Interesting fact pattern. Plaintiff developed a stuffed bear with ‘hugging’ technology, and received a trademark registration for LOTS OF HUGS (there’s some muddiness in the chain of title, so let’s slip some ‘allegedly’s in there). Disney names the evil bear antagonist on Toy Study 3 LOTSOHUGGIN’ or LOTSO. Plaintiff is forced to change the name of the bear to HUGALOTS, because the licensee is afraid of the wrath of Disney.
Daco has a registration for the trade dress of a handle for blow torches. The mark is described as “a molded plastic handle for the goods consisting of a series of adjacent ring-like formations encircling the handle.” The drawing is depicted on top above (the protected handle is the right side of the drawing – the parts depicted by dashes on the left are not part of the claimed mark). Lincoln Electric incorporated the handle in its propane torch. Lincoln started purchasing ‘the same grip’ from a new supplier. Daco threatened to sue for trade dress infringement, Lincoln moves for a declaratory judgment.
There is a Twitter account with the handle @jamesdean. The tweets tend to be pictures of Dean, or quotes by or about him. The entity alleging ownership of all rights associated with the late actor, including a federal registration for JAMES DEAN, sues Twitter.
Funny story, Friday. I’m supposed to give a presentation on the intellectual property law implications of 3D printing at the Reinvent Law conference in NYC. Reinvent Law conferences discuss ‘reinventing’ the market for legal services. Typical topics would include ‘how to run your firm like a start-up’, as well as ideas for improved firm structure, firm infrastructure and better tools.
Fairly early during the morning talks I realize that my CLE-style presentation was out of place. Really out of place. No one is citing cases, everyone is shifting paradigms. And my talk was scheduled for 2:30, and my slide deck was already loaded.
So I needed a new talk.
It occurred to me that I did have some thoughts that were in keeping with the theme of the conference. No one was really talking about how to change one’s attitude towards their practice. No one was talking about reinventing themselves.
I take the stage and say ‘Boredom and indifference towards one’s work can be as much an enemy to good customer service, as using antiquated practices.’
I intimated that in my practice I’ve consciously tried to implement an attitude that in Zen is referred to as Beginner’s mind. Throughout my career I’ve been lucky to happen upon new things (domain names, blogging, 3D printing) that allowed me to bring a beginner’s mind to interesting subjects. Although I did suggest that, to quote Branch Rickey, luck is the residue of hard work and design. Or to paraphrase Wayne Gretzky: ‘skate to where the puck will be.’
Towards the end of the talk I confessed that I had had a paranoid response to some of the lawyer-bashing that is inherent in a ‘Everything lawyers presently do is wrong” conference. I felt like John Henry, picking a fight with a steam-powered hammer (I’ve supplied a link, as I worry that that’s a dated reference).
I don’t actually believe the future demands such an either/or outcomes. I think that John Henrys learn to use steam-powered hammers. However those lawyers’ increased productivity reduces the over-all number of (good) jobs for lawyers. The ones that keep their jobs will understand that there is this thing called ‘lawyering’ that cannot be automated (or automated well). And that ‘lawyering’ can be achieved by bringing a beginner’s mind over and over again to what we do: spotting the issue, stating the rule and applying the rule to the facts.
And if you do that in one new fact pattern after another, over and over again for years, then you can stand in front of a room full of law practice vendors and say with confidence:
“Software can’t do the shit that I do.”
So I said thank you, and left the stage, and a guy runs up to me and says ‘you dropped the mic.’ Now my body mic is cabled under my jacket and I panic. I dropped the mic? Am I making rustling noises? “No”, the guy says ‘you dropped the mic’ and shook my hand. I disentangle the body mic and go back to my seat.
Then I go onto Twitter. Someone has tweeted “@mschwimmer drops the mic at reinvent law.” So I Google ‘definition drop the mic.’
Apparently I schooled them and walked away, the conversation over.
Not really, but a nice feeling at the time.
AT&T created the AIO brand to compete head to head with T-Mobile in the ‘no contract’ sector of the mobile phone market. AIO selects plum, well aware of T-Mobile’s use of magenta.
Pages 6 to 13 is the discussion of steps T-Mobile took to establish rights in the color magenta as a trademark. If you have unlimited resources, this reads as the textbook for acquiring secondary meaning in a color including ‘look for’ advertising. For example, prior to ‘Black Friday’, T-Mobile ran a ‘Magenta Saturday’ sale.
Pages 13 to 18 describes AT&T’s selection of plum, to compete with magenta. Sounds like they had ‘color depletion’ problems. A lot damning stuff in their internal emails.
Some discussion of variability in the actual shade of magenta that was used at times, turns out not to be a decisive factor.
T-Mobile wins in a rout at preliminary injunction.
Psychic brother sues psychic sister over use of the family name. Uneventful denial of motion to dismiss trademark infringement and related claims. Tag this case if you save ‘sacred right to use one’s own name’ cases.
Swatch organized a conference call for several hundred stock analysts. Bloomberg recorded the call without authorization and made it available to its subscribers. Swatch sued on copyright. At the District Court level, Bloomberg prevailed on (the Court’s sua sponte request for) summary judgment on fair use. Heavy emphasis on: (1) news reporting purpose; (2) thin copyright; and (3) no discernible effect on the ‘market’ for the work.
Second Circuit affirms. Interesting discussion regarding the news importance not only of the actual words spoken by the Swatch representatives on the call, but their vocal characteristics as well (see discussion starting on page 27).
Question: Why does Swatch seek to prohibit Bloomberg’s recording its conference calls?
Prof Goldman forwarded me this NY state case regarding John’s Pizza (of Bleecker Street) enjoining the owner’s daughter from using JOHN’S PIZZA. He noted that he had never heard of JOHN’S PIZZA and couldn’t believe that the name could be a particularly strong trademark.
I’ve been familiar with JOHN’S PIZZA since forever and took the fam there last month, in fact. JOHN’S PIZZA functions as a trademark to me. The prof’s assertion led me to ruminate on the nature of diluted trademarks. They can function as marks within their own narrow sub-channel of trade. In New York, at least, you can slice the pizza channel into sub-channels: slice pizzerias; family sit-down no-slice; family sit-down no-slice table cloth; family non-slice table cloth plus other Italian dishes; and Mario Batali.
JOHN’S PIZZA on Bleecker Street is possibly the best known family sit-down no slice pizza place in New York.
If you Google JOHN’S PIZZA (at least in this part of the world), the first hit is defendant in this case (the estranged daughter). There’s a contractual element to this dispute. The use of ‘no-slice’ on the web page is probably an aggravating factor.
What should I get for lunch? Perhaps FAMIGLIA PIZZA, the best pizza in White Plains (and client of the firm).