Lawgarithms On UMG v. MySpace
Lawgarithms (aka Denise Howell): UMG sues MySpace in a no-lose proposition, draws Grokster judge."
« October 2006 | Main | December 2006 »
November 30, 2006
And There You Have It, Apple's Position Re PODCAST
Clear and to the point. Apple doesn't claim rights in the term PODCAST used in relation to podcasts.
Not Safe For Work Depending On Where You Work
November 29, 2006
"Marchex May Have $24M In Trademark Domains"
Domain Name Wire: "Marchex May Have $24M In Trademark Domains" (Marchex being the owner of one of the larger domain name portfolios):
"David Kesmodel’s expose on domain company Marchex (NASD: MCHX) continues to dig up dirt. After discovering that the company was monetizing a number of trademark typos through its parking program, Kesmodel has now uncovered a number of potentially trademark-infringing domains that the company actually owns. These include ibmlaptops.com, ibestbuy.com, chasemortgagega.com, cheapdisneytickets.com and carnivalsinglescruises.com."
With regard to CHEAPDISNEYTICKETS.COM, I note in passing that there was a UDRP proceeding, Six Continents Hotels, Inc. v. Larry Goodwyn, in which CHEAP-HOLIDAY-INN-HOTELS-ACCOMODATIONS.COM was found to fairly describe a third party's use of the HOLIDAY INN mark, but see Disney Enterprise v. McSherry dba Florida Vacation Homes (DISNEYVACATIONVILLAS.COM registered in bad faith as defendant competed with Disney).
Disclaimed Too Late: Sixth Circuit Initial Interest Confusion Decision
Audi AG v. D'Amato dba Quattro Enthusiasts (05-2359) (6th Cir Nov 27, 2006) (AUDISPORT.COM infringes and dilutes AUDI).
Barney's Lawyers Pays Settlement After Using His Words
News.com: "Barney's legal threats end up extinct" (Barney's law firm settles suit brought by EFF on behalf of Barney commentary site - link to settlement agreement in article). Background here.
November 28, 2006
DMCA 'Circumvention' Exemptions
Librarian of Congress: Statement on Section 1201 Rulemaking (allowing six exemptions for the DMCA prohibition on circumventing anti-copying technology.
Copyright Term Extension For Sound Recordings in the UK?
Copyfight: "No 'Sergeant Pepper' Law in the UK"
Evidence Of Secondary Meaning In TV Catchphrases?
I confess that I have used the expression "Whachoo talkin' about Willis?" without ever having seen a single episode of "Diff'rent Strokes" (nor have I ever spelled 'different' as 'diff'rent') but I am aware where the phrase comes from.
Noted authority TV Land, is coming out with a special "The 100 Top TV Catchphrases." Purists will be annoyed that they have combined lines from comercials ("I Can't Believe I Ate The Whole Thing"), political expressions ("Read My Lips"), one time memorable lines ("I Don't Like Spunk") and what I would regard as true catchphrases, repeated phrases ("Aaay" or "D'oh!").
Ironists will note that Hank Kingsley's "Hey Now!" is on the list, as it is a parody of a catchphrase.
Moralists will note that two catchphrases on the list end in 'Bitch!', including Dave Chapelles' 'I'm Rick James, Bitch!", which, coincidentally, is how our firm signs its demand letters.
At least one phrase is the subject of an IP case, 'Here's Johnny!' Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir. 1983), which went off on rights of publicity. I'm sure there are more cases - please email me.
The question arises - if a catchphrase enters the lexicon, does that diminish or enhance its protectability? Does 'Where's The Beef?" signify Wendy's, or Walter Mondale, or does it have it's own significance at this point?
Note the trilogy above: does Homer's parody refer to Johnny Carson, or to Jack Nicholson, or to both?
Here's Johnny by Stephen Cox available here.
Here's Johnny by Ed McMahon available here.
November 27, 2006
Interview with Bob Gill, Author of 'Logomania'
WNYC interviewed Bob Gill, logo designer, and author of 'Logomania.' (podcast should be available here Tuesday). Mr. Gill discusses his process for coming up with successful logos.
November 24, 2006
Enough About My Brand, What Do You Think About My Brand?
NY Times: "What We Talk About When We Talk About Brands":
"Consumer brand companies have long wished they could find a way to eavesdrop (legally) on customer conversations. Marketers can easily read Internet blogs, chat rooms and social networking sites, but what people say over coffee or across their cubicle remains largely unknown."
November 22, 2006
Pottery Barn And Knock-Offs
Marektwatch: "Williams-Sonoma chairman says Pottery Barn unlike Pier 1" (discussion of Wall Street analysts' reaction to claim that copycats are hurting Pottery Barn sales.
November 21, 2006
Mobblog: The Piracy Paradox - Innovation in Fashion
They sell jeans for $1300? The University of Chicago hosts a virtual seminar on "The Piracy Paradox: Innovation and Intellectual Property in Fashion Design."
Trademark Rights On The Moon
KFC has unveiled a new logo. It has constructed an extra large version in the Area 51 desert in Nevada. It is claimed that this is visible from space. I read once that the Great Wall of China is the only man-made feature visible from space. Well, now there's two. If mere appearance of a mark in a jurisdiction constituted good trademark use, then this usage may give rise to protectable rights on the moon. However most jurisdictions require at least the potential to fulfill an order in that jurisdiction, if not an actual sales (this is why transmitting mere advertisements into a jurisdiction without more, is problematic for claiming rights). Therefore, someone might still be able to beat KFC to the moon.
"Why News Corp Won't Sue Google"
Bambi Francisco (Marketwatch): "Why News Corp Won't sue Google" (discussion of how integrated media companies such as News Corp, find themselves in conflict as both copyright owners and, as in the case of News Corp which owns MySpace, copyright 'fair users.'
November 20, 2006
One Bank, One Card, Two Demand Letters
NY Times article on the demand letter
A website named StereoGum hosted this video and attorneys for Universal sent a demand letter and posted a courtesy copy in the comments thread as well as a copy of Universal's letter to Bank of America (See the November 13 comments here for the text of the letter).
This is a pretty interesting fact pattern. The Times article quotes the singer to the effect that this was on the approved list of songs, so what is that about (maybe BA paid licensing fees?). If you buy into the 'parody uses the original work to comment upon the original work' theory, is this song a parody? If you don't buy into that theory, is this a parody? If someone filmed this without BA's approval, and uploaded it to YouTube without BA's approval, then does BA have exposure?
<
Popularity-Distortion Field
Digg.com is a news-site that uses 'social bookmarking.' Readers submit third-party stories and the most popular stories are displayed on the home page. According to this article, one of the most popular posts last week was a laudatory story about a company named InventionLand, an inventor-submission firm (every patent lawyer in the audience just groaned). If you're familiar with that genre, you are not surprised when I tell you that it is now claimed that the high placement of the article on Digg was due to a form of 'spamming,' in this case a concerted attempt by someone to deliberately promote the company.
People try to 'game' the algorithms of web services all the time. Word-stuffing, link farms, splogs and Digg-spamming are attempts to manipulate the results of various web processes.
Without referring to the specific news item mentioned above, might such attempts constitute torts? Two potential theories include (1) some species of false advertising, and (2) tortious interference with prospective advantage.
Might competitors have an unfair competition action against the 'gamer'? When web services erroneously over-report 'popularity' or 'relevancy' of a webpage, is that a material misrepresentation of a quality of the gamer's product?
Does the 'gamed' web service have a cause of action against the gamer (apart from breach of contract, if a contract existed)? Assume that a website such as Digg or Google base their reputation on the quality of their 'popularity' or 'relevancy' opinions. If the gamer, with knowledge of a web service's algorithms, takes acts to manipulate those opinions, which manipulation may result in damage to the web service's reputation, might this constitute some form of tortious interference with prospective advantage?
The above chart is a representation of the 'Digg Effect,' the onslaught of traffic caused by being 'dugg,' discussed here.
November 19, 2006
Wii And You
A collection of puns motivated by Nintendo's release of the WII platform, via Kottke.
November 17, 2006
Err On A G String
Procol Harum was named after the band's manager's cat and is almost the Latin for 'beyond these things' (the correct Latin would be Procul Harum). OK, now that we got that out of the way, "A Whiter Shade Of Pale" was released in 1967. Now they are fighting over it. Today's episode of SoundCheck on NPR discusses the creation of the song and the litigation, and plays the section of Bach's "Air On A G String" that is incorporated in the song (podcast available from NPR shortly).
Other People's Mail: YouTube Sends TechCrunch C&D
TechCrunch: "Huh? YouTube Sends TechCrunch a Cease and Desist."
More on CopyBot / SecondLife
This is a video illustrating how a cloning program works on SecondLife. What you are seeing is explained in whats seems to be the most comprehensive account of the CopyBot incident from New World Notes, including an interview with the people who wrote the original program.
IPTABlog discusses the CopyBot rampage on SecondLife and provides a round-up of comments.
November 16, 2006
If You're In Manhattan And Don't Have Plans This Evening
. . . and you want to ask me questions about law blogging, then you can come hear me speak at the NY County Lawyers Association downtown (Vesey and Broadway), from 6 to 8 (details here).
November 15, 2006
CopyBot Terrorizing Residents Of SecondLife, Caught On Video
We have been following SecondLife, a popular virtual world, which has been gaining traction as a demo site for 'real world' product roll-outs, 'remote' conferencing and the like. A key point is that the digital creations, such as the appearance of avatars (the digital representations of the users) and the structures, have real value, not only in the resources that were expended to create them, but in that they are being traded in SL for a currency, the Linden, that has a real exchange rate to the dollar. Vendors are beginning to bet significant sums on SL creations.
Many are therefore disturbed by this report on the Linden Labs (the proprietor of SecondLife) blog that a program named CopyBot has been distributed in SL allowing the copying of any creation within an avatar's proximity (sort of like the way the bad terminator in Terminator 2 could copy anyone he touched). Citing comments in the post thread, it appears that the significance of Copybot is that not only can it copy what is seen on the screen, but that it can copy underlying scripts that contribute to the item's appearance (such as a script that generates the texture of a surface).
Thus an avatar dress shop becomes as vulnerable to counterfeiting as any real garment enterprise.
Someone in the comment thread posted a link to a YouTube video (embedded above) that purports to demonstrate one avatar taking on the features of another.
As we noted previously, certain types of IP problems would actually be easier to enforce in a virtual world, in that users enter into terms of service that allow the proprietor to pull the plug on a user who has mis-behaved (sort of like the bad guy who unplugged his crew members in Matrix 1). Note this second post from SL indicating that ujse of CopyBot is a violation of the SL TOS.
However in this case, it seems that SL can't stop the distribution of the CopyBot program, nor tell quickly who is using it. One of the more interesting parts of SL's first post is its request for suggestions as to what to do (and take the time to read the comment threads in both posts).
Of interest is SL's remark in its second post that states "we are not in the copyright enforcement business." It articulates the various factors it has to take into account to make SL an attractive environment. However, to the extent that it wishes to continue to be the host to an exchange, it will find that successful exchanges must offer security not only to buyers but to sellers. If copyrightable material is going to be bought and sold on Second Life, then I'm not sure that the real world copyright regime is fast enough to solve problems like CopyBot. I think that SecondLife is going to have to get into the copyright enforcement business.
UPDATE: Lots of commentary on CopyBot.
November 14, 2006
Some People Claim That There's A Woman To Blame
Reuters: "Singer Buffett sues alleged trademark infringer."
FIGHTING SIOUX Sue
The NCAA attempted to prevent the University of North Dakota from continuing its use of FIGHTING SIOUX as the names of its athletic teams. UND has sued the NCAA, alleging that the NCAA breached its obligations to UND in the manner in which the NCAA has applied its 'Indian nickname' rule. UND has succeeded at the interim relief stage
This website alleges that while there was support for changing the name, a wealthy donor (after whom a UND arena was subsequently named) demanded that the name be kept.
November 13, 2006
3200 Billables A Year?
Yeah, I got out the calculator when I read that too. Note what the in-house folk have to say.
Sort Of Like.com
Like.com performs image searches - you can use a photo of something, such as a watch (or a watch-face) as a search term. The benefit is apparent - as people do shop in real life for 'shoes that have red straps' and that sort of thing. The potential for knock-offs coming up in results seems apparent as well. I put in some famous trademarks, as well as words such as INSPIRED and STYLE, as search terms, and didn't see any clear-cut infringements. Go play with it and see what you find.
NY Times article on Like.com here.
"The Farce Behind 'Digital Freedom'"
News.com: "Perspecitve: 'The Farce Behind 'Digital Freedom'" - Op-Ed on Consumer Electronic Associations' digital freedom campaign, written by Cary Sherman, president of the RIAA.
The Week In Law Podcast
Friends of the blog Denise Howell, Ernie the Attorney and Cathy Kirkman host a weekly podcast entitled 'The Week In Law." This episode's subject: IP issues raised by the purchase of YouTube by Google (after a little blogging inside baseball).
November 12, 2006
"A Defense of the New Federal Trademark Antidilution Law"
Cardozo professor and friend of the blog Barton Beebe has written "A Defense of the New Federal Trademark Antidilution Law," Fordham Intellectual Property Media & Entertainment Law Journal [Vol 16:1143].
You Say ALA I say BAMA
You say Infringement I say First Amendment.
Daniel Moore paints photorealistic paintings of Alabama football. The NY Times reports that the University of Alabama has now sued, alleging trademark infringement arising from his use of the Crimson Tide's Crimson. The article notes that Alabama had previously allowed Moore press access to the field (raising contractual issues), that Moore has been doing this for many years with great success (raising acquiesence issues), and that what seems to annoy Alabama the most is that Moore is now selling merchandise in addition to his paintings.
The online version of the article contains a slide show entitled "Art and the Law" which reproduces the subject work from the relevant Tiger Woods case and the Three Stooges v Saderup case. The Tiger Woods case seems particularly relevant here (although that case pitted Wood's right of publicity against the artist's First Amendment rights). In that case, an artist sold lithographs of winners of the Masters golf tournament. Many media entities weighed in with amici briefs in that matter, discussing the First Amendment aspects of that case.
Commentary on Moore case.
Commentary on Three Stooges / Saderup case.
Commentary on the Tiger Woods case from a University of Alabama professor.
November 11, 2006
All Your Snakes Are Belong To Us
NY Times (magazine section, not yet online): 'A Turn Of The Phrase" - making the argument that the 'Snakes On A Plane' phenomenon was similar to the 'All Your Base Are Belong To Us' pheonomenon, in that the phrase did not signify the underlying product but the 'disparate ensemble collaboration with one another on a separate work.'
November 10, 2006
Sex, Lies, and YouTube
This story, about controversial remarks made by Bill Maher, CNN's ediitng of those remarks, and the posting of the unedited original version on YouTube, has it all.
Brand New Blog Named BRAND NEW About New Brands
Brand New: Opinions on Corporate and Brand Identity Work, maintained by graphic design organization Under Consideration.
"Writers, Wills and Posthumous IP Care"
Copyfight discusses author Neil Gaiman's post on 'Writers, Wills and Posthumous IP Care."
November 09, 2006
Knockoff News
Counterfeit Chic's latest edition of Knockoff News.
Trademark Blog Live, Downtown Manhattan Nov 16
I will be a speaker on 'Upgrading Your Web Marketing,' Thursday November 16, NY County Lawyers Association, Vesey and Broadway.
The Counterfeit Blog Is Authentically Good
Florida IP litigator Leora Herrmann of the Kluger Peretz firm has debuted the Counterfeit Blog. Recent entries include a discussion of the CHEWY VUITON case, featuring Haute Diggity Dog.
November 08, 2006
"Lawyers Face Right To Blog"
I'm quoted in this Chicago Tribune article about potential regulation of blogging.
November 06, 2006
Guess The Logo
Ethiopia v Starbucks (SIDAMO and HARAR Coffee)
SIDAMO and HARAR are coffee growing regions in Ethiopia. It appears that those terms are widely used to refer to the beans grown in those regions. The Government of Ethiopia filed U.S. trademark applications for those terms. As far as I can discern from the PTO website, these are registrations for 'regular' registrations on the principal register and not for certification marks.
The applications have met descriptiveness objections (as the examiner turned up ample evidence of the terms being used not as trademarks but as descriptive terms). Additionally, Letters of Protest have been accepted by the PTO and communicated to the examiner, providing evidence that the terms are generic. As a procedural aside, a Letter of Protest is not an inter partes proceeding. It is an ex parte communication from a third party that is examined by the PTO before the information in it is provided to the Examining Attorney. I had trouble opening these massive (600+ pages) PDF documents on the PTO site, but they appear to contain evidentiary material about generic use of these terms.
Oxfam has now criticized Starbucks, alleging that Starbucks influenced a coffee trade association to obstruct the applications, and that the loss of these trademarks will cost poor Ethiopian farmers tens of millions of dollars. Some articles claim that Starbucks or the trade association has opposed the applications, which is not correct. I assume that it was the trade association that filed the Letters of Protest.
Starbucks has responded to Oxfam's allegations.
One thing that is not clear to me from the printed reports is why these applications are for conventional trademarks and not for certification marks.
I think we would need to understand the economics of the SIDAMO and HARAR bean markets to appreciate precisely what is going on. The proposition that opposing trademark protection hurts the Ethiopian farmers would be supported by two different arguments. The first is that the existence of the trademarks (any type of trademarks) for these names, would benefit the farmers because it would allow the trademark owner to police against beans grown outside of Ethiopia from using those names.
The second argument is a two-edged sword. Anyone who owns these marks will be able to cartelize the growers, for better or worse. If the names are owned as trademarks by the Ethiopian government, or, if the names became certification marks where the certifying procedure was controlled by the Ethiopian government, then the government would be able to control which growers in those regions could use the terms. The Ethiopian government might be able to prevent certain growers from using the terms, even if they grow beans in those regions.
Ownership of geographical terms as conventional trademarks have resulted in attempts to prohibit truthful (but competitive) use of the term as a geographic indicator, so the fear that growers within the regions may not be allowed to use the terms, would not be unfounded (see disputes relating to CHIHUAHUA cheese and TILLAMOOK cheese).
Here is the US PTO's discussion of geographical indicators and certification marks.
STRIP HOUSE v STRIP STEAK (On The Strip)
WSJ Law Blog: "How Dare You Copy Our Goose Fat Fried Potatoes" (Owner of STRIP HOUSE protests use of name STRIP STEAK and trade dress in Las Vegas).
November 03, 2006
Answers To Our Tribute Band Question
The not always responsive answers to our question: 'is there such a thing as an authorized tribute band (other than Beatlemania)?' pour in.
Larry S. advises us of rasta metal band Dread Zeppelin, and points out that Robert Plant, at least, speaks favorably of them.
Eva R. advises us of a CTM registration for ABBA MANIA, which doesn't appear to be owned by Abba.
Peter I. advises us of the PINK FLOYD EXPERIENCE, which is produced by a company also responsible for BJORN AGAIN, another Abba tribute. However we can't find any indication that it is authorized by Pink Floyd.
Special Free Offer of Legal Advice: If you are a tribute band that will perform the music of XYZ, and you want to name yourself the XYZ Anything, without the authorization of the owner of the XYZ name, I will advise against it.
I Just Go On And On About Trademarks In This Podcast
I'm interviewed for the Podcast Brothers' podcast about securing and protecting trademark rights, specifically for podcasts. I do go on.
November 02, 2006
Tribute Brands and Authorized Touring Companies And Phish
Well there was a big chunk of afternoon.
I picked up the flyer pictured above, at lunch. I have never been to see a tribute band. Glenn has been to see Dark Star Orchestra and Dire Wolf.
We'll ignore the copyright issue in the flyer other than to say 'it's better not to reproduce copyrighted artwork.'
The trademark issue is interesting. The use of a hit song title (or famous lyric) as the name of a tribute band, doesn't really suggest endorsement by the original artists - in fact the argument can be made that such use is exactly interpreted by the public to suggest a tribute band. In an odd way, a name such as TRAMPS LIKE US is a suggestive mark, as it suggests a quality of the service (namely that the band plays Springsteen songs).
As to the big use of the name SPRINGSTEEN, it certainly might get someone to pick up the flyer, but would someone think that Springsteen is appearing at a bar in White Plains (did I ever tell you that I saw Springsteen at a party, once?). Would they think that this was an 'authorized' tribute band?
That led to a spirited conversation within the office as to whether in the history of the world, there has ever been a licensed tribute band (see post below), and if there has never been, could anyone ever go to see a tribute band in the mistaken belief that the band was endorsed by the original artist, given that no such band had ever existed.
It was also wondered whether there has ever been an authorized Elvis Impersonator and how close you can come to Elvis' look without rights of publicity kicking in (did I ever tell you I saw Robert Gordon do 'Blue Christmas' at the Lone Star in 1983?).
Which led to a spirited discussion as to whether a band, dismayed by the low quality of its tribute bands, would ever want to send out a 'touring company' of itself.
While led to the observation that touring companies of plays need to be authorized because there is no such thing as a compulsory license for the book of the play, however could you do a 'tribute' version of a musical without its book or choreography?
Which led to a remembrance of Robert Stigwood Group v. Sperber, 457 F.2d 50 (2d Cir 1972), which held that an unauthorized performance of songs from ' Jesus Christ Superstar' could be prohibited if the performance 'evoked' the dramatic work, by playing more than a few songs in the original sequence, and if the artists performed in the 'roles' of the original work.
Which led to the comment that a Who tribute band could do 'Tommy' in reverse order but not in correct order (and momentary contemplation of what 'Tommy' played in reverse order would sound like).
Which led to a remembrance of Phish performing 'Quadrophrenia' in its entirety in 1995 (which performance was released on CD in 2002). Which CD we had on hand and then played.
Question For You Re Tribute Bands
With the exception of Beatlemania, in the history of the world has there been such a thing as a licensed/endorsed/official tribute band?
This Is Not What Is Meant By Reverse-Domain Hijacking
Cybersquatters risk punitive damages of $100,000 per name to divert traffic through use of a confusingly similar domain name. Universal Tube of Pennsylvania, which sells machines for making metal tubes, owns the domain name UTUBE.COM. It received 65 million hits in August, most of them, no doubt, intended for YouTube. And is it happy? No.
Universal Tube is now suing YouTube for the costs it is incurring getting slammed by all that traffic. Apparently very few people looking for LonelyGirl videos can be converted into customers for tube-making machinery.
November 01, 2006
Ouch
Someone asked on the INTA discussion list: how much does a survey for use in litigation cost and someone replied:
"Just did a likelihood of confusion survey conducted over telephone with
137 professional respondents and the cost was $48,000. Does not include
any depositions or trial testimony."
The deposition or trial testimony referred to is where the other side calls your survey expert names.
Note to people who haven't had the pleasure of commissioning litigation surveys - phone surveys tend to cost less than the face to face surveys that involve printed materials.