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October 31, 2003
Mattels Wins MY SCENE v. MY STYLE Design Litigation in the U.K.
Mattel has announced that it has received a decision from the High Court of Justice in London holding that Simba Toys MY STYLE dolls infringes the Community Design rights in of Mattel's MY SCENE dolls. Simba must recall the infringing dolls and pay Mattel interim damages of approximately $1 million. Via Yahoo.
A Netherlands website depicting both MY STYLE and MY SCENE packaging here. Scroll to the bottom of that site to see Simba's MY STYLE dolls.
Wages of Counterfeiting
A California man has been convicted of selling countefeit Compaq computer memory modules. He is facing a fine of up to $4 million and up to 20 years in prison. Via The LA Times..
The Race To Make Domain Names Irrelevant
Wrapping up its meeting in Carthage, ICANN has released this "Broad Strategic Initiative for Top Level Domains." The press release promises reviews, reports. assessments, and new specialized TLDs in 2004.
Meanwhile, an Economist article on Google and paid search, claims that "All told, 75% of referrals to websites now originate from Google's algorithms."
October 30, 2003
Fount of Trademark Fonts
IPKat on trademark fonts here.
Guide to Madrid Protocol Implementation
The U.S. Trademark Office has posted Exam Guide No. 2-03, Guide to Implementation of Madrid Protocol in the U.S. (Oct. 28 2002).
Live From Carthage
Following in the footsteps of Tertullian and Donat, heretical ICANN Board member Amadeu Abril i Abril writes to us from Carthage, in The Punic Words, his blog on the ICANN conference.
More on the ICANN meetings here, here and here.
Discussion of Punic Wars here.
October 29, 2003
Would You Want The World To Know What You Purchased From Victoria's Secret?
Today's Guest Blogger is Lisa Dubrow, of Dubrow & Charne, an advertising law firm in New York (212-865-0200), who has these thoughts on online privacy of consumer data and the recent settlement between the New York AG and Victoria's Secret:
Would you want the world to know what you purchased from Victoria's Secret? Well if you dont, you agree with New York State Attorney General Eliot Spitzer. He recently announced that his office had reached an agreement with Victoria's Secret Direct, LLC following an investigation into allegations made last fall that the companys Web site inadvertently left information about what its customers purchased online accessible to other online customers. The security flaw was discovered a year ago by a customer who reported the problem to the company. The company allegedly chose to ignore the tip thinking that since the security risk did not concern customers credit card numbers the flaw was not really an issue.
If you make promises online, make sure you can keep to them. The care of customer data should not merely be limited to credit card information. If any customer data is exposed this case reveals that a company is at risk for a fine, and more importantly, unfavorable publicity, even if that flaw if corrected quickly. There is another lesson here: listen to customers complaints and take them seriously.
Ed's note: Vintage undies picture from here.
October 26, 2003
Trademarks I Have Seen In The Movies
In the movie Punch Drunk Love, the protagonist, Adam Sandler, notices the following:
"Healthy Choice and American Airlines got together and put this promotion: If you buy any 10 Healthy Choice products, they will reward you with 500 frequent flier miles; with this special coupon, they'll up it to 1,000 miles. So, I think they are trying to push their teriyaki chicken which is $1.79, but I went to the supermarket and I looked around and I saw that they had pudding...for 25¢ a cup.. comes in packages of four. But insanely....the barcodes.. are on the individual cups! So, quarter a cup, say you bought $2.50 worth. That's worth 500..with the coupon it's 1,000 miles. It's a marketing mistake but I'm taking advantage of it. If you were to spend $3,000, that would get you a million frequent flier miles. You would never have to pay for a ticket the rest of your life"
The protagonist does in fact accumulate chocolate pudding, and the resulting frequent flyer miles turns out to be a critical plot point. According to this and this, this incident happened in real life. Healthy Choice, by the way, is thanked in the credits.
Vuitton Sues Google In France Over Keyword Sales
In the wake of a decision against Google in the court of first instnace in France, LVMH, owners of the LOUIS VUITTON trademark have sued Google alleging that Google's sale of keywords infringes LVMH's trademark. Via CNN.COM, Mercury News, and Editor and Publisher. One source quoted suggests that the decision will open up the floodgates against Google in France.
October 25, 2003
Forbes on the Highest Earning Dead People
Forbes' list of the highest grossing dead celebrities. Interesting commentary here. The list does not appear to distinguish between earnings from copyright (which probably accounts for most of these earnings) and those from 'personality rights,' which is probably how Marilyn Monroe makes it on the list.
| The Top Ten |
| 1. Elvis |
| 2. Charles Schulz |
| 3. J.R.R. Tolkien |
| 4. John Lennon |
| 5. George Harrison |
| 6. Dr. Seuss |
| 7. Dale Earnhardt |
| 8. Tupac Shakur |
| 9. Bob Marley |
| 10. Marilyn Monroe |
October 23, 2003
Stop Driving That Buick LaCrosse Or You'll Go Blind
Via CNN.COM, GM has announced that it is changing the name of the BUICK LaCROSSE in Canada as it turns out that LaCrosse is shorthand for masturbation among teenagers in Canada.
Website of the Canadian Lacrosse Association here.
Article that frequent LaCrosse reduces the risk of prostate cancer here.
Debunking of the NOVA-South America-poorly-chosen-trademark saga here and here.
Descriptive, By Gum
IPKat on the ECJ DOUBLEMINT decision in which it the proper test of descriptiveness is discussed.
October 22, 2003
Post-Purchase Confusion
The Independent of the UK on the ability of advertisers to 'morph memories' of consumers - planting messages after the fact and perhaps creating false memories. Disney's "Remember the Magic' campaign is given as an example. Via Kottke.org.
Hasbro Sues Maker of GHETTOPOLY
John Welch alerts us that Hasbro, makers of the MONOPOLY game, has sued David Chang, maker of the GHETTOPOLY game. Coverage of the lawsuit here and here. Coverage of the reaction to the game here.
One telling of the ANTI-MONOPOLY trademark saga here.
Gilberto Gil To Use Creative Commons License
The Wall Street Journal reports (no free online link available) that Gilberto Gil, Brazilian musician (and Cultural Minister as well) will be releasing a CD under the Creative Commons license. More from Prof. Lessig here.
October 21, 2003
Text of Decision in Caterpillar v. Disney . . .
. . . in which Caterpillar's TRO against Disney is denied, available here.
Are Internet Users Like Wild Foxes?
Prof. Susan Crawford asked her property class, are 'streams of mistyped domain names' like wild foxes? To which I add, are streams of correctly typed domain names like wild foxes? How about search engine traffic? Wild fox reference from first week of law school explained here.
Movies 2 Depicted Products 0
Caterpillar has lost its TRO motion to restrain Disney's release of the movie "George of the Jungle 2," which movie allegedly infringed and/or tarnished Caterpillar's trademarks in its depiction of bulldozers in the movie. Background here.
In a somewhat similar fact pattern, Wham-O had failed in enjoining the use of its SLIP N' SLIDE product in the movie 'Dickie Roberts' (background here). The Northern District of California noted in relevant part:
Defendants' use of plaintiff's marks satisfies all three aspects of this nominative use test. First, defendants use plaintiff's mark to identify a product not otherwise readily identifiable. Other verbal formulas (e.g., "water slide" or "lubricated plastic sheet") do not capture or identify the toy with adequate specificity, and trademark law does not compel individuals to "use absurd turns of phrase" simply to avoid trademark liability. See Welles, 279 F.3d at 804-05. In the film, defendants intend to identify the slide as a specific product; to do so requires the use of the product's name. fn.8
Second, defendants use "only so much of the ... marks ... as is reasonably necessary to identify the product or service." Id. (citation omitted). fn.9 To identify the slide as a toy, it was at once sensible and necessary to refer to the slide by its popular name. A single character does so two times in the film. No depiction of plaintiff's logos or marks appears otherwise, and defendants do not reference plaintiff's marks unnecessarily or abusively. Defendants' use does not exceed that which was "reasonably necessary." Id.
And, third, defendants' use does "nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder." Id.; see Brother Records, Inc. v. Jardine, 318 F.3d 900, 908 (9th Cir.2003). The actual word mark (viz., "Slip 'N Slide") is used but twice, and it is not used or displayed more prominently than any other term. Id. Like any other portion of the film's dialogue or set, plaintiff's mark forms part of the film's jumble of imagery; it is not highlighted so as to exploit the value of plaintiff's mark.
As any moviegoer can attest, it is not unusual for movie producers to use a signature scene--and the products and props therein--to cultivate interest in a film. Films with car chases do so with cars; films with gunplay do so with firearms; films with haute couture wardrobes do so with clothing. Nothing in the record suggests defendants' used plaintiff's marks to imply that plaintiff placed its imprimatur on the film; nowhere in defendants' publicity efforts is plaintiff's mark unreasonably displayed or abused. Cf. id. (finding improper a defendant's use of another's mark as if it was defendant's own). Defendants, instead, use the marks and product in a specific and unique descriptive sense: to evoke associations with an iconic child's toy.
Wham-O v. Paramount Pictures, No. 03-4071 (N.D. Cal. Sept. 30 2003).
October 20, 2003
With A Name Like Smucker's
A California woman has brought an action against Smuckers, alleging that its description of its jam as "simply 100 percent fruit" is false, as the jam only contains 30 percent fruit. Via Ninth Circuit on Parma Ham Domain Name
The Parma Ham consortium comes one step closer to obtaining the name PARMAHAM.COM.
Consorzio Del Prosciutto dil Parma v. Domain Name Clearing Company and Chris Truax, no. 02-56839 (Ninth Cir. Oct. 16, 2003).
Tiffany and Company v. Overstock.com
The problems of selling high quality merchandise on the Web: Tiffany and Company alleges that Overstock.com sold pendants bearing the TIFFANY mark that were not authorized by Tiffany. Overstock indicates that it had verified the source of the items. Tiffany suggests that certain sales documents in the trade channel that lead to Overstock obtaining the items, may have been forged. Coverage from NY Times (free registration required) and Motley Fool.
DVD of "Breakfast at Tiffany's" here.
See previous story re Tiffany below.
Bouchat v. Balitmore Ravens - 4th Circuit on Copyright Damages
Plaintiff established that the NFL and the Baltimore Ravens had infirnged his copyright in a drawing for the Balitmore Ravens logo. He claimed damages based on a variety of sources of revenue to the team, including merchandise sales and broadcast income. The Fourth Circuit holds that there must be a conceivable connection between the infringement and the revenue, and a more than speculative causal link.
Bouchat v. Baltimore Ravens, No. 02-1999 (4th Cir. Oct. 8, 2003).
Yao Ming v. Coke
Coca Cola has agreed to stop using Yao Ming's image on packaging in China and has apologized for using it without his permission. Yao has a sponsorship agreement with Pepsi. Via Interfax.
Word
Rap lyrics by Judge in Eminem defamation case here.
Tiffany Awarded Damages Against Web Merchant
Tiffany and Company awarded $573K in damages against a website selling counterfiet TIFFANY jewlery, via AP.
October 18, 2003
Bidz v. eBay re $1 No Reserve
Via Internetnews.com, Bidz has sued eBay over the use of its registered trademark $1 NO RESERVE.
October 17, 2003
The Aesthetically Functional Swedish Fish
If you wanted to make a fish-shaped gummy candle, you would likely need to make the back flat, where you pour the liquid into a starch impression. Also, in order to make it look like a fish you would likely need to use a head, tail, scale pattern and eyes. So Malaco Leaf, owner of SWEDISH FISH gummy candy, was unable to show protectable trade dress as its fish-shaped candy had an aesthetically functional design. Also, defendant SQWISH FISH established that there were 69 other fish-shaped gummy candies on the market.
Malaco Leaf , AB v. Promotion in Motion, Case no. 01-7600 (S.D.N.Y. Oct. 1, 2003).
Glenn Mitchell's book on trade dress here.
Swedish Fish available here.
Brothel Trademark Sold On EBay
The trademark and other assets of the Mustang Ranch, a bankrupt brothel in the state of Nevada, has been sold at auction via EBay for $145,000. Via The Reno Gazette. Image from Realm-of-shade.com.
October 16, 2003
Depicting a Bulldozer In A False Light
Both David C. of New Jersey and John W. of Boston write in to advise of news of this lawsuit filed by Caterpillar against Disney, producers of the movie "George of the Jungle II," for its less than flattering portrayal of the fine CAT brand bulldozer.
Thinking of this lawsuit and that filed by Wham-O regarding the Slip N' Slide, I am reminded of the movie Repo Man, notable for many reasons, among them its gag consisting of the characters eating and drinking from containers labeled only as FOOD and DRINK.
Alternately, movie credits might bear the legend "All products depicted herein are fictitious. Any resemblance to real products is purely coincidental."
Your Deal
The Deal, a business deal news provider, is protesting the use of The Real Deal for a real estate deal news provider, via the NY Post.
Google Loses Keyword Case in France
Google has lost a decision in the court of first instance in France based on its sale of keywords. It is my understanding that the case revolved around a complaint by a trademark owner that if Google has sold the keyword SHOES for an ad for any brand of shoes, then a search for [TRADEMARK] SHOES would trigger that ad.
The decision in French is available here.
Pivotal Private Equity Purchases NSI for $100 Million
Pivotal Private Equity has announced that it has purchased Network Solutions Inc., the largest domain name registrar for approximately $100 million. Details here and here. Verisign had purchased the registry and registrar businesses of NSI for $20 Billion in 2000. Verisign is retaining the registry business.
Information on Pivotal Private Equity here.
October 15, 2003
Confidentiality of Unsolicited Email Communications
Here's a reminder - while it's nice to receive unsolicited email and instant messages (about trademarks, not Nigerian bank scams), such contacts are at most initial or peripheral contacts, that will not create an attorney-client relationship for purposes of privilege, malpractice or conflicts of interest. While I agree to keep such communications confidential, bear in mind that Internet communications may be inherently insecure.
Some people write to ask me for 'curbside' opinions. When there is an identifiable adverse party, it is prudent to identify the adverse party before you disclose information that you deem to be confidential.
AMERICA ONLINE v. AMERICA'S ONLINE UNIVERSITY
Via the Times-Picayune, AMERICA ONLINE v. AMERICA'S ONLINE UNIVERSITY. Grantham University has filed for AMERICA'S ONLINE UNIVERSITY, which has raised an objection from AOL. I note that Walden University owns Reg. no. 2728349 for AMERICA'S PREMIERE ONLINE UNIVERSITY.
70 Shoes Filled WIth Butter
IPKat on the protectability of ideas in conceptual art. In this case the idea is to fill 70 shoes with butter and put them in a scenic location.
How About the 43(a) Party?
A candidate for mayor of Hudson, NY, formed The Bottom Line Party. The incumbent mayor quickly filed petitions to run under The Bottom Line Party name, claiming that no one can own a political party name (and keeping the opponent off the ballot under that party line). For now, the matter is in state court, and a Federal Court won't intervene.
Lies, Damn Lies, and Puffery
If you review advertising and promotional material for your clients, and they use terms such as DOMINANT, LEADING and PREMIER in their copy to describe themselves or their products, you may want to bring this story from By No Other, to their attention. It discusses the possible legal exposure (in a securities law context) from using puffery.
Also - always good advice - if your client doesn't provide cable services, it shouldn't say in its press releases that it provides cable services.
October 14, 2003
Michigan v. Travel Michigan
The Michigan Economic Development Corp. is suing a Michigan business for registering TRAVELMICHIGAN.COM, a slogan used by Michigan since 1982. Via DetNews.com.
October 13, 2003
Interlocken v. Interlochen
Front page article from Wall Street Journal (paid subscription requried) regarding battle between INTERLOCHEN CENTER FOR THE ARTS and INTERLOCKEN Camp. Interlocken's info on dispute, including copies of pleadings here.
More on Counterfeiting
Article from the Independent, "Who Are the Real Fashion Victims?," suggesting that 11% of the goods in circulation are counterfeit.
Sally If It's A Girl, Camry If It's A Boy.
Via IPKAT, an article from NEWS.COM.AU, on the tendency of some parents to use names such as TIMBERLAND, CHANEL, CANON, JAGUAR and CAMRY, when naming their children.
Trademark Mythology
From a sidebar story to this article on Nike from Westchester's The Journal News:
Nike got its name when its first employee, Jeff Johnson, had a dream about Nike, the Greek Goddess of victory. The chief executive , Phil Knight, chose NIKE over the other name he was considering, DIMENSION 6.
The NIKE swoosh was designed by Carolyn Davidson, a graphic design student, for $35.
October 10, 2003
Tales From the Decrypt
A Princeton grad student published a paper indicating that a company's copy-protection and encryption method was easily circumvented. Since the paper was released Monday, the company's stock has declined $10 million in value. The company indicated that it was contemplating suing the student under DMCA. Outcry. Now the company has indicated it won't sue.
Information on purchasing comic art here.
Tales From The Crypt compendium here.
October 09, 2003
In the Age of TIVO, Will Everything Be an Ad?
"Life as Product Placement," a CNN Money article on 'insiduous' or pervasive advertising designed to get around commercial-skippers like me.
Discussion of Dewey Decimal Case
Any analysis of the OCLC v. Library Hotel matter (the Dewey Decimal case) that concludes with a reference to Parker Posey's portrayal of a librarian in Party Girl is worth reading.
Volokh re What Bloggers Should Know About Copyright
Via edcone.com, Prof. Volokh on what bloggers should know about copyright.
Typos, Paid Search and Diversion of Traffic
ZDNET article on typos, paid search and diversion of traffic. Diverting web traffic is shaping up to be the most popular activity on the web.
SpongeBob Holiday Inn?
Wall Street Journal article, page B1 hard copy (online version available only through subscription), on the "limits of licensing," featuring, among other projects, the proposed SpongeBob Holiday Inn.
NY Times on IP Protection for Entrepreneurs
NY Times article (free registration required) on intellectual property protection for entrepreneurs. My favorite quote: "Getting a trademark for the name or logo is crucial . . ."
Oppositions in the U.S., U.K. and OHIM.
Barbara Cookson and Patrick Gallagher in the INTA Bulletin on differences between opposition proceedings in the U.S., U.K. and OHIM. Interesting statistics on the exceedingly low level of oppositions in the U.S. or exceedingly high levels in OHIM, depending on your perspective.
Break Me Off a Piece of that KitKat Bar
October 08, 2003
Action RAZANNE
I have yet to finish my predictions for the top ten trends in IP law for 2003. Reviewing my partial list of the first five trends from this past January, I note with satisfaction the accuracy of my prediction that the Eldred and Mosely cases would be decided.
My fifth prediction, namely that we will see an erosion of the power of Western brands (or at least more competition for Western brands motivated by political or social considerations), may be illustrated by this article on the RAZANNE doll, sold by a Michigan firm and positioned as a Muslim alternative to the BARBIE doll.
BURBERRY, DIOR and Other Luxury Brands in the News
Via The Telegraph, discussion of the BURBERRY brand. Old story on defending its pattern here. International Herald Tribune on the hottest handbags here. Via Canada.com, a discussion as to whether proceeds from counterfeit goods sales find their way to terrorist groups.
Do Counterfeit Goods Fund Terrorists?
Via Canada.com, a discussion as to whether proceeds from counterfeit goods sales find their way to terrorist groups.
TTAB Anger Management
The PTO released an order this week reprimanding an attorney who called up TTAB personnel and used inappropriate and insulting language, ranted, etc. Turns out those calls are recorded. He indicated that he had taken six times the normal dosage of cough medicine (and had problems with anger management). The lessons for practitioners are: don't yell at TTAB personnel (or any member of the PTO for that matter), send flowers to the people you insult, show remorse, complete your anger management course, and when you're sick, stay home - don't take six times the normal dosage and go to work instead.
IPKAT on UK Advertising
IPKat on UK advertising practice and the use of celebrity images.
$19 Million in Punitive Damages For Internal Distribution of Newsletter
A Baltimore jury has awarded a financial publisher, Lowry's Reports $19 million in punitive damages (and $800k in direct damages), for Legg Mason's internal distribution of a newsletter (subscription price - $700) on its intranet. Via MSNBC via TechLawAdvisor.
October 07, 2003
ICANN Response to IAB Critique of DNS WildCards
Verisign's Point-by-Point response to IAB's critique of Verisign's SiteFinder service and its use of DNS Wildcards.
Verisign's response violate's one of Dave Winer's proposed Rules of Links by commenting directly on a document available on the Web without linking to it. Should this be a rule and what enforcement mechanisms should there be?
KOOLA v. COOLA Down Under
Via BANDT.COM, Cadbury Schweppes has sued Anchor Foods of Australia re Anchor's use of KOOLA and design, which allegedly infringes's Cadbury's COOLA and design marks.
October 04, 2003
Maybe One Way of Thinking About the Redskins Case
. . . is to imagine a team named the WHITESKINS whose mascot is a proud white warrior. But the team's owners, players and fans would belong to another (majority) racial group.
The decision points out true laches issues, and the the evidentiary record isn't stellar, but in the end the word REDSKINS defines a minority group by a derogatory reference to the color of their skin (Native Americans' skin, after all, is not red). REDSKINS is a racist term. The team should migrate away from the name.
October 03, 2003
Verisign To Shut Down SiteFinder
Internetnews.com is reporting that Verisign will shut down its SiteFinder service in compliance with ICANN's demand (See below).
First Circuit Discussion of Class of Defendants in Copyright Case
First Circuit discussion of certification of a class of defendants under Rule 23(b)(1)(B) in a copyright case.
The National Aeronautics and Space Act of 1958
Interesting aside re the SiteFinder rhubarb via ICANNWatch: Apparently there is a National Aeronautics and Space Act of 1958, which prohibits the use of the NASA name in association with any business. ICANNWatch asks whether the fact that SiteFinder directs traffic resulting in typing in SHUTTLE-NASA.COM, for example, to a Versisign-controlled page, violates the Act. If so, this would concern AOL and MSN as well. ICANNWatch then answers its own question pointing out that while the fact pattern possibly satisfies the 'use in connection with' element of the statute, such use doesn't convey endorsement of SiteFinder by NASA. I only note this to point out that there are several special statutes that provide 'anti-dilution' like protection to special marks such as NASA and OLYMPICS and RED CROSS. I dimly recall that the Daughters of the American Revolution had or have special IP protection as well. Please write in if you can provide the info without going to too much trouble.
Thanks to Patrick Jones for background info on the Olympics and the Red Cross.
UPDATE: Gretchen at Cooley writes to point us to Appendix A2 of McCarthys - "Statutes Relating to the Protection of Specific of Names, Characters and Designs." I counted up to 55 organizations which receive special forms of IP protection, usually for their "name, emblems, seals and badges." (Badges? Who needs badges?). To give you an idea, the American Ex-Prisoners of War, American Legion and the American National Theater and Academy being the first three names on the list.
ICANN Demands That Verisign Suspend SiteFinder
ICANN has issued an "Advisory Concerning Demand to Remove Verisign's Wildcard."
In pertinent part:
"As set forth in today's letter to VeriSign, ICANN's preliminary conclusion is that the changes to .com and .net implemented by VeriSign on 15 September have had a substantial adverse effect on the core operation of the DNS, on the stability of the Internet and the .com and .net top-level domains, and may have additional adverse effects in the future. Further, VeriSign's actions are not consistent with its contractual obligations under the .com and .net registry agreements. The contractual inconsistencies include, violation of the Code of Conduct and equal access obligations agreed to by VeriSign, failure to comply with the obligation to act as a neutral registry service provider, failure to comply with the Registry-Registrar Protocol, failure to comply with domain registration limitations, and provision of an unauthorized Registry Service.
For all these reasons, ICANN has today insisted that VeriSign suspend the SiteFinder service, and restore the .com and .net top-level domains to the way they were operated prior to 15 September 2003. If VeriSign does not comply with this demand by 6:00 PM PDT on 4 October 2003, ICANN will be forced to take the steps necessary to enforce VeriSign's contractual obligations."
October 02, 2003
IP Rights and the Third World
IPKat on IP rights and the Third World.
October 01, 2003
VeriSign Announces VoteFinder Service
Via news.com Verisign has been granted a contract to provide secure Internet voting services (not kidding). Ross Rader beat me to it:
"The great thing is that if voters type in the wrong vote, Verisign has the technology to point them in the right direction."
Redskins Win
CrownPontiacNissan.com - Free speech domain name case
Crown Pontiac Nissan didn't have anymore cars with facotry-installed sunroofs so they installed a sunroof for a customer, Thomas Ballock, and now you're reading this. There were problems with the installation and there was a dispute, arbitration, etc. The customer obtained the domain name CROWNPONTIACNISSAN.COM and put up a site entitled "Why I Won't Recommend Crown Nissan." Crown Nissan obtained a preliminary injunction. Customer had the injunction reversed, and has now received damages. Decision here.
This decision is somewhat in contrast to those such as the Jews for Jesus, Planned Parenthood and Peta.org decisions, in which use of the per se version of a trademark tends to be actionable. However, as Thomas Ballock has correctly pointed out to me, in Jews for Jesus and Planned Parenthood, the courts strained to find some form of commercial activity on the part of defendant, usually focusing on defendant's own agenda. Here, Ballock's actions in venting his dispute was seen as non-commercial.
There are certain UDRPs that have articulated the principle that defendant's actions will not be deemed to be commercial even if there is a pre-existing commercial dispute between plaintiff and defendant, apart from the domain name dispute. For example there have been UDRPs involved disgruntled pensioners and disgruntled customers who have set up protest sites. I'm not sure that it is logically sound that in a commercial dispute, one party can make non-commercial speech about it's own role in a commercial dispute. Nevertheless, I'm more comfortable with that analysis in a [trademark]sucks fact pattern, because there is less of a chance of diversion arising. I think the reality is that in some of these disputes, grabbing a domain name that is identical to that of the trademark owner in order to put up non-flattering information, is clearly intended to be a coercive measure to influence the original commercial dispute. I'm not sure that is pure non-commercial speech.
See Band and Schruers, Toward a Bright-Line Approach to [Trademark]sucks.com, 20 The Computer & Internet Lawyer 1 (July 2003).