Why are there not more decisions regarding the trade dress of a web page? Is it because copyright preempts most such claims? Magazine covers have been awarded trade dress protection,Time Inc. v. Globe Communications Corp., 712 F.Supp. 1103 (S.D.N.Y. 1989), why not web pages? (I’ve been puzzling about the trade dress of magazine covers for a while).
Any way, the Western District Court of Washington has upheld a Motion to Dismiss a trade dress claim for a webpage, ruling that at this stage of the litigation, the copyright claim will not preempt the trade dress claim (link to the decision in this post from the Seattle Trademark Lawyer).
From Footnote 8:
” As a novel theory legal, there are more articles supporting trade dress protection for the “look and feel” of websites than there are published cases deciding the merits of this theory. See G. Peter Albert, Jr. & Laff, Whitesel & Saret, Ltd., Intellectual Property Law in Cyberspace 198-99 (1999 & Supp. 2005) (“One of the next conflicts to arise between the Internet and trademark law is likely to be the question of whether a Web page contains elements protectable as trade dress. . . . Trade dress protection of Web pages has yet to be the central issue in an infringement claim.”); Xuan-Thao N. Nguyen, Should It Be a Free For All? The Challenge of Extending Trade Dress Protection to the Look and Feel of Web Sites in the Evolving Internet, 49 Am. U.L. Rev. 1233, 1276-77 (2000) (“The purpose of Section 43(a) of the Lanham Act is to protect consumers from being deceived as to the source of a product or service. To fulfill that purpose, it is logical to extend trade dress protection to the overall look and feel of web sites that are inherently distinctive or have acquired secondary meaning and are non-functional.”); Jason R. Berne, Comment, Court Intervention But Not In a Classic Form: A Survey of Remedies in Internet Trademark Cases, 43 St. Louis L.J. 1157, 1172 (1999) (“One as yet barely broached area of Internet trademark litigation involves trade dress of a website. In such a case, a plaintiff may claim that the defendant has in some way infringed on the ‘total image and overall appearance’ of a site, rather than one single trademark. Although no cases of trade dress infringement of a website have been reported, at least one claim has been filed on this basis.”).
Trade Dress basics.
Registrars reserve powerful rights to de-register domain names belonging to registrants who have violated the terms of service agreement. They tend not to, in the absence of a court order. It turns out that GoDaddy does, here in the case of a website that was making available lists of MySpace usernames and passwords.
One domain name industry site is calling this a PR nightmare for GoDaddy. GoDaddy might, however, be able to pick up some business from the people who had their usernames and passwords published.
GoDaddy’s CEO maintains a blog, and we hope he comments on this.
Facts: Masquelier invents a process for deriving a natural extract, and sells it in France under the PYCNOGENOL name. Horphag sells the product in the US under contract with Masquelier. They have a falling out and Horphag obtains the US registration in his own name. Garcia, a new distributor for Masquelier, begins selling a competing party in the U.S. Horphag sues Garcia for trademark infringement and dilution after Garcia reproduces the PYCNOGENOL name in several problematic ways (for example, as a meta-tag).
In his defense to the dilution cause, Garcia argues in part that the fame of the PYCNOGENOL mark in the U.S. (it is apparently a best-selling suppement) derived from Masquelier’s original work. Here is the Ninth Circuit analysis:
“Garcia also challenges Horphag’s dilution cause of action
by claiming that he should not be liable for trademark dilution
when the Pycnogenol trademark had already been diluted
prior to his use. In Garcia’s opposition to summary judgment,
he argued that the “famousness of [Horphag’s] ‘Pycnogenol’
is derived from . . . [and] rel[ies] upon the famousness of the
Masquelier ‘Pycnogenol.’ ” He appears to raise the same issue
on appeal by arguing that Horphag is capitalizing on Masque-
lier’s good will and popularity, rather than the other way
We disagree. Garcia has not presented any evidence show-
ing that the Masquelier’s product enjoys any fame in the
United States that is independent of Horphag’s Pycnogenol
mark. It is Horphag’s product that is a “buzz item” in the
United States, not Masquelier’s. It is Horphag that has
invested in research and marketing to increase the “famous-
ness” of its product in this country, not Masquelier. Hor-
phag’s Pycnogenol trademark is famous not because of a
French product, but because of Horphag’s own investment in
advertising, research, and quality control.
COMMENT: It’s interesting how the Court is looking out at fame. At least the first six years of Horphag’s use in the U.S. was ‘under contract’ with Masquelier. We don’t know precisely how Horphag was able to register the name in 1993 under his own name. One would have to assume that during that prior to that time, however, Horphag, as a distributor, would have identified Masquelier as the source of the product in some way (at least to promote him as the inventor). From a ‘moral’ point of view, Horphag’s fame may well rest on a foundation created by Masquelier. From a trademark dilution point of view, it may be completely correct to say that today, no one in the U.S. is aware of MAsquelier’s role in creating PYCNOGENOL.
PRACTICE POINT: NEVER LET YOUR FOREIGN DISTRIBUTORS OWN YOUR TRADEMARK!
PRACTICE POINT #2: Repeat after me: “ALL USE OF THE MARK INURES TO THE USE AND BENEFIT OF LICENSOR.”
international Herald Tribune: “China Suit In China Called Opening Salvo In Media War”
“A lawsuit that has been filed by one of China’s largest newspapers against one of the country’s leading Internet portals over the issue of massive copyright violations is being described here as the opening salvo in a media war.
In the suit, which was filed in October and is expected to go to court soon, The Beijing News is seeking $400,000 in damages from a popular Internet site called Tom.com for having copied and republished more than 25,000 articles and photographs without authorization since 2003.
. . .
Very gradually, an awareness also seems to be taking hold that China’s companies must build strong brands of their own to be successful, and that this cannot be accomplished in an environment where copying goes unpunished.
“To enhance the country’s development we are trying to encourage innovation,” said Xu Chao, vice director of the National Copyright Bureau.
“We are placing more emphasis on intellectual property and have made improvements in the law. It used to be possible for traditional media or Internet media to simply copy each other’s work, but now this has been forbidden.”
Moronland.net: “Top 13 Worst Slogan Translations Ever” Most of these have been around a while but still worth the 30 seconds.
Note to Trademark Attorneys in non-English speaking jurisdictions: We will happily advise if your client’s trademark translates into an obscenity in English.
Kahle v. Gonzalez, 9th Cir January 22, 2007:
“Each Plaintiff provides, or intends to provide, access to works that allegedly
have little or no commercial value but remain under copyright
protection. The difficulty and expense of obtaining permission
to place those works on the Internet is overwhelming; owner-
ship of these “orphan” works is often difficult, and sometimes
impossible, to ascertain.
Prior to 1978, the number of orphaned works was limited
by the renewal requirement. Renewal served as a filter that
passed certain works — mostly those without commercial
value — into the public domain. Along with formalities such
as registration and notice (which have also been effectively
eliminated), renewal requirements created an “opt-in” system
of copyright in which protections were only available to those
who affirmatively acted to secure them. The majority of cre-
ative works were thus never copyrighted and only a small per-
centage were protected for the maximum term. ”
Discussion by Prof Patry here.
Our offices are located in Mt. Kisco. The next town up is Bedford Hills and then Katonah. Katonah, named after an Indian chief, has a nice art museum. The houses are a little more affordable than in mid-Westchester, but the commute to the city is long (definitely over an hour). Martha Stewart is usually reported as living in Bedford (really big properties) but apparently she lives in Katonah.
Her company has now filed several applications for the mark KATONAH covering various housewares.
If the examiner had uncovered information suggesting that Katonah is known as a source of housewares, which it isn’t, then the application would have been in trouble. In this case, it gets an office action that says:
“Applicant must specify whether the mark has any significance a specific field, trade or industry, or any geographical significance, or any meaning in a foreign language. 37 C.F.R. §2.61(b).
Specifically, Applicant must indicate specifically whether the goods will be manufactured, produced or sold in, or will have any other connection with, the geographic location named in the mark. 37 C.F.R. §2.61(b); TMEP §1210.03. See attached article noting that Martha Stewart lives in Katonah, New York. ”
So then Applicant has to respond:
“Katonah is a town in New York which serves as the inspiration for the design of the goods intended to be sold under the mark. The goods will not be manufactured or produced in Katonah.”
And the application is approved for publication, where Katonah resident Terry McAulliffe (Hi Terry! Remember me? I did about three seconds of work on a matter for you when you were at Nynex, about 17 years ago) notices it and brings it to the world’s attention.
Then the town of Katonah gets a little concerned, afraid that the crazy woman in the haunted house has stolen the name of their town, so, carrying pitchforks and torches, they raze her mansion to the ground.
No, just kidding. The town expresses concern as to the effect that Martha Stewart’s ownership of the KATONAH trademark. However, there will be no effect. The local businesses will continue to be able to truthfully claim that they are located in Katonah, even the furniture stores. They, like us, however, will not be able to use KATONAH as a trademark for the goods covered by Stewart’s registrations. So, in the end, it’s a good thing.
More on the use of geopgraphic terms as trademarks here.
Well, I should have anticipated that, but the first people to contribute logos to the pageant of trademarks slide show, sent in logos for their own trademark firms. But, given that both logos had artistic merit, they have been included.
You can add to the show by emailing a JPG or a PNG (no other format) file to TRADEMARKS at CELLBLOCK dot Com. No subject heading is necessary. I monitor all submissions.
Remember, the button bar at the bottom of the Cellblock viewer allows you to go forward and backward, change the speed, and allow for full screen viewing (turning it into a nifty screen saver).