30
Jun/05

The Trademark Balm?


NY Times article on celebrity fragrance lines.

I should do merchandising.

 



30
Jun/05

Mo's vs. Moe's


Mo’s Restaurant sues Moe’s Southwest Grill.

Discussion of Flaming Moe episode from Simpsons here.

One of my favorite Lionel Hutz lines from that episode: ‘This all goes back to the Frank Wallbanger case of ’78. How about that! I looked something up! These books behind me don’t just make the office look good, they’re filled with useful legal tidbits just like that!’

Discussion of Lionel Hutz here.



30
Jun/05

Girl Gone Wild Sues 'Girls Gone Wild'


Defendant, a company that ‘travels the country to videotape young women exposing their breasts at events and venues such as Mardi Gras and spring break beach resorts,’ is ordered to pay a young woman $60,000 in punitive damages for using her image in its video (and on the cover of the box) without her written consent.  Via The Virginian-Pilot.



29
Jun/05

Test Your Skills Post-Grokster


Client is computer and software vendor.  It wishes to introduce its new computer featuring a CD-RW drive and MP3 management software with the advertising slogan: “Rip, Mix, Burn Your Own Custom Music CDs.”

Client is a consumer electronics manufacturer.  It invents a video recording device.  It wishes to say in its advertising that its product allows the user to ‘build a library’ of his or her favorite shows.

Clients ask you if the advertising actively induces infringement.



28
Jun/05

2d Cir in WhenU: Sale and Placement Of Pop Up Ads Is Not Trademark Use


The Second Circuit has reversed the District Court in 1-800-Contacts and dismiised the trademark infringment cause (remanding to hear unfair competition cause).

Text of decision: (drill down on 2d Cir. site on ‘search all’ link).

I understand the Court’s holding that WhenU’s internal listing of website URLs is not trademark use.  I understand that in and of itself, placing an ad next to a competitor’s ad is not trademark use (but might be an element of unfair competition).  I think that in its dicta, the Court placed too much emphasis on the fact that WhenU sells categories (as in eye care) as opposed to keywords.  I think that when you read the discussion of free-riding on page 24, you can predict how these justices would come out on the unfair competition causes.  I think that it’s interesting that a company that advertises on Gator, would sue WhenU.

Prof. Goldman on decision here.



28
Jun/05

Patry: Supreme Court Punted On Grokster


Prof. Patry on Grokster here.



28
Jun/05

Declaratory Judgment Action re ACOMPLIAREPORT.COM


Sanofi-Aventis, the French pharmaceutical company, owns the trademark ACOMPLIA for the anti-obesity drug rimonabart (not yet approved here).  Medical Week News owns the domain name ACOMPLIAREPORT.COM and publishes news about the drug.  Sanofi filed a UDRP action with WIPO.  Medical Week News, represented by EFF, filed a declaractory jdugment action, complaint here.



27
Jun/05

Grokster Reaction Live


Good ongoing discussion of Grokster here, via WSJ.

Prof. Goldman suggests that you not you name your company anything that ends is a -STER, in a thorough analysis here.



27
Jun/05

Just To Show You How Prescient I Am . . .


. . . I was advising my clients not to actively induce infringement before Grokster came out.



27
Jun/05

Rip, Mix, Burn: Grokster Sets 'Affirmative Steps To Induce' Standard


S Ct. reverses 9th Cir. 9 – 0, articulating an ‘affiramtive steps to foster infringement’ standard.  Text of Grokster decision.

Important language:

 . . . one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.  We are of course mindful of the need to keep from trenching on regular commerce or discouraging the development of technolgoies with lawful or unalwful potential.  Accordingly, just as Sony did not find intentional inducement despite the knowledge of the VCR manufacturer that its device could be used to infringe . . . mere knowledge of infringing pontential or of actual infringing uses would not be enough here to subject a distributor to liability.  Nor would ordinary acts incident to product distribution, such as offerring customers technical support or product updates, support liability in themselves.  The inducement rule, instead, premises liability on purposeful, culpable epxression and conduct, and thus does nothing to compromise legitimate commerce or discourage innovation having a lawful promise.