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Google successfully brought a motion to dismiss infringement and dilution action brought against it in the Northern District of New York. The Court rejected the GEICO holding that the sale of a keyword by a search engine was trademark use.
RescueCom v. Google, 5:04CV-1055 (NDNY Sept 28, 2006)
Prof Goldman commentary here.
Discussion of COCAINE energy drink here.
Bulgaria and Romania join the EU on January 1. The Community Trademark Office, OHIM, has published these faqs on CTM enlargement.
Hollywood Reporter: "Photographer Alleges Geisha House Photos Infringe." (LA restaurant Geisha House utilizing 'lips' motif similar to 'signature' photo of plaintiff).
Google image search of term 'Geisha Lips' here.
Slashdot makes the point that several companies would gladly trade places with Apple and its classy problem regarding PODCAST.
You're right, the monkey is wrong. Either you or the monkey would have had to either have used the IPOD mark in commerce, or filed a trademark application prior to Apple. We assume that the monkey acted as your agent. We would be conflicted out of advising you in matters where the monkey's interests are adverse to yours, as the monkey has already retained us.
Monkey with iPod photo from here.
Registration of DotMobi domain names to the general public begins today. See your friendly neighborhood registrar.
Too many good links to single out one - just check out Counterfeit Chic's Knockoff News 33.
I was interviewed for this NY Sun article on proposed NY State regulations on attorney advertising.
Prof Goldman expresses mystification about a recent metatag decision.
Dilancian (Australian law firm) discusses the role of IP in the rise of the kiwi.
News.com: 'Google relents, publishes Belgian court ruling.'
Related news.com article: "Publishers aim for some control of search results."
According to Wired and others, Apple has protested the use of PODCAST READY and MYPODDER. This is the first report, to my knowledge, of Apple protesting the use of a PODCAST mark (it does protest POD-variant marks. I would want to see the demand letter before I commented further.
Apple's trademark guidelines are here. PODMART is given as an example of the sort of mark that Apple would object to.
Funny when Caroline pulls the counterfeit golf club out of the counterfeit bag.
IHT: "When the packaging makes it perfect" (On the Tiffany Blue Box and other luxury packaging).
IcannWatch: "ICANN Confirms: New gTLD Contracts Permit .tv style pricing."
Reuters: "Metro defeats Tesco in trademark battle" (re use of METRO in EU for soap).
Hard Rock Cafe complains re use of HARD LOX CAFE as name of not for profit festival. Note reference to how Hard Rock was 'obligated' to complain.
Second time someone claimed prior rights in American Express' MY LIFE MY CARD slogan.
First time reported here, apparently later settled.
Prof Lessig reprints an exchange between a free lance photographer and AutoWeek, which published a photo in which the photographer claimed copyright. Happy ending here.
Kevin Heller makes a good point over at IP Law Daily, providing YouTube with some advice:
"If I were their lawyer, I'd advise them to post "This video has been removed as per the request of the copyright owner" rather than admitting "due to copyright infringement" as they do in the above."
Mark Cuban: "The Coming Dramatic Decline of YouTube." His view is driven in part by the notion that no sustainable business can be built on copyright infringement.
UPDATE: "YouTube Signs Deal With Warner."
SlashDot: "GoDaddy Caves To Irish Legal Threat."
The NY State Bar Association (my bar association) has proposed rules on advertising by lawyers. As far as I can tell, they seem to embrace blogs, and, in my initial read, treat them less favorably than, for example, the unsolicited hard copy material I receive everyday from law firms, who, I imagine, have purchased mailing lists of lawyers from whom, I wonder. As example of a rule that strikes me as odd, it seems that I have to print out a copy of each new post and mail it to the attorney disclipinary committee on advertising. I probably post 1000 items a year.
Proposed rules here. Commentary from Prof. Volokh here.. Comments are due November 15.
Via Chang Tsi, Anna Sui obtains annasui.cn using .CN arbitration process.
Prof Patry: "Copyright Modernization Act of 2006."
Out-Law: Hackney council has won £300,000 from Nike in adispute over the London borough council's logo, which Nike had used on sports clothes without permission. Nike will also pay the council's legal costs."
NYPost: Universal Music Warns Web Video Swapper. Universal Music head suggests that they will be asking Youtube to get paid soon. Interesting reference to MTV as a 'costly mistake' and 'a hard lesson' that the musci industry will not repeat.
Salt Lake Tribune: "Schools Domain Taken By Porn" The article leaves you to guess the domain name in question.
After 1989 when the U.S. allowed Intent to Use applications (which required a declaration as to bona fide intent to use), some practitioners worried that applicants with huge laundry lists of goods and services, had potential fraud exposure if it could be shown that there had never been a bona fide intent to use on ALL those goods and services, particularly since the penalty would be cancellation of the ENTIRE registration. Non-US applicants were particularly vulnerable as their 'registered rights only' regimes encouraged massive filings.
The years passed without significant jurisprudence on this point.
Then, as Jonathan Moskin documents in his article "Fraud Alert: Applicants for U.S. Trademarks Beware When Specifiying Goods and Services!" in the September 1 issue of the INTA Bulletin there has been a trend towards the TTAB enforcing a strict interpretation of the fraud rules, since its decision in Medinol v. Neuro Vasx, 67 U.S.P.Q.2d 1205 (TTAB 2003).
The article raises many issues, including:
- the tendency of the TTAB to designate decisions as not citable or for publication is obscuring the extent to which the TTAB is apllying the Medinol decision; and
- the Madrid Protocol is perhaps aggravating the situation, as non-US applicants are using their 'broad' home country application as bases for filing, and not communicating with US counsel prior to filing.
The result is that there are many broad applications at risk of rejection or cancellation.
News.com: 'Behind Google's German Courtroom Battle" (Lawsuit contesting Google's ability to use the GMAIL mark in Germany and other countries).
I was approached by a RSS aggregator yesterday who wants to syndicate my news feed but I would have to sign a license indicating that my content was family friendly. I wrote back saying that everything so often I link to items like this and this. Look, I didn't draft the 'scandalous and immoral' clause in 2(a) of the Lanham Act, I only blog about it.
Strategic Name Development from Strategic Name Development, Inc. of Minneapolis. Early posts concern Star Trek, Wal-Mart, and Apple's new iTV product.
TTAB affirms refusal of DE PUTA MADRE on scandalous/immoral grounds. Via TTABlog.
43(b)log: "Typosquatting isn't false advertising" (discussion of Lands' End v. Remy (W.D. Wis).
There's some hub-bub this week re LonelyGirl15, subject of a series of popular videos on YouTube , who turned out to be not a lonely girl but an actress, and the project was in fact a 'pilot' for what might become a movie (coverage here and here). One of the tips that led sleuths to the creators was this application that was filed in the (individual) name of a lawyer connected to the project:
LONELYGIRL15
Goods and Services IC 038: Broadcasting programs via a global computer network.
FIRST USE: 20060524. FIRST USE IN COMMERCE: 20060524
Serial Number 78957059
Filing Date August 21, 2006
Current Filing Basis 1A
Owner (APPLICANT) Goodfried, Kenneth INDIVIDUAL UNITED STATES . . . . CALIFORNIA 91316
From the Plaintiffs' Lawyer Blog, we learn that eBay is suing WorldClassAuctions.com (source of the second tagline above) on 13 counts of trademark infringement (link to complaint there). EBay alleges trade dress in its home page (always an interesting theory), as well as its IT mark.
Frank Barnako in his Internet Daily discusses "Why Wikipedia Can Be An Advertiser's Problem," noting that Wiki entries on branded products are placing highly on search engine results, exposing users to potentially critical information about the products. Barnako quotes PR guru Steve Rubel (different one) to the effect that brand owners should resist the temptation to run to the 'self-editable' Wikipedia and edit. Rubel, in an extensive report on the Wiki/brand relationship , notes that the Wiki community can 'sniff out corporate manipulation.'
Discussion of Wikipedia sock puppetry here
Discussion of 'Being John Malkovich,' a film featuring a puppeteer, here.
Wings Group of Indonesia sues Murzah of Tanzania for infringing its rights in GIV Soap.
And on Alibaba, you can buy not only GIV Soap:
but CLV Soap as well, both from Yiwu & Zhejang Fortune Import and Export Co:
Business Standard: The Battle Over Injunctions by MJ Antony.
An entity claiming rights in the trademark SEX.EU fails to dislodge the registrant of the domain name SEX.EU, who somehow showed prior rights in SEX. Via The Register.
Sign-o-matic from site protesting McDonald's environmental policy here.
Thorstein Veblen, social philospher (who coined the term 'Conspicuous Consumption'), believed that fashion cycles succeeded as they were a relief from the specific ugliness of the previous season. Cf. Oscar Wilde: "fashion is a form of ugliness so intolerable we have to alter it every six months."
On the other hand, law professors Kal Raustiala and Christopher Sprigman, suggest that the fashion cycle, or atl least the shrotness of it, is caused by copying -- trends saturate the market quickly, 'driving the fashion cognoscenti to search out newer looks.'
The Wall Street Journal, in its imprecisely titled "Can Fashion Be Copyrighted?", p. B1 today, no free online version, discusses a proposal to grant fashion designs a three-year sui generis form of protection. Various designers, among them the knocked-off and the knockers-off, discuss copying. The article quotes Profs. Raustiala and Sprigman, as well as blog fave Susan Scafidi of Counterfeit Chic, who continues the discussion of the proposed legislation on her site.
I apologize for not reporting on this case earlier.
Defendants were a not for profit organization ("NFP") helping restaurant workers, and a restaurant owned by a workers' cooperative, in which the NFP had a 40% interest. The NFP protested Plaintiff's policies relating to its workers. The NFP created a hand-out that reproduced the Plaintiff's logo on the cover (the hand-out was folded). When opened, the text of the hand-out contained information about the organization's criticism of Plaintiff (the brochure identifies the NFP as the source and promoted the NFP's primary mission of helping restaurant workers - and makes no mention of the co-op restaurant).
A reproduction of the leaflet is here.
The hand-out was distributed near Plaintiff's establishment. Defendant acknowledged that the appearance was intended to induce passers-by to accept the leaflet and read it.
Plaintiff sued on trademark infringement and dilution. The Court denied the motion for preliminary injunction because plaintiff was unable to show irreparable harm; however the Court found that the plaintiff WAS likely to prevail on infringement, having shown a likelihood of confusion, basing its decision that defendant's use of the tradeamark initially confused passers-by and diverted them to use defendant's services, namely educating them in its viewpoint.
Prof. Goldman, in discussing this case, refers to it as a travesty and one of the five all time worst initial interest confusion cases of all time (I will be emailing him to obtain the complete list).
Read the case.
SMJ Group. et. al. v. 417 Lafayette Restaurant LLP, 06 CIV 1774 (SDNY July 6, 2006).
Prof. Madison reports on a proposal to move the Lanham Act from Title 15 of the U.S. Code to Tile 35. My initial reaction is: how could this ever matter? However, it is reported that Professor McCarthy opposes the move. If anyone has access to his position, please send it along.
Random House, publisher of the partly fictional memoir 'A Million Little Pieces,' has announced a settlement that involves refunds to buyers, but will require extensive documentation from buyers to prevent, uh, fraud.
Discourse.net discusses the possibility of libel in fictionalized accounts.
There is a brouhaha going on about a docudrama regarding 9/11, that will be aired by ABC (owned by Disney). I guess this 'logo' is a pretty good illustration of the fact the law does not protect against all forms of tarnishment. The logo was an illustration to editorial content from the Eschaton blog, discussing ABC's actions.
Questions for discussion:
Can NBC use the 'willful deception' logo to refer to ABC in its advertisements?
Can someone film a movie about the life of Walt Disney entitled 'Willful Deception' and use this logo?
Law.com: "Bankruptcy Judge Threatens $10M in Sanctions for Latham, Client" relating to Entrepreneur Magazine's actions after prevailing against EntrepreneurPR in trademark matter.
Virgina Postrel discusses her run-in with Marvel over Super Heroes, and suggests that perhaps IP lawyers can be protection-wise and free promotion-foolish. 43(b)log comments.
Super Hero background.
Fred Goldman has an unsatisfied $25.5 million judgment against O.J. Simpson arising from a wrongful death judgment relating to the murder of his son, Ron Goldman. Simpson has never paid any of the judgment.
Now Goldman is moving to take Simpson's 'publicity rights' in his name. Publicity rights are alienable (note Muhammad Ali's recent transaction) and descendable. Simpson apparently is still able to make some money signing autographs and there is still some value in his publicity right. Simpson's attorney is quoted as stating that there is no precedent for a 'seizure' of publicity rights.
Odd NY Lawyer article detailing trademark/contract dispute between Topps and former Argentinian licensee, allegedly using Topps' bubble gum recipe. Article indicates that Topps had sold the TOPPS name to the licensee awhile back. I don't know the background so I will only say 'hmmmm.'
