If a radio station makes falsifiable statements regarding its playlist (such as representations that the songs were ‘best-selling’), then the potential harm in payola (paying the station to play a song) is apparent.  If a radio station makes vague statements regarding its playlist (‘today’s sounds’), then payola may be culturally undesirable, but the actionable harm not as apparent.

Discuss.

Background:  NPR podcast entitled “What’s Wrong With Payola?”  Also,  NY AG statement on last week’s payola settlement. 

July 2, 2004: Stephen Goetz’s alleged date of first use of MY LIFE, MY CARD for computer software for financial credit/debit card content management.

September 1, 2004:  American Express registers mylifemycard.com as domain name.

September 8, 2004:  Goetz files use-based trademark application for MY LIFE, MY CARD.

September 15, 2004: American Express files ITU trademark application for MY LIFE. MY CARD for range of credit and travel card services.

November 2004:  American Express launches MY LIFE. MY CARD advertising campaign.

The NY Times reports today that Goetz has sued Amex.  The article contains this quote:

Yet even if Mr. Goetz came up with “My life. My card.” the tagline may be too general for him to make a strong ownership claim.

“Unless you have an association beyond its words, you don’t have anything,” said Thomas F. Holt Jr., a lawyer at Kirkpatrick & Lockhart who is not involved in the case. “It’s not until American Express brings its magic to the naming process does that mark have any vitality.”

Given that the Lanham Act was written by Muggles, magic is not a required element for protection. 

As to ‘association,’ the speaker was likely using ‘association’ to mean either trademark strength or secondary meaning.  A descriptive term will acquire protection only after it has obtained secondary meaning – that is, an association between the term and the source of the goods (AMERICAN AIRLINES for example).

On that point, neither Goetz’ nor Amex’ applications for the term received descriptiveness objections, so the term MY CARD, MY LIFE may well be inherently registrable (and proof of secondary meaning will not be required).  If Goetz proves priority, Amex has issues.

As to strength of the senior user’s mark, or lack thereof, a senior ‘small’ trademark owner has challenges with regard to proving damages when protesting use by a junior ‘large’ trademark owner, where the reputation of the mark has been created by the junior user’s efforts.  Whether the junior user adopted the mark with knowledge of the small senior user or not, it likely didn’t take the mark with an intent to willfully infringe the senior user’s reputation, because there is none.

That said, reverse confusion is potentially a potent argument, and some of the largest (trial) damages ever awarded arose under this theory (such as the THIRST-AID and BIG FOOT cases). A rationale for the theory is that the senior user is damaged because it will be perceived as a copy-cat.

Judge Posner has challenged this rationale in Peaceable Planet v. Ty, however he leaves in place other plausible rationales for a finding of reverse confusion.  A small senior user may well be damaged by a large junior user – if damaged, it should be made whole.  Whether it should be a big payday is another matter.

For more on willful infringement, see here, and for more on reverse confusion, see  here.

 

 

 

 

 

Computer Business Review Online:  “Pay-per-click Speculation Market Soaring.”  Hundreds of thousands of domain names are being registered, then tested during their 5 day grace period, to determine whether they will generate more than the $7 or so registration fee, in Yahoo or Google keyword ad revenue (and then are deleted if they don’t).  There are approximantely 44 million .com and .net names registered.

From the US PTO site,  explaining when to use TEAS or TEAS PLUS when filing trademark applications electronically:

 

Which type of form do you wish to use? Select from one of the two versions, below, and then click on the CONTINUE button at the bottom of the page.
TEAS Plus Form
This form has a lower filing fee of $275 per class of goods and/or services, but has stricter requirements, than the TEAS form, below. Select this option ONLY if you agree to:

  • file a “complete” application that satisfies all requirements set forth in Rule 2.22(a), not only the regular “minimum requirements” for obtaining a filing date. Almost all fields in this form are mandatory;
  • select the listing of goods and/or services for this application directly from the USPTO’s Acceptable Identification of Goods and Services Manual. While certain listings will allow for “customization,” total “free-text” entries for identifications CANNOT be made;
  • attach all required image files, where applicable, in the .jpg format (for specimens, foreign registration certificates, consents, evidence) (except for sounds marks, for which a .wav or MP3 file can be submitted separately);
  • pay the fees for ALL classes at the time of filing;
  • file certain later communications regarding the application, such as a response to an Office action, through TEAS. See Rule 2.23(a)(1) for the listing of forms that must be filed through TEAS; and
  • receive communications concerning the application by electronic mail (e-mail) during the pendency of the application.

NOTE: If you use the TEAS Plus version of the form, you must pay an additional fee of $50 per class if, at any time during the examination of the application, the Office determines that (1) the application did not meet the filing requirements for a TEAS Plus application as of the filing date, as set forth in Rule 2.22(a); (2) the applicant files a paper form after the initial application, but a TEAS form existed for that purpose, e.g., a response to an Office action; and/or (3) the applicant refuses to receive correspondence from the Office by electronic mail (e-mail) during the pendency of the application.

You must select this option, having a filing fee of $325 per class of goods and/or services, if you:

  • cannot file a “complete” application at this time, satisfying all requirements as set forth in Rule 2.22(a), but instead can meet only the “minimum requirements” for obtaining a filing date. Only certain fields on this version of the form are mandatory;
  • wish to make a “free-text” entry for the listing of goods and/or services for this application, rather than selecting the listing directly from the USPTO’s Acceptable Identification of Goods and Services Manual (apart from any permissible “customization” within certain listings);
  • are unable either to create or successfully attach in the designated portion(s) of the form a proper .jpg image file, if applicable for the application (for specimens, foreign registration certificates, consents, evidence);
  • wish to pay for only one class at the time of filing, although the application as filed will consist of multiple classes;
  • plan later to file certain communications regarding the application, such as a response to an Office action, in paper rather than through TEAS. See Rule 2.23(a)(1); and
  • do not agree to receive communications concerning the application by electronic mail (e-mail) during the pendency of the application.

     

     

    NY Attorney General press release on settlement of payola charges with Song BMG.

    FCC Regulations requiring disclosure when matter has been broadcast in exchange for payment.

    New Yorker article from last year describing ‘spot buys,’ whereby record companies purchase radio spots and play singles during the spot.

    Wikipedia discussion of payola scandal of the 50’s.