"Surf Music, Hip-Hop, Race and Copyright"
Prof Patry: "Surf-Music, Hip-Hop, Race and Copyright."
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October 31, 2006
"Federal Trademark Dilution Law Overhauled"
New York Law Journal: 'Federal Trademark Dilution Law Overhauled.'
'MYSpace Cracking Down On Illegal Music Uploads'
Reuters: 'MySpace cracking down on illegal music uploads.'
Best WSJ Correction So Far This Week
From today's Wall St Journal's 'Corrections & Amplifications':
A drawing of Melvyn Weiss, a partner of Milberg, Weiss, that accompanied an article Friday . . . incorrectly identifed him as Milberg Weiss . . ."
October 30, 2006
Googlin'
Pretty entertaining communication from Google re use of Google as a verb here.
Feet Off The Sofa.
We need to get a sectional for the family room but I'm worried that the dogs will chew it up. My wife suggests that we get a small transmitter that works with the 'invisible fence' system, but I'm skeptical. Also the kids still need to be reminded not to eat ice cream on the sofa.
So there's no way we would get a POLTRONA FRAU sectional, pictured above. In any event, there's an article in today's Wall Street Journal discussing how the owners of this Italian luxury brand, is teaming with two other luxury brands to create a new listed company, in order to emulate the multi-luxury brand strategy of a LVMH or Richemont.
October 28, 2006
Trade Dress of Chair
"Saturday Morning Cartoons"
Counterfeit Chic: "Saturday Morning Cartoons" (trademark related videos on YouTube)
"Jimi Hendrix Steals the Show At IP Auction"
WSJ Law Blog: 'Jimi Hendrix Steals the Show At Intellectual Property Auction' (patents, trademarks, and copyrights - including the (disputed) rights to the Jimi Hendrix catalog - sold at auction).
All Daily Show, Colbert and South Park Clips Off YouTube
Alias GooTube
Not surprised that someone registered the domain name GOOTUBE.COM.
October 26, 2006
"How Your Client Can Keep You as Defense Counsel . . ."
October 25, 2006
Counterfeit Chic On Post-Sales Confusion
Counterfeit Chic: "Steal This Post."
October 24, 2006
Second Dilution/Political Speech Case In Two Days
A Texas environmental group created a float (depicted above) showing the Texas governor kissing a smokestack that bears the trademark of TXU, a utility that intends to build coal-powered generating plants.
TXU has now alleged that use of its logo on the smokestack is infringement and/or dilution.
Not Responsible For Broken Windshields
October 23, 2006
Protest To Use Of Premiership Goals
BBC: "Goal Footage Warning For Website" (website hosting video footage of soccer goals protested by Premier League in UK).
Railroad Alleges Dilution By Law Firm's Commissioned Painting
A law firm representing railroad workers commissioned, among others, the image above, which depicts a Burlington Northern Santa Fe train. BNSF protested the usage alleging dilution. Demand letters and response linked to in this article from Public Citizen Litigation Group (which is representing the law firm).
Political False Advertising Fact Pattern
Phone records of candidate for office (a district attorney, running for congress) shows call to 'fantasy sex' phone line, lasting 1 minute or less. A second call is then made immediately to a similar phone number belonging to a government office, which number shares last seven digits with the first phone number.
National political party of opponent runs ad characterizing first call as deliberate (including dramatization of phone sex worker).
Candidate releases phone records of the two calls, and states that the first call was a wrong number.
National political party refuses to pull ad.
Discuss possible causes of actions by candidate.
Discuss possible defenses available to political party relating to (1) broadcast of ads before public release of phone records; and (2) broadcasts made after release of phone records.
Note that statements that are literally true, but misleading in the context presented, may be actionable.
Discuss impracticality of court remedy two weeks before election.
Discuss ban on 'coordination' between national political parties and local candidates (some background here).
Background on fact pattern here here.
Political False Advertising Fact Pattern
Phone records of candidate for office (a district attorney, running for congress) shows call to 'fantasy sex' phone line, lasting 1 minute or less. A second call is then made immediately to a similar phone number belonging to a government office, which number shares last seven digits with the first phone number.
National political party of opponent runs ad characterizing first call as deliberate (including dramatization of phone sex worker).
Candidate releases phone records of the two calls, and states that the first call was a wrong number.
National political party refuses to pull ad.
Discuss possible causes of actions by candidate.
Discuss possible defenses available to political party relating to (1) broadcast of ads before public release of phone records; and (2) broadcasts made after release of phone records.
Note that statements that are literally true, but misleading in the context presented, may be actionable.
Discuss impracticality of court remedy two weeks before election.
Discuss ban on 'coordination' between national political parties and local candidates (some background here).
Background on fact pattern here here.
They Grow Currants In New York?
"New Era Of The Recipe Burglar"
Food & Wine: "New Era of the Recipe Burglar" (discussion of protectability of food creations - including interview with Homaro Cantu of MOTO in Chicago).
Second Life Watch: Use In Commerce?
Second Life's economy, estimated to be $500k a month, is now the subject of a congressional investigation as to whether taxes are being paid on transactions being conducted on the site.
Second Life branding magazine here. HT Becky.
Second Life background here.
Be Prepared: Boy Scout Copyright Badge
AP: "Be Loyal, Kind and Don't Steal Movies" (Boy Scouts adopt copyright protection badge). Ht Volokh.
October 21, 2006
And The Name Of The Elephant In The Room Is Miscegenation
In 1934, Upton Sinclair, 'muck-raking' novelist, was the Democratic candidate for governor of California. Sinclair had previously run for office as a socialist, and Sinclair referred to his platform as the EPIC movement: End Poverty In California.
The opposition defined Sinclair as a communist. Some in the movie industry filmed actors getting off of box cars. The footage was presented to movie audiences as authentic film of hobos migrating to California, in anticipation of receiving hnad-outs, should Sinclair win.
Sinclair was defeated.
Here is an that the Republican National Committee is running in Tennessee that criticizes the Democratic candidate, Harold Ford. The blurring of the line between person-in-the-street testimonials, and actors reading scripted lines is, to put it mildly, troubling.
October 20, 2006
Does Buying Keywords Constitute Trademark Use? Yes and No and Yes and No
Prof Goldman reviews the latest case, Buying for the Home, LLC v. Humble Abode, LLC, 03-CV-2783 (JAP) (DNJ Oct 20, 2006), and, noting that recent cases have been alternating in their holdings, confidently predicts that because this case held that keyword buying is use in commerce, the next such case will hold that it is not a use in commerce.
Last month's contradictory result here.
"YouTube Erases 29,549 Clips On Japan Media Demand"
SPRINGFIELD WILDCATS v. SHELBYVILLE WILDCATS
OK, Springfield Wildcats vs. Shelbyville Wildcats is a gag from The Simpsons, but, as is always the case with The Simpsons, there is a profound truth hinted at here, involving the coexistence of scholastic team names.
The Des Moines Register tells us of a dispute between the University of Wisconsin and the Waukee High School, over the use of a W logo. A couple of years ago I was interviewed by a collegiate licensing magazine and I said many brilliant things about how the Internet and regional sports cable channels, as well as more aggressive scholastic licensing programs, were upsetting the delicate balance that allowed college and high school teams to coexist with similar names without confusion. I have located the article which ran none of that good stuff but merely went with my commonplace quotes (pick a good trademark - great advice).
I can't remember exactly what I said so I will defer to Madisonian.net for its own proposed rule for college/high school dispute resolution. And btw, their Badger Badger Badger title is a reference to a cartoon as well.
Next Year
October 19, 2006
NY Times On Second Life
NY Times (reg req): "A Virtual World But Real Money" reporting on the use of Second Life as test-bed for corporate marketers including Sony, Nissan, Aididas, Reebok, Toyota and Starwood.
The article also notes the beginning of trademark infringement in Second Life, an issue discussed by The Trademark Blog here.
Speechless
WuMart Everyday Low Price
The WSJ ran its regular article on trademark piracy in China today. In this crop was HONGDA Motorcycle, ROEWE Cars, CHERY cars, REDBERRY hand-held communications devices and WUMART retail stores, which feature every day low prices.
October 18, 2006
Copyright Protected Area
Cachacha in Your Caipirinha?
Trade and Environment Database Study 721: Brazilian Cachaca. HT Brad deLong.
"Should Publications Be Liable For Running Fraudulent Ads?"
WSJ Law Blog: "Should Publications Be Liable For Running Fraudulent Ads?
October 17, 2006
Universal Music v. Grouper and Bolt.com
Universal Music sues video-sharing sites Grouper and Bolt.com for copyright infringement, which, at $150,000 a pop, could add up.
Ringtones Subject To Compulsory Copyright License
Prof Patry explains why the cost of ringtones may go down as a result.
'The Small Print Project' Museum Of Adhesion
A student at USC has put together 'The Small Print Project,' a collection of electronic contracts of adhesion, with commentary. The purpose of the project is:
" . . . to document experiences — both good and bad — presented by the millions of EULAs (End User Licensing Agreements) as they are both designed and encountered, knowingly or otherwise. This project will only last 8 weeks or so as an academic endeavor, however, this site is designed with the hopes of fostering discussion, suggestion, exposition and implementation of EULAs (electronic and otherwise) in an effort to help define, describe and mediate the nature of agreements in the digital age."
and, perversely, to serve as a forms file. HT Boing Boing.
I'm reminded of the time I reviewed a contract with an inexpertly drafted cross-indemnification clause. As far as I could discern, in the event of dispute, each side paid the other side's legal fees. True story.
October 16, 2006
STARBUCKS v STARPREYA: How Close You Can Come in Korea
Not referring to nuclear brinkmanship. How close you can come to the look and feel of a trademark in South Korea without infringing that trademark. You can come this close.
IPKat comments here.
October 15, 2006
UTube's Problem With YouTube
Universal Tube owns the site utube.com, and has had a recent increase in traffic.
October 13, 2006
LVMH v. eBay
BusinessWeek: 'Fed Up With Fakes' (LVMH sues eBay).
MYFLORIDA.COM v. MYFLORIDA411.COM
Daytona Beach News Journal: 'Domain Woes Pain In The Head' (mediation over registration of MYFLORIDA411.com).
October 12, 2006
PRC: PLAYBOY v. PEARLBOY
BBC: 'Playboy sues over China bunny.' HT Ed.
"Germany: Trademarks As Meta Tags"
From Lovells September 2006 newsletter: "Germany: Trademarks As Meta Tags" (discussion of German Supreme Court decision re whetherunauthorized use of a trademark as a meta tag constitutes infringement in Germany (yes)).
New Ethiopia Trademark Law
From NJQ & Associates: Ethiopia Trademark Registration and Protection Proclamation
October 11, 2006
Deceptive Mailings Prevention Act
I include the following boilerplate when I provide clients with filing receipts of their trademark applications:
Your application is a matter of public record. Some companies, often using names including terms such as AGENCY, RIGHTS or CENTER, utilize the public database in order to send solicitations to applicants, These solicitations sometimes resemble official notifications. As your agent of record, our firm receives any official notification that would require a response.
I include this language because my clients are sufficiently worried by the official-looking correspondence that they regularly ask me to confirm their inclination that this is a scam.
The practice of sending 'government look-alike mail' is widespread enough that there is a Deceptive Mailing Prevention Act.
"'Heroes' Lawsuit Down The Drain"
E! Online: "'Heroes' Lawsuit Down the Drain" (Manufacturer of in-sink disposal objects to depiction of product in NBC show 'Heroes' - a super hero character displays prowess by placing her in hand in said disposal). HT Nerdlaw.
Some background here.
Reactions to Revised Dilution Law
Sorry Mac, MacCoffee Too Close to McCafe
Fred von Lohmann on YouTube/Google
Jellyfish Swim Vertically In Nature
Mountain Lions perch on rocks with their young in their mouths. T-Rex opened their mouths to eat things. Prof Patry discusses unprotectable ideas from nature and expert testimony.
October 10, 2006
SHOOX v. NIKE SHOX in Argentina
From the August 15 INTA newsletter comes a report of a May decision in Argentina in which the owner of SHOOX for Class 25 items successfully cancelled Nike's Class 25 registration for NIKE SHOX. The Federal Court of Appeals noted that a second comer may not overcome a challenge when adopting a confusingly similar mark simply by appending its famous house mark.
Trademark Art
Edward Ruscha, "Large Trademark With Eight Spotlights," 1962.
"Spamhaus Domain Name May Be Suspended"
ZDNet.co.uk: 'Spamhaus domain name may be suspended"
October 09, 2006
Rosa Parks As Licensing Property
NY Times article on Rosa Parks, and the marketing of her persona by CMG.
They Signed You Dilution Bill, Now You're A Law
Bush signed the Dilution bill on Friday. Lyrics to 'I'm just A Bill' here.
Trademark Dilution Revision Act of 2006 (Enrolled as Agreed to or Passed by Both House and Senate)
--H.R.683--
H.R.683
One Hundred Ninth Congress
of the
United States of America
AT THE SECOND SESSION
Begun and held at the City of Washington on Tuesday,
the third day of January, two thousand and six
An Act
To amend the Trademark Act of 1946 with respect to dilution by blurring or tarnishment.
Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
(a) Short Title- This Act may be cited as the `Trademark Dilution Revision Act of 2006'.
(b) References- Any reference in this Act to the Trademark Act of 1946 shall be a reference to the Act entitled `An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes', approved July 5, 1946 (15 U.S.C. 1051 et seq.).
SEC. 2. DILUTION BY BLURRING; DILUTION BY TARNISHMENT.
Section 43 of the Trademark Act of 1946 (15 U.S.C. 1125) is amended--
(1) by striking subsection (c) and inserting the following:
`(c) Dilution by Blurring; Dilution by Tarnishment-
`(1) INJUNCTIVE RELIEF- Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.
`(2) DEFINITIONS- (A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:
`(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
`(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.
`(iii) The extent of actual recognition of the mark.
`(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
`(B) For purposes of paragraph (1), `dilution by blurring' is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:
`(i) The degree of similarity between the mark or trade name and the famous mark.
`(ii) The degree of inherent or acquired distinctiveness of the famous mark.
`(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
`(iv) The degree of recognition of the famous mark.
`(v) Whether the user of the mark or trade name intended to create an association with the famous mark.
`(vi) Any actual association between the mark or trade name and the famous mark.
`(C) For purposes of paragraph (1), `dilution by tarnishment' is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.
`(3) EXCLUSIONS- The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:
`(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services, including use in connection with--
`(i) advertising or promotion that permits consumers to compare goods or services; or
`(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.
`(B) All forms of news reporting and news commentary.
`(C) Any noncommercial use of a mark.
`(4) BURDEN OF PROOF- In a civil action for trade dress dilution under this Act for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that--
`(A) the claimed trade dress, taken as a whole, is not functional and is famous; and
`(B) if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks.
`(5) ADDITIONAL REMEDIES- In an action brought under this subsection, the owner of the famous mark shall be entitled to injunctive relief as set forth in section 34. The owner of the famous mark shall also be entitled to the remedies set forth in sections 35(a) and 36, subject to the discretion of the court and the principles of equity if--
`(A) the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment was first used in commerce by the person against whom the injunction is sought after the date of enactment of the Trademark Dilution Revision Act of 2006; and
`(B) in a claim arising under this subsection--
`(i) by reason of dilution by blurring, the person against whom the injunction is sought willfully intended to trade on the recognition of the famous mark; or
`(ii) by reason of dilution by tarnishment, the person against whom the injunction is sought willfully intended to harm the reputation of the famous mark.
`(6) OWNERSHIP OF VALID REGISTRATION A COMPLETE BAR TO ACTION- The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register under this Act shall be a complete bar to an action against that person, with respect to that mark, that--
`(A)(i) is brought by another person under the common law or a statute of a State; and
`(ii) seeks to prevent dilution by blurring or dilution by tarnishment; or
`(B) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.
`(7) SAVINGS CLAUSE- Nothing in this subsection shall be construed to impair, modify, or supersede the applicability of the patent laws of the United States.'; and
(2) in subsection (d)(1)(B)(i)(IX), by striking `(c)(1) of section 43' and inserting `(c)'.
SEC. 3. CONFORMING AMENDMENTS.
(a) Marks Registrable on the Principal Register- Section 2(f) of the Trademark Act of 1946 (15 U.S.C. 1052(f)) is amended--
(1) by striking the last two sentences; and
(2) by adding at the end the following: `A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), may be refused registration only pursuant to a proceeding brought under section 13. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), may be canceled pursuant to a proceeding brought under either section 14 or section 24.'.
(b) Opposition- Section 13(a) of the Trademark Act of 1946 (15 U.S.C. 1063(a)) is amended in the first sentence by striking `as a result of dilution' and inserting `the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment'.
(c) Cancellation- Section 14 of the Trademark Act of 1946 (15 U.S.C. 1064) is amended, in the matter preceding paragraph (1) by striking `, including as a result of dilution under section 43(c),' and inserting `, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 43(c),'.
(d) Marks for the Supplemental Register- The second sentence of section 24 of the Trademark Act of 1946 (15 U.S.C. 1092) is amended to read as follows:
`Whenever any person believes that such person is or will be damaged by the registration of a mark on the supplemental register--
`(1) for which the effective filing date is after the date on which such person's mark became famous and which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c); or
`(2) on grounds other than dilution by blurring or dilution by tarnishment, such person may at any time, upon payment of the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director to cancel such registration.'.
(e) Definitions- Section 45 of the Trademark Act of 1946 (15 U.S.C. 1127) is amended by striking the definition relating to the term `dilution'.
Speaker of the House of Representatives.
Vice President of the United States and
President of the Senate.
[Predictable Pun On 'Scents' Here]
U.K. declines to extend copyright protection to perfume scent. Counterfeit Chic discusses.
Prior discussion of protection of scent in the Netherlands, France, and OHIM here.
The Morning Papers
NY Times: 'No-Name, Brand-Name or Phony: It's All Here' (Manhattan - Broadway and 32nd).
NY Times: 'A Slippery Slope of Censorship at YouTube' (Difficulties in monitoring content at YouTube).
Wall Street Journal: 'Louis Vuitton Tries Modern Methods On Factory Lines' (no free online version) (Updating manufacturing methods for luxry goods).
October 06, 2006
Are KittyWrap Licenses Enforceable?
Legal Tags discusses the license agreement that comes with genetically modified kittens.
Doctrine Of Eternal Fair Use
Madisonian.net discusses whether Nietzsche Family Circus, which pairs a randomized Family Circus cartoon with a randomized Nietzsche quote, is fair use.
District Court: PTO Abused Discretion Re LAST BEST PLACE
October 05, 2006
Hormel's CTM App. For SPAM For Spam Rejected
The Register: "Hormel loses bid for spam trademark."
Award of Both Patent And TM Damages Impermissible Double Recovery
Patently-O: "Jury Award of Both Patent and Trademark Damages Was Impermissible Dobule Recovery" ($6.8 million award against Wal-Mart knocked down to $5.9m).
Get The Knack Of Copyright Statute of Limitations
If you grew up in Queens, New York, then you have a soft spot for Run-DMC, if for no other reason than they recorded a song entitled "Christmas In Hollis." They also recorded a song called "It's Tricky" which was a hit in 1985. 'It's Tricky' sampled 'My Sharona,' the one hit for one hit wonders, The Knack. The Knack claims to have missed the first twenty years that 'It's Tricky' was around, and now have sued Run-DMC, and Apple (which sells the song on iTunes), and some others, for copyright infringement, in the UK.
I encourage copyright statute of limitation experts (and UK copyright experts) to email me because I'm a little puzzled by the statement in the article that The Knack missed the three year statute of limitations in the U.S. My understanding of the US statute is that you have three years from the last infringement. If iTunes is still selling the song (which is the case), then the infringement is on-going in the U.S. However, as Prof Patry notes, the damages may be limited to only the past three years. That may be why the suit is in the UK. Please advise.
Apple Claims Ownership Of The Letter 'I'
Ok, not really. Background here. HT JL.
October 04, 2006
Coach Sues Target For Counterfeiting
October 03, 2006
You Can't Make Up This Kind Of Irony
Congratulations to the Foley Hoag firm, which won the exclusive right to be called FOLEY,
today.
COCAINE Redux
First shoe drops: "Drink Called 'Cocaine' Infuriates New York Mayor." Background here.
Answer to anticipated email: I supose, because OPIUM perfume isn't targeted at kids.
Answer to a different anticipated email: All I could find was one registration for GOD MADE MARIJUANA for shirts and hats, but I didn't every single drug name.
Addendum: HT to SB for reminding me of In re Hepperle, 175 USPQ 512 (TTAB 1972), in which ACAPULCO GOLD was held to be registrable for suntan lotion.