When I met InstaPundit at a conference in November, I shamefully admitted to him that I didn’t know what ‘fisking’ meant.  He patiently explained that it is a line-by-line analysis of a piece. This article appeared in today’s NY Times.  You will have to forgive my knee-jerk reaction to any article which contains the quote “Trademark law is a problem,” and then supports that assertion with the author’s free association to trademark disputes which involved celebrities or big companies.  OK, here goes.  Non-indented text mine, blue indented text their’s.

“AT&T Ad Trips Over a Trademark


Freedom of expression, it turns out, may not be for everyone.”

OK, you’ve got my attention.

“Kembrew McLeod, assistant professor of communications studies at the University of Iowa, believes that “freedom of expression” — or at least the phrase — belongs to him, because he registered it as a trademark in 1998. And now that AT&T is using the phrase in some print ads, he wants the company to stop.”

A David and Goliath story, good, go on. 

“Yesterday, Mr. McLeod sent AT&T a “cease and desist” letter, asserting that consumers might infer a link between the company and his anti-corporate publication, “Freedom of Expression.”

I checked and Mr. McLeod’s registration covers creative writing booklets, a far cry from telecommunication services.  Maybe he has a magazine on the side.  There is an illustration of the AT&T ad in the Times and FREEDOM OF EXPRESSION is used as copy in an ad, arguably not trademark use.  There is a fair use defense in this type of fact pattern which AT&T is or is not entitled to.

 The bigger idea behind his legal action, he said, is to object to corporate power over words, speech and even ideas.

But his demand letter is the assertion of such power.  Did he put a little ‘just kidding’ emoticon at the end of his letter?  And he and the author of the article should know) that trademark law already embodies the fix he wants, namely the fair use defense. 

“I do want to register my genuine protest that a big company that really doesn’t represent freedom of expression is trying to appropriate this phrase,” he said.

But AT&T isn’t claiming exclusivity in the phrase.  Why symbolically protest a claim which isn’t being made?

AT&T has not received the letter and will not comment before it does, said Jeff Roberts, a company spokesman”

Must have been sent regular mail.  And if AT&T doesn’t ever reply to this letter, will the professor file an ironic lawsuit?  Because Federal Rule 11 prohibits ‘just kidding’ suits.

 “The notion of intellectual property became tabloid fodder in 1993 when NBC lawyers tried to prevent David Letterman from taking skits like Stupid Human Tricks from “Late Night” to his new CBS show.

Wait, I’m confused.  We were talking about some kind of public interest thing.  David Letterman’s IP dispute with NBC was a common commercial dispute (albeit one which involved David Letterman).  Is the point that tabloids began covering IP issues in 1993?  So this is a tabloid trend?   

Then the game show hostess Vanna White successfully sued Samsung Electronics for making a commercial with a robot in her likeness without her consent.”

I’m still confused.  Using a cartoon likeness of Vanna White without her authorization in a commercial advertisement is or is not a violation of her “personality rights,” a concept dating back a hundred years.  What has that to do with freedom of expression?

 “Dust-ups proliferated . . .

Says who?

and by last October, the premise was pervasive enough to drive a plotline on an episode of “Curb Your Enthusiasm” on HBO in which the comedian Richard Lewis tried desperately to prove he coined the all-purpose pejorative, “blank from hell” (as in “nanny from hell”).”

Funny episode.  But I don’t think the premise was necessarily IP, I think the premise was the vanity of authorship.  Richard Lewis didn’t want money, he wanted to be credited in Bartlett’s.

You know, the season finale with the chef with Tourette’s, that might be the funniest episode ever.

 “Trademark law really wasn’t that big a problem several years ago,” said Lee Tien, senior staff lawyer at the Electronic Frontier Foundation, a technology-oriented civil liberties group in San Francisco.


Traditionally, the litmus test was customer confusion: if a potential trademark infringement confused customers, it was probably illegal, he said.


But the courts increasingly have ruled that diluting a brand — by using a similar name even in an entirely different business — is against the law, Mr. Tien said.

This wasn’t a judicial trend, the law changed.  Federal law was amended in 1995 to make nationwide a concept which had previously been the law in many states – that dilution of a trademark was actionable.  But now at least this article has a theory with a testable premise in line with the opening paragraph.  The Federal Dilution statute may have unintended impact on civil liberties.

“And the spreading reach of the Internet has brought every McDonald’s dry cleaners and McDonald’s car wash into potential conflict with the McDonald’s Corporation.”

Well, the statute’s not really retroactive, so not every McDonald’s dry cleaners.  But wait, are we talking about the effect of the dilution statute on civil liberties, or on choosing business names?  Because we could have that premise also: the new federal dilution statute creates uncertainty in naming businesses.  By the way, if you substitute KODAK for McDONALDS in the sentence above, dilution sounds like a plausible concept.

One result is a lawsuit from Victoria’s Secret in Columbus, Ohio, part of Limited Brands, accusing a store in Elizabethtown, Ky., originally named Victor’s Secret, of dilution. Although the store was renamed twice — Victor’s Little Secret and then Cathy’s Little Secret — the case still landed before the United States Supreme Court in November.

OK, we’re sticking with the small business angle.  But apparently the Supreme Court is going to help out on the uncertainty problem.

“No one would think for a moment that Victoria’s Secret has anything to do with Victor’s Little Secret,” said Jonathan Band, a partner at the Washington office of Morrison & Foerster. “But he’s clearly trying to trade on the name.”

The reader would be more apt to agree with this statement if the article had indicated that VICTOR’S SECRET was a lingerie and sex toy shop.

The court now has to decide how much damage, if any, Victoria’s Secret has been done, he said.

Close enoughIf you read the transcript of the oral aruments, the Supreme Court isn’t sure what’s being asked of it either.

A ruling is expected this summer.

“While such contests often pit large trademark holders against mom-and-pop companies, it is not always that way. Behemoths are subject to scrutiny as well, including Microsoft, which is suddenly defending its trademark on the word “Windows” in court.

The article just free-associated and introduced Microsoft.  We now bring our MS baggage with us as we evaluate its case.

Microsoft began the legal dispute when it filed suit against Lindows .com Inc., in December 2001, asserting that Lindows, a maker of Linux-based software, was freeloading on the Windows name.

So why did the owner of Lindows choose LINDOWS?

Microsoft said it had invested $1.2 billion in marketing Windows, which it had successfully registered as a trademark. Lindows .com later sued to strip Microsoft of its trademark, arguing in part that “windows” was too generic to trademark. The case is pending.”

The focus of the article has gone from “freedom of expression” to “celebrity IP disputes” to “effect of dilution law on civil liberties” to “effect of dilution law on small businesses choosing names” to “trademark stories the Times have covered in the past month which involve Microsoft.”

 “Daniel R. Harris, partner at the law firm of Clifford Chance, which is representing Lindows.com, said Microsoft wanted to reserve a common word exclusively for its own marketing.

Given that trademark law allows registration of dictionary words, and has for a long time, this is both legal and common.

“They’re trying to use their monopoly power to monopolize a word out of the English language,” he said.”

Populist arguments from the world’s largest law firm.  APPLE and MACINTOSH are words out of the English language.  Apple can plausibly challenge the use of LAPPLE or LACINTOSH for linux-capable computers.  Is WINDOWS for GUI software against LINDOWS for GUI software different?  The real issue in the LINDOWS case was stated previously: was WINDOWS a generic term for windowing software when Microsoft took that word.  The prohibition against generic and descriptive words protects other traders who may wish to use that term in connection with their own goods.  Incidentally, I’m aware that I an arguing with Lindows’ lawyer now, not the article.

“Not surprisingly, Microsoft takes a different position. “Our viewpoint is a fairly simple one,” said Jon Murchinson, a company spokesman, “that Lindows not free-ride on the investments that we’ve made in building Windows into one of the most recognizable brands in the world in the last 20 years.””

OK.  Microsoft is either right or wrong. 

 “The stakes seem lower for AT&T.

Right, we were talking about AT&T and freedom of expression a while ago.

The ads using “freedom of expression” ran only in college-oriented newspapers during the third quarter of last year, said Mr. Roberts, the AT&T spokesman.

For Mr. McLeod, however, a confrontation with AT&T could generate welcome publicity, and not only for his belief that private ownership of language can impede the free flow of information.”

Which belief was not supported by a single instance of “private ownership of language” being utilized against public use of information.in this article.

His trademark certificate will be part of an exhibit of art on the fringes of intellectual property, entitled “Illegal Art,” opening in Chicago on Saturday.””

See, everybody has something to sell.