The Trademark Blog

Get CLE Credits! See me twirl plates on sticks while humming "Saber Dance" by Khachaturian! From the NY Law School website:

On November 2, 2007, the Amateur Hour Conference (www.nyls.edu/amhr) will convene leaders in business, law and technology to address the opportunities and challenges of user-generated creativity to traditional media, entertainment law, and business.

Please join us at New York Law School for this first Amateur Hour Conference. By bringing together attendees from law, business and technology, the event promises to be educational and entertaining. Participants will be eligible to earn CLE credit.

Posted by Marty at 02:31 PM | Permalink | Comments ()

Counterfeit Chic: "Knockoff News 70"

Posted by Marty at 09:46 AM | Permalink | Comments ()

Wired: "Dot-Name Becomes Cybercrime Haven"

"The domain name system has grown bigger than it was ever planned to be, is doing more than it was ever intended to do and does it proudly," Evron said. "But the governance around it has become profit-based, and we have no fallback system to handle criminal organizations and countries that abuse domain names."

Posted by Marty at 09:20 AM | Permalink | Comments ()

Freecycle Network v. Oey - Defendant stated that Freecycle Network's FREECYCLE mark was generic. District Court issues an injunction that such claims were a violation of the Lanham Act without doing much of an analysis of any particular provision of the Lanham Act. People like me participated as amici pointing out various problems with the District Court decision. 9th Circuit overrules.

Thorough 43(B)log discussion of the decision here.

Posted by Marty at 04:17 PM | Permalink | Comments ()

Seattle Trademark Lawyer: "Bourne Ultimatum: Vancouver Importer Settles Trade Dress Case."

Posted by Marty at 02:47 PM | Permalink | Comments ()

Prof Lessig: "On the Texas Suit Against Virgin and Creative Commons."

"Slashdot has an entry about a lawsuit filed this week by parents of a Texas minor whose photograph was used by Virgin Australia in an advertising campaign. The photograph was taken by an adult. He posted it to Flickr under a CC-Attribution license. The parents of the minor are complaining that Virgin violated their daughter's right to privacy (by using a photograph of her for commercial purposes without her or her parents permission). The photographer is also a plaintiff. He is complaining that Creative Commons failed "to adequately educate and warn him ... of the meaning of commercial use and the ramifications and effects of entering into a license allowing such use." (Count V of the complaint)."

Posted by Marty at 10:33 AM | Permalink | Comments ()

The Seattle Trademark Lawyer has a post on Kerusso, a seller of Christian-themed t-shirts. Several of its reported best-sellers are based on well-known trademarks. STL points to two Ninth Circuit cases, the Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1405 (9th Cir. 1997), and the Barbie Girl case, Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 901 (9th Cir. 2002), to conclude that these are likely infirnging uses. To put it simply, the shirt uses the Deere logo (for example) not to mock Deere but to get attention, and therefore is not a permissible parody.

However, to refer out loud to the elephant in the room, a trademark owner protesting such a usage runs the risk of being seen as anti-First Amendment and anti-religious expression. This can be handled in part by emphasizing that Jesus Christ is not a named party to an infringement suit but Kerusso Activewear, Incorporated, would be.

Posted by Marty at 10:04 AM | Permalink | Comments ()

Dallas News: "... Mom Sues Virgin Mobile Over Teen's Photo"

What would you do if a company grabbed a goofy picture of your kid off the Internet, slapped some snarky text on it and used it to sell mobile phone service half a world away?

Susan Chang decided to sue.

Extremely muddled legal discussion in article that misses the significance that Creative Commons, promulgator of the Creative Commons license, is a named party.

Posted by Marty at 11:05 AM | Permalink | Comments ()

Registrant:
Alexander Shkirenko
489 Lindbergh Place NE
Suite 938
Atlanta, Georgia 30324-3357
United States

Registered through: GoDaddy.com, Inc. (http://www.godaddy.com)
Domain Name: DONTTAZEMEBRO.COM
Created on: 18-Sep-07
Expires on: 18-Sep-08
Last Updated on: 18-Sep-07

Posted by Marty at 02:37 PM | Permalink | Comments ()

I'm late to reporting about the, well, maybe vendetta is the right word, for the on-going dispute between lawyer Jack Thompson and video game publisher Take Two, which distributes Grand Theft Auto. Take Two has apparently sued Thompson in the past over 'nuisance' lawsuits, and now Thompson alleges that Take Two has modeled a character after him in the new GTA. His letter to Take Two is worth reading.

For a blast from the past, here is an amicus brief submitted in the Tony Twist case which refers to an author's right to model fictional characters on real people. One of the signers of the brief was Michael Crichton, who availed himself of this right, as described here.

Posted by Marty at 04:43 PM | Permalink | Comments ()

The Intellectual Property Law Section Fall Meeting will be held Thursday October 4 through Sunday October 7 (that's Columbus Day Weekend), the height of leaf season in Bolton's Landing (Lake George) NY. THe brochure is here.

On the Saturday I will be moderating a panel on "IP Issues In Virtual Worlds", joined by Francis X. Taney, Jr. of Buchanan Ingersoll and Kristin Green of Microsoft.

Limited hotel rooms are still available.

Posted by Marty at 02:15 PM | Permalink | Comments ()

Prof Patry points out one of the leaked MediaDefender emails:

"In one case, a Universal executive asked if there was any data showing the music industry's lawsuits were resulting in less file-sharing activity from addresses ending in .edu -- namely, colleges and universities. Mr. Saaf forwarded the message to five MediaDefender employees with the message 'Take a moment to laugh to yourselves.'"

Posted by Marty at 02:12 PM | Permalink | Comments ()

From the August 2002 Trademark Blog, we dredge up a Judge Mukasey opinion in the TIMMY HOLEDIGGER case. Tommy Hilfiger had gone after a parody usage for pet perfumes and the Judge cited language in the previous Barbie Girl in which the Court had advised the parties to chill.

Discussion here.

Posted by Marty at 10:10 AM | Permalink | Comments ()

Beaner's Coffee is changing its name to BiggBy Coffee. POPWink wonders what took it so long.

Posted by Marty at 11:13 AM | Permalink | Comments ()

This WWD article reports that there have been 19 copyright or trademark suits filed against Forever 21 since the start of this year.

Update: Via Counterfeit Chic, here's the complaint in Carole Hochman v. Forever 21.

Posted by Marty at 11:02 AM | Permalink | Comments ()

NY Times: Eau de Hotel

Luxist: Will A Scent Make You Choose A Hotel?

LA Times: Sniff. Say, 'Ahh' or 'Achoo!'

NY Times: Scent Machines in Hotel Rooms

Posted by Marty at 10:20 AM | Permalink | Comments ()

WSJ: Antipiracy Group Suffers Email Leak:

[O]ver the weekend, information about MediaDefender's efforts was splashed across the Internet via a leak of purported employee emails. Among the alleged revelations: the company was developing a Web site, MiiVii, that would allow people to upload and download copyright movies, TV shows and music. But when people installed it, the software could also secretly track people's activity and report back to MediaDefender.

Posted by Marty at 10:04 AM | Permalink | Comments ()

Silicon Valley.com: Chinese Script Writer Wins Suit Against Sohu.com:

"A Chinese court ordered Sohu.com to compensate a script writer for lost income after the Web site sold romantic mobile phone messages he wrote without paying him, the writer and his lawyer said Friday.
The Shanghai No. 2 Intermediate Court ruled on Thursday that Sohu should pay writer Fu Zhanbei 100,000 yuan, or $13,000, for selling his work without permission and ordered the company to issue a public apology, lawyer Wang Zhan said."

Posted by Marty at 10:01 AM | Permalink | Comments ()

TTABlog: "TTAB Finds the Color Purple to be Functional for Sandpaper":

"Opposer Saint-Gobain claimed functionality because "purple is a by-product of the manufacturing process, and purple is used in color-coding." . . . The Board, however, found that "with respect to competitive need ... opposer has set out a prima facie case that coated abrasive manufacturers have to be able to use various shades of purple, including applicant's."

The Board further observed that "[a] deep purple color would be one of a small number of dark colors that would help manufacturers dye their products to avoid streaking or other imperfections."

Posted by Marty at 10:31 AM | Permalink | Comments ()

Converting Magazine: "Role of Nanotechnology in Brand Protection"

"Using nanotechnology, companies can now apply covert information, such as batch information, directly onto products and packaging. They can, for example, encrypt nanoscale codes onto pharmaceutical pills for tracking and tracing. They can also create nano bar codes, which are invisible bar codes that are technologically complex but can be used to easily authenticate products and packaging. "

Posted by Marty at 08:52 AM | Permalink | Comments ()

Slashdot: "Creationists Silence Critics with DMCA":

"As richarddawkins.net reports., an organization called Creation Science Evangelism Ministries has been submitting DMCA copyright requests to YouTube resulting in the Rational Response Squad being banned after they protested against videos being taken down and accounts being closed by YouTube. Rational Response Squad are attacking creationism (AKA intelligent design) and promoting the atheist viewpoint."

Posted by Marty at 08:46 AM | Permalink | Comments ()

Talking Points Memo: "Rudy Ad's Use of Petraeus Image Done "Without His Consent"

DoD policy re political campaigns and elections.

Posted by Marty at 10:31 PM | Permalink | Comments ()

LAw.com Blog: Nokia Trademarks Classic Guitar Score

Posted by Marty at 06:46 PM | Permalink | Comments ()

Now there's a title. The Register:

"Three years ago, Timothy Vernor quit his day job to enjoy life as a full-time eBay junkie. His online store, Happy Hour Comics, typically sells comics-related collectibles and vintage toys, but about 24 months back, he walked into a "garage sale" and stumbled onto a copy of AutoCAD, the professional design tool that Autodesk prices at roughly $4000 a pop - and he decided to sell that on eBay too.

Well, Autodesk got all huffy. The software maker chucked a DMCA claim at eBay, insisting that Vernor's AutoCAD auction was in violation of the U.S. Digital Millennium Copyright Act (DMCA). eBay promptly yanked the auction, but in an act of defiance rare among internet users, Vernor sent Whitman and company a counter-claim, insisting it put the auction back up."

Posted by Marty at 04:46 PM | Permalink | Comments ()

San Bernadino County Sun:

"County Supervisor Dennis Hansberger has sued to stop a Muscoy man from criticizing him through a Web site using the supervisor's name.

"The public's access to information about Mr. Hansberger is being limited by these sites," Prince said."

Fanning, 37, owns several cyberdomains that use Hansberger's name, such as www.dennishansberger.com. The Web sites contain critical remarks about the 3rd District supervisor, along with links to newspaper stories about him.

Posted by Marty at 09:55 AM | Permalink | Comments ()

Memo on changes to Vietnamese Trademark Law prepared by the Winco law firm.

Posted by Marty at 04:47 PM | Permalink | Comments ()

The Register:

Late last month . . . Viacom put the screws to Star Wars-loving North Carolinian Christopher Knight for posting his own TV ad to the world's most popular video-sharing web site. Yes, he also posted a sliver of Viacom-owned content, but most of the video was his - and he wasn't doing anything Viacom hadn't already done to him. Nonetheless, Viacom ordered YouTube to yank the clip - in which Knight waves a light sabre at federal legislation - and our hero received a digital form letter threatening to destroy his account.

But Jedi Knight filed a counter-complaint, risking a lawsuit from Sumner Redstone and company, and for once, YouTube justice was served. Viacom eventually bowed to internet common sense, and late Tuesday night, the clip was restored.

The fact that the guy's name is Knight adds a certain,uh, coincidence to the story.

Posted by Marty at 03:59 PM | Permalink | Comments ()

Outstanding speaker list. What caught my eye was a presentation entitled ""How I Became Disillusioned with Trademark Dilution," by some professor in the Bay Area named McCarthy.

Posted by Marty at 01:18 PM | Permalink | Comments ()

Google Public Policy Blog: "The Economic Value of 'Fair Use'"

"The study -- which I encourage you to check out -- concludes that the "fair use economy" in 2006 accounted for $4.6 trillion in revenues (roughly one-sixth of total U.S. gross domestic product), employed more than 17 million people, and supported a payroll of $1.2 trillion (approximately one out of every eight workers in the US). It also generated $194 billion in exports and significant productivity growth. Using a methodology similar to a previous World Intellectual Property Organization guide, the results of the study demonstrate that fair use is an important economic driver in the digital age."

Posted by Marty at 11:58 AM | Permalink | Comments ()

Tyra will do 'How to spot a fake." Set your Tivo accordingly, Here's the preview.

Posted by Marty at 11:53 AM | Permalink | Comments ()

LA Times: "Hanes Sues American Apparel over Barely There trademark"

Posted by Marty at 11:24 AM | Permalink | Comments ()

FemaleFirst: Christian Louboutin Battles Over Red Soles:

"Christian Louboutin is battling to trademark the signature red soles on all his shoe designs.

The shoe legend is fed up of other companies cashing in on his popularity by putting red soles on their own shoes to imitate his famous designs."

Posted by Marty at 10:52 AM | Permalink | Comments ()

BBC article on the .TK country code top level domain (from the island of Tokelau).

As of now, BBC.TK is still available for registration.

More from the Register here.

Posted by Marty at 10:47 AM | Permalink | Comments ()

WSJ: Pepsi Steps Into Coke Realm: Red, China

"In most countries, the major rival colas are delineated by color: Coca-Cola Co.'s can is red, while that of PepsiCo Inc. is blue. But in China, Pepsi has departed from tradition and launched a red can as part of a new marketing campaign."

Posted by Marty at 10:54 AM | Permalink | Comments ()

NY Times reports on the similarities bewteen Chinese carmaker Shuanghuan's CEO and BMW's SUV. Core 77 Design Site has discussed the economics of Chinese car 'counterfeiting' previously.

Posted by Marty at 10:01 AM | Permalink | Comments ()

My wife dropped the big boy off at Kindergarten, I dropped the little guy at pre-school. I crossed Eighth and 23rd and an emergency vehicle took the corner exceedingly fast, the pedestrians jumping back onto the curb. One woman crossed herself and I thought "you don't see that much anymore." Growing up, there were people who would cross themselves when a car backfired. Not so much these days.

So I'm thinking this sort of stuff when I enter my buidling and the doorman says "Two planes crashed into the World Trade Center." And I say "Two planes collided in mid-air and fell into the building?" and he says 'No, one flew into one and one flew into the other."

So I knew it was terrorism. In the elevator going to my apartment I'm thinking about a 1945 photograph from when a B-25 crashed into the Empire State Building. You hear that a plane crashed into the Empire State Buidling and you're amazed and then you see the photo and it's only a tiny hole. So that's what I'm visualizing.

I get to my apartment and my wife left a note that said 'Go to the roof.' So I go to the roof and there's a crowd of people, many of them with cameras.

And I see the jagged orange line across the entire North Tower.

And my brain starts running through rescue scenarios - maybe they can land helicopters on the roof or something. And eventually I conclude that everyone above the orange line is going to die and I suddenly feel ashamed that I'm staring. So we go back to the apartment.

The rest of the day was punctuated by shock and awe. Learning that those were commercial liners, learning that the Pentagon was hit (and wondering if we were at war with China), seeing the towers fall, waiting on line to give blood at St Vincents. But no one needed blood.

Going to a supermarket that evening. No one said a word. Everyone was thinking about how the rest of their life would be different.

The first flyers went up the next day (that, by the way, imho, is what the Memorial should look like - photos of people holding kids, people laughing at parties, on flyers, where someone who loved them scrawled "Have you seen?" hastily).

And bit by bit we learned of friends and colleagues who were 'involved.'

I've driven past Gabreski Air Force Base in Suffolk County, New York many times. There's a jet fighter on permanent display, on which it is painted "NEW YORK AIR GUARD." There's one in front of Westchester Airport as well.

I used to understood that to be a promise of protection. Now of course it's obvious that it's meaningless.

Posted by Marty at 11:49 AM | Permalink | Comments ()

Al Fross died five years ago today.

Posted by Marty at 11:47 AM | Permalink | Comments ()

LuLu sues Hulu and TechCrunch convinces the world that HULU is Swahili for cease and desist.

Posted by Marty at 09:16 PM | Permalink | Comments ()

I think that shows restraint on my part. She's suing Hallmark. This was the first time, when she was still part of a sister act. I seem to have never mentioned Lindsey Lohan. Britney Spears has been mentioned many times.

Posted by Marty at 09:20 PM | Permalink | Comments ()

Wired: "Fraudster Who Impersonated a Lawyer to Steal Domain Names Pleads Guilty to Wire Fraud"

"A Nevada man pleaded guilty Thursday to his plotting to steal URLs from their legitimate owners by impersonating a California intellectual property lawyer and send threatening letters to domain name owners in hopes of convincing them to turn over the domains to him.

Las Vegas resident David Scali registered the email address trademarkinfringement@netzero.net in 2006 and then, pretending to be a real Califonia lawyer (whose intials are K.Y.C.), threatened domain name owners with $100,000 trademark infringement suits, unless they transferred the domains within 48 hours."

Practice pointer: Very often a domain name registrant will justify a refusal to acknowledge a demand letter by pointing out (correctly) that there is (some amount of) fraud regarding domain names. When sending a demand letter, do not rely on email alone, and provide verifiable contact info. If acting on behalf of a client, when communicating with the registrant by email, visibly cc the client by email (with the client's permission, after discussing with the client the pros and cons of so doing).

Posted by Marty at 12:23 PM | Permalink | Comments ()

Leonard Lopate show on WNYC:

"In Deluxe, Newsweek writer Dana Thomas tells the stories behind the world's most famous luxury labels: how they came to be, why consumers love them, and where they fit in today's global economy.
Purchase Deluxe: How Luxury Lost Its Luster at amazon.com.

Weigh in: Have luxury goods lost their luster?"

Posted by Marty at 11:09 AM | Permalink | Comments ()

Balkinization: Golan v. Gonzales -- How The First Amendment Limits Copyright Law

The Tenth Circuit has handed down a very important copyright case, Golan v. Gonzales, which holds that section 514 of the Uruguay Round Agreements Act-- which implements the Berne Convention on copyrights-- may violate the First Amendment because it takes some materials out of the public domain and makes them copyrighted. Relying on language in Eldred v. Reno, the court held that the URAA violated the First Amendment because it altered the "traditional contours of copyright law." It pointed out that the tradition in the United States has been for works to be created, copyrighted and then revert to the public domain. It also pointed out that traditionally Congress has rarely ever restored copyrights for public domain works, and then only in emergency situations where, for example, war prevented the authors from complying with copyright formalities. The court concluded that neither the idea/expression distinction nor the fair use defense ameliorated the fact that work that was free for anyone to use was now locked up in fresh copyrights. Hence it remanded for further determination of whether the URAA is content neutral or content based in order to apply the appropriate level of scrutiny.

Posted by Marty at 08:21 PM | Permalink | Comments ()

. . . would be what Jack Goldsmith has to say about the 'Torture Memos' and the manner in which the Administration went about matters such as surveillance and interrogation.

Posted by Marty at 11:08 AM | Permalink | Comments ()

Practica eCommerce: "Transferring a Domain Name: Process Varies Depending On the Registrars"

Posted by Marty at 10:11 AM | Permalink | Comments ()

This Is South Devon.co.uk: "Paignton-based International Seed Suppliers Suttons Have Won A Battle"

Posted by Marty at 10:04 AM | Permalink | Comments ()

Counterfeit Chic: "Copying Clothes Over a High-Speed Connection"

"In today's New York Times, Eric Wilson goes behind the scenes at Simonia Fashions, one of many companies waiting for the first photos from New York Fashion Week to appear online. Not because the proprietors are interested in fashion's new creative direction, mind you, but so that they can pick out the most popular designs and get cheap copies into stores -- often before the originals are available for sale."

Update: Prof Scafidi's testimony before the House Judiciary Committee on the protection of fashion.

Posted by Marty at 09:53 AM | Permalink | Comments ()

News.com: "Google News in licensing deals with wire services."

Posted by Marty at 09:43 AM | Permalink | Comments ()

Icon Brands v. ICONIX

Burberry v ICONIX

Posted by Marty at 03:31 PM | Permalink | Comments ()