.
Here is this week's copy of the Internet Legal Research Weekly mentioning the Blog.
Here's The Internet Roundtable on Law Firm Marketing saying nice things about the Blog (and interesting things about Law Firm marketing).
Here is an article from the Westchester County Business Journal on me and my blog, illustrated with the photo above taken in the Trademark Lodge. The photographer is Elizabeth Holtyak.