My Wife Just Defended Her Dissertation
Doc-tuh.
« April 2006 | Main | June 2006 »
May 31, 2006
This Is What I'm Talking About Re WEB 2.0
This illustration for Tim O'Reilly's article "What Is Web 2.0?" suggests the challenge that CMP created for itself in maintaining WEB 2.0 as a trademark (as opposed to a meme). Forget for the moment whether lawyers are necessary, or whether it was bad PR for CMP to send a demand letter, or if O'Reilly, as a champion of open-source ideas, should be held to different standards, or whether somebody was rude to somebody in an email.
There is a branding and trademark protection point here.
When the ITU was filed for WEB 2.0 in 2003, WEB 2.0 was, imho, an inherently registrable mark. I base this on one fact and one assumption. The fact is that the PTO (correctly) didn't give the mark a descriptiveness objection and the assumption is that the term was not widely used in 2003 (although some dispute this). So CMP had the potential for a strong exclusive trademark.
But O'Reilly took another (understandable) tact. It promulgated the term to have universal meaning other than as an indicator of a CMP/O'Reilly product. When O'Reilly, for example, talks about WEB 2.0 principles and WEB 2.0 applications and WEB 2.0 companies, he breaks the link of meaning between the trademark and his company's services.
So, despite what Mr. O'Reilly states in paragraph of his post today, this may indeed be that rare trademark creature, genericide, but self-incurred genericide.
This can be a totally acceptable branding strategy. But the trademark lawyer has to advise the client that adopts this 'brand as buzzword' strategy that its likely result is razor-thin trademark protection, and backlash when those thin rights are asserted.
May 30, 2006
Chinese Catfish Can Be CAJUN For Now
Lousiana has statutes that seek to prevent misleading usages of the terms CATFISH and CAJUN. An importer of what it viewed as Chinese catfish (clearly labeled as orginating in China) sold under the CAJUN BOY trademark, ran afoul of the law. Fifth Circuit struck down the Catfish Statute as unconstitutional and held that the Cajun statute had been erroneously applied to plaintiff.
Piazza's Seafood World v. Odom, 05-30098 (May 4, 2006).
UPDATE: 43(B)log analysis here.
Discussion Of Secondary Liability Of Flea Market
Foley & Lardner: "Flea Market's Theory of Secondary Liability Doesn't Fit, So Court Doesn't Buy" discussing Arista Records v. Flea World (DNJ 03-2670 3/31/06 (Flea market held to be contributory infringer based on vendor's sale of infringing CDs).
One Million Hits This Month
According to my web software, which cannot be trusted, the Trademark Blog had one million hits this month.
This is all the more notable given that there were no decisions involving Perfect 10 this month.
On The Internet, the NAF Knows You Are Not A Cat
Respondent in UDRP alleges that it is a cat, which is not an affirmative defense, and possibly casts doubt on the rest of the allegations.
Must read opinion for that dry British wit:
Morgan Stanley v. Meow, NAF 671304 (May 22, 2006).
Practice pointer: If you are cat, use one of those domain name proxy services.
May 28, 2006
Web 2.0 v. Web 2.0
Web 2.0 t-shirt here.
Wikipedia on Web 2.0 here.
Blog of IT@Cork, organzation that received demand letter from CMP (parent of O'reilly) re use of WEB 2.0 to describe its IT@Cork Web 2.0 conference, here.
O'Reilly essay: What is Web 2.0
Most recent post from O'Reilly.
Cory Doctorow on the controversy.
IMHO, the 2005 O'Reilly piece begins and ends the discussion. If you coin and promulgate a term, you can sell it as a buzzword or you can sell it as a brand, but under trademark law, it's virtually impossible to do both. (And if I want to promote the Trademark Blog Web 2.0 Conference about protecting trademarks in the Web 2.0 space, then I will cite the O'Reilly essay as Exhibit A as to how I am using the term to describe a quality of my offering.
p.s. CMP is a trade publication specialist. It owns trademarks like VIDEOGRAPHY and CALL CENTER. Its lawyers are familiar with Section 2(f) of the Lanham Act.
Wikipedia on the term "Drinking the Kool-Aid" here.
May 25, 2006
First .MOBI Deadline May 29
The new .MOBI top level domain name is going live. There is a sunrise period this week until the 29th for entities that can establish that they are part of the 'mobile industry' (established by membership in one of several mobile industry organizations).
A second sunrise begins June 12 for holders of trademark registrations (any industry) that were granted prior to July 2005.
Then, on August 28, it's every registrant for themselves.
List of eligible mobile industry organizations:
AMTA, CTIA, CWTA,GSMA, MEF, MMA, NZ Wireless Forum and the RCA.
May 24, 2006
Proposed New York State Anti-Cybersquatting Law
Discussion here.
Text:
The language of S2306 follows:
Introduced by Sens. LITTLE, ALESI, BRUNO, DeFRANCISCO, FARLEY, FUSCHIL-LO, HANNON, LARKIN, LEIBELL, LIBOUS, MALTESE, MARCELLINO, MARCHI, MAZIARZ, MEIER, MORAHAN, PADAVAN, RATH, SALAND, SKELOS, VOLKER, WINNER - read twice and ordered printed, and when printed to be committed to the Committee on Consumer Protection
AN ACT to amend the general business law, in relation to cyber piracy protections and the unlawful registration of domain names
The People of the State of New York, represented in Senate and Assembly, do enact as follows:
1 Section 1. The general business law is amended by adding a new article
2 9-C to read as follows:
3 ARTICLE 9-C
4 CYBER PIRACY PROTECTIONS; DOMAIN NAMES
5 Section 146. Short title.
6 147. Definitions.
7 148. Unlawful registration of domain name.
8 149. Civil remedies.
9 Section 146. Short title. This article shall be known and may be cited as
10 the "domain names cyber piracy protections act."
11 Section 147. Definitions. For the purposes of this article, the following
12 terms shall have the following meanings:
13 1. "Domain name" means any alphanumeric designation that is registered
14 with or assigned by any domain name registrar, domain name registry, or
15 other domain name registration authority as part of an electronic
16 address on the internet.
17 2. "Internet" means the international computer network of both federal
18 and non-federal interoperable packet switched data networks.
19 3. "Traffic in" refers to transactions that include, but are not
20 limited to, sales, purchases, loans, pledges, licenses, exchanges of
1 currency, or any other transfer for consideration or receipt in exchange
2 for consideration.
3 Section 148. Unlawful registration of domain name. 1. No person shall regis-
4 ter a domain name that consists of the name of another living person, or
5 a name substantially and confusingly similar thereto, without that
6 person's consent, with the specific intent to profit from such name by
7 selling the domain name for financial gain to that person or any third
8 party.
9 2. A person who in good faith registers a domain name consisting of
10 the name of another living person, or a name substantially and confus-
11 ingly similar thereto, shall not be liable under this section if such
12 name is used in, affiliated with, or related to a work of authorship
13 protected under title 17 USC, including a work made for hire as defined
14 in 17 USC 101, and if the person registering the domain name is the
15 copyright owner or licensee of the work, the person intends to sell the
16 domain name in conjunction with the lawful exploitation of the work, and
17 such registration in not prohibited by a contract between the registrant
18 and the named person.
19 Section 149. Civil remedies. 1. Upon the commission of a violation of this
20 article, an application may be made by the public service commission to
21 a court having jurisdiction to issue an injunction against the regist-
22 rar, domain name registry, or other domain name registration authority,
23 and upon notice to the respondent of not less than five days, the court
24 may award injunctive relief, including the forfeiture or cancellation of
25 the domain name. If it shall appear to the satisfaction of the court
26 that the respondent has committed a violation of this article, the court
27 shall enjoin and restrain any further violation without requiring proof
28 that any person has, in fact, been injured or damaged thereby.
29 2. In addition to injunctive relief, the court may fine the registrar,
30 domain name registry, or other domain name registration authority, one
31 thousand dollars for each day the violation occurs. The court may also
32 order the transfer of the domain name as part of the relief awarded.
33 3. In a civil action commenced under this section, a domain name shall
34 be deemed to have its situs within the state if the domain name regist-
35 rar, registry, or other domain name authority that registered or
36 assigned the domain name is located within the state.
37 Section 2. This act shall take effect on the one hundred twentieth day after
38 it shall have become a law; provided, however, that any rules and regu-
39 lations necessary for the implementation of this act may be promulgated
40 on or before its effective date.
May 23, 2006
Call For Submissions Re Baseball Statistics Case
Let's have a blogging symposium re the Fantasy Baseball case. It's got everything: Intellectual Property, statistics, and Baseball.
'Is the NFL More Feared Than The U.S. Government?"
Freakonomics: Is the NFL more feared than the U.S. Government?
"The U.S. Versus .xxx"
eWeek: Freedom of Information Act requests reveal emails suggesting that U.S. Government Officials such as Rove and religious conservative lobbyisys were active in the defeat of the .XXX top level domain name. The article suggests that such activities may have violated the USG's Memorandum of Understanding with ICANN.
ICANN WATCH and (ICANN board member) Susan Crawford have been following this story and I await their comments.
A non-Trademark law observation occurs. This is a common problem in regulation. There is an activity that, for these purposes, we will label as a vice. Speaking broadly, the 'left' proposes harm-reduction procedures (clean needles, condoms, regulations) and the 'right' opposes any measure short of zero tolerance, because, in part, harm-reduction impliedly endorses the vice. Some times the left wins and a 'better than nothing' alternative is implemented. In this case, 'nothing' is implemented.
Thoughts?
May 22, 2006
WEST POINT brand Military Academy
The Department of the Army owns a federal registration for WEST POINT covering multiple goods and services. West Point Graduates Against The Waris an organization of West Point graduates against the war. The Army has sent them a demand letter.
Some cases involving trademark use by advocacy organizations include Brach van Houten Holding v. Save Brach's Coalition, 856 F. Supp. 472, 31 USPQ2d 1786 (ND Ill 1994) (no online version available), where the trademark owner sued the union for using the BRACHS mark to name an ad hoc anti-management group. See also International Assn of Machinist and Aerospace Workers v. Winship Green Nursing Center, 96-1206 (1st Cir. Dec. 30, 1996), where the union sued the trademark owner for using the union's trademark in informational material during the dispute.
However it seems that WPGAW's focus is not really West Point and its policies. This case may fall more cleanly into fact patters such as Playboy Enterprises, Inc., v. Wells, 279 F.3d 796 (9th Cir. 2002), which hold that you may truthfully identify prior affiliation providing that such use is not confusing.
Practice pointer: It would appear that the NY Times reported on the existence of West Point Graduates Against The War because of the demand letter.
May 18, 2006
You've Smelled The Rest, Now Smell The Best
Another excuse to run the picture of the 'You've Tried The Rest, Now Try The Best' pizza chef. Does anyone know the history of this graphic?
Via IPKat, a Lithuaian company claims that it has secondary meaning in the smell of pizza.
May 16, 2006
Plagiarism and Reverse Passing Off
Prof. Volokh on the investigation of Prof. Ward Churchill. Prof. Churchill not only allegedly put his name on other people's work, but he would put other's names on his work. Why? So that he could cite them as supporting his views.
Trademark Blog Live in Manhattan Wednesday
I will participate on a panel on the subject of blogging, of all things, at the Copyright Society lunch at the Princeton Club, Wednesday at lunch. Fellow panelists include Bill Patry of Patry on Copyright. Details here.
Geographical Indications Used on Wines and Spirits
Trademark Office Exam Guide 1-06: Geographical Indications Used on Wines and Spirits.
"Injunction Junction: Law Note On Equitable Relief In Trademark Law"
Duke Law & Technology Review iBrief: "Injunction Junction: Remembering The Proper Function and Form Of Equitable Relief In Trademark Law."
Abstract: Injunctions are supposed to be among the most extraordinary remedies in the American judicial system, yet they have become anything but rare in trademark litigation. Although the unique nature of trademark protection may explain the frequency of injunctive relief, the process by which this relief is issued is rapidly devolving into rubber-stamping by the courts. This iBrief argues that courts should (1) recommit themselves to the principles of equity before granting injunctions and (2) seriously apply the specificity requirements of Rule 65(d) of the Federal Rules of Civil Procedure to avoid overly broad orders.
May 15, 2006
Use Of Recognizable Products In Movies
When Is A Final Judgment An Unenforceable Agreement To Agree
Brinks Hofer: 'Fifth Circuit Rules That Inconclusive Trademark Settlement Is Crackers' (Parties terminate trademark infringement action pursuant to entered agreement - settlement agreement lacked essential terms of a trademark license and held unenforceable agreement to agree).
Preregistration of Copyrights
Loufrani v Wal-Mart Over Smiley Face
Forbes: Wal-Mart in Trademark Clash Over Smiley Face. If you use a smiley face, then at some point, sooner or later, you hear from Mr. Loufrani.
More On SURF CITY
May 12, 2006
Observations re Politics of ICANN Rejecting .XXX
Effectively Ending My Career With The Coasters
Via Nerdlaw, the Truth in Music Advertising Act, a law in several states barring performance using a name of a band if the performer was not a member of the original 'recording group.'
No Creation Of U.S. Law By Paris Convention
43(B)log discusses application of Paris Convention in a trade secrets case (the Paris Convention does not create a general tort of unfair competition beyond anything else found in the Lanham Act).
'If You Can't Tell The Difference, Why Pay For It?"
You Have To Give Email Recipients A Chance To Opt Out
News.com: Kodak pays $26k to settle charges that it sent out 2 million unsolicited emails that did not provide recipients with a method of opting out of future emails.
Gowlings Portal On Domain Names
The Gowlings firm has created a portal for various domain name news and tools, including a summary of all dot-ca arbitrations.
New Information Law Blog
Info / Law , written by Fellows from the Berkman Center, soon to be law professors.
May 11, 2006
On Unconscious Plagiarism
Design Observer: "I am a Plagiarist."
Text of Decision in Apple Corp v Apple Computer
This case is a must-read, and I would venture that it is a must-teach, in contract drafting classes, from now on.
Read the whole thing, but if you are in a rush, reading the portion of the original agreement between Apple Corp and Apple Computers, particularly clause 4.3, and then read paragraphs 81 to 105 of the decision, for the key as to how the Court interpreted clause 4.3, which said that Apple Computer could use the logo to transmit music, but it couldn't use it to sell CDs.
Apple Corp v. Apple Compueter, [2006] EWHC 996 (ch) (08 May 2006).
Fill In Your Funny Title Here About The End Of .XXX
Icann has rejected .XXX as a new top level domain. Possible titles for this post include:
.XXX Gets X'ed Out
No Sex Please, We're ICANN
.XXX To Be Ex-TLD
No Happy Ending For .XXX
As I have mentioned previously, I think that .XXX was plausible as a harm-reduction approach It was misunderstood as both a fix for and an endorsement of pornography, when it was neither.
I predict that there will be regulated zones on the Internet some day, and that domain names could be part of that process. All other things being equal, the rejection of .XXX will deprive us of data as to how zones might function.
Trying Out Domain Names For 5 Days
CircleID discussion of the practice of domain name speculators taking advantage of the 5 day trial period to test out domain names, to determine whether they have sufficient 'type-in' traffic to make them worthy of being yet another parked-domain displaying keyword ads.
Galileo Galileo
CNN.com - Court allows Galileo name for Satellite.
May 09, 2006
BeerBistro, King and Yonge, 9:30 Tonight
Apple Wins Apple v. Apple Suit
May 07, 2006
Colbert on YouTube: No Conspiracy Theory
Video of Stephen Colbert saying that the emperor and the emperor's press corps have no clothes was stored on YouTube. When reports that C-Span had asked YouTube to pull the clip on copyright grounds, there were, among others, two reactions: (1) how can a government claim copyrights; and (2) did they do so to suppress the speech.
To answer the first - it turns out that C-Span is not a government entity. It is a not-for-profit entity established by the cable industry and certainly own and assert copyright. As for conspiracy theories, C-Span itself is distributing the clip.
Stoller Promotes Tuesday Night Blog Party In Toronto
Seriously, here.
If You Know Where There's Open WiFi In Toronto . .
. . . near the conference, email me at marty at schwimmerlegal dot com and I will post the location.
May 05, 2006
WSJ: Can Lawyer's Copy One Another's Litigation Documents?
WSJ: Can Lawyers Copy One Another's Litigation Documents?
Trademark Blog post from November 2002 on the issue here.
Double the Centigrade And Add Thirty
Double the centigrade and add thirty in order to convert centigrade to farenheit.
One US dollar is worth approximately 1.10 Canadian, one Canadian dollar is worth approximately 90 cents.
Take a passport or birth certificate.
They speak English, but with an accent.
Your cell phone provider may treat all your calls as roaming, it depends on your plan.
May 04, 2006
Pitch Me In Toronto
Reminder: The Ale and Quail Club of Mid to-Upper-Westchester will be hosting its annual social at:
BeerBistro
18 King Street (at Yonge)
Toronto
Tuesday May 9 - 9:30 pm to Midnight
All constructive suggestions on how to improve the Trademark Blog will be cheerfully entertained. If you would like to meet with me in Toronto but are intimidated by throngs of rowdy trademark lawyers clutching the latest Thomson and Thomson giveaway, email me at marty at schwimmerlegal dot com.
May 03, 2006
DONALD TRUMP v. IVANA TRUMP
Via The Smoking Gun, we learn that The Donald is opposing his ex-wife Ivana's trademark application for IVANA TRUMP. You'd have thought the divorce settlement would have envisioned this. HT Eric.
Possibly relevant Trademark Blog post from 2002 on the 'sacred right to use one's own name.' There's a typo in it that I can no longer correct.
Backdoor or "Third Shift" Counterfeits
Video Illustrating Google Adword Abuse
Video distributed in YouTube illustrating adword abuse (worth the 9 minutes).
WaPo Article on Google and Parked Domains
Washington Post: The Web's Million-Dollar Typos
Class Action Suit Against Yahoo For 'Syndication Fraud'
Text of Complaint in Crafts by Veronica v. Yahoo, filed in the District Court of New Jersey on Monday.
Washington Post coverage here.
MY, YOUR and OUR
NY Times article on the use of MY, YOUR and OUR in branding campaigns.
Counterfeit Chic: 'Knockoff News'
Counterfeit Chic: 'Knockoff News'
May 02, 2006
Let's Open This To The Floor Re 43(c)(4) Defenses
Referring to previous posts here and here, the Public Citizen has been disputing INTA and AIPLA as to the effect of language in the DIlution Revision Bill. Its latest memo is here.
We're taking comments from the floor on the following questions:
1. Does the use of 'section' rather than subsection in the current 43(c)(4) imply that Congress intended for the enumerated defenses in that clause extend to all causes in Section 43 and not just 43(c);
2. If the answer to question 1 is yes, would amending 'section' to specific references to dilution in 43(c)(4) have the effect of removing the enumerated defenses from section 43(a) and 43(d);
3. If the answer to question 1 is yes, would removing those references to dilution in the proposed bill and maintaining the word 'section' have the effect of explicitly extending those defenses to 43(a) and 43(d)?