Not really trademark law but it happened in a trademark case:  Defendant tells his law firm a cock-and-bull story.  Submits the story in an affidavit.  The law firm didn’t necessarily believe the story but later testified that it believed that the story was possibly true.  The district court held that the law firm’s belief was objectively unreasonable and sanctioned the law firm.  On  appeal, the Second Circuit holds that in this situation, where neither the adversary nor the Court gave the law firm the opportunity to withdraw the challenged papers, for purposes of sanctions the law firm should be held not to the “objectively unreasonable” standard” but a “bad faith” standard.  There was no finding of bad faith. Click here and search for In re Pennie and Edmonds, 02-7177, March 14.

I am very happy to make an RSS feed of this web site available to aggregators who make NON-COMMERCIAL use of the feed.  There is someone out there who is aggregating 40 law blogs and attempting to sell advertising.  Please either stop selling the advertising or stop including my blog.  Also, there is someone out there who appears to be attempting to sell access to various law blog archives as a premium service.  My archives are available free on this site.  Stop attempting to sell my content.

UPDATE:  I suppose that someone who is selling advertising in order not to make a profit but to defray bandwidth charges is still making non-commercial use of the feed.

My wife made a Toscano oil and Modena Balsamic Vinegar salad dressing last night.  Olives have been grown in Toscano or Tuscany since 700 BC. TOSCANO is an appellation of origin for olive oil.  Histories of balsamic vinegar suggest that it is so named because it had the healing qualities of a balm.  It was first prepared in Modena in Italy as early as 1046.  MODENA is an appellation of origin for balsamic vinegar.  Usually, consortiums of local growers control and monitor procedures for producing products which may bear these appellations of origin.  The European Union’s register of appellations of origin is here.

Over the past few months I have written a series of pieces under the heading “Brand as Navigator” on the general topic of how trademarks functions as navigational aids (domain names, paid search, meta-tags, keywords).  Identical or similar trademarks are able to co-exist in the real world with (acceptable levels of) confusion only because of implicit or explicit context (most notably indications of geographic location and field of goods).  FORD, without context, can be a misleading keyword, metatag or domain name.  The DNS, which could be a smart system but is administered like a dumb system, will never function effectively as a brand navigational system until it embodies similar levels of context to that of a directory.  It seems that it would be better instead to just build good directories.

Consider in contrast telephone numbers.  What is Sony’s telephone number?  On the whole, the telephone numbering system is “dumb” in the sense that there is no relationship between the number and the resource (8xx numbers being an exception).  There are sometimes trademark cases arising from telephone numbers (1-800-MERCEDES being a recent example), however I would say such cases are rare (for a variety of reasons).  Because telephone numbers are not guessable, there is (virtually) no equivalent to cyber-squatting.  The context which allows common names to “resolve” without confusion is supplied outside the network by ‘smart’ navigational systems –  yellow page directories for example.  The topical headings “Modeling Agencies” and “Automobile Dirs. – New Cars” allows for two unrelated entities to utilize the common name FORD across the telephone system.

The domain name system is half-way between a smart system and a dumb system and that’s what causes the trademark problems.  Some ‘one-of-a-kind’ names can only designate one origin without confusion- TEENAGEMUTANTNINJATURTLES.COM or FORDMODELS.COM for example.  Unfortunately, all these names are distributed as if they were ‘dumb’ names – first come, first served.  So you can register a unique name before the unique name’s owner did.  And this feature of the DNS lead to millions of dollars in external costs. 

In order to reduce some of the external costs arising from mis-allocation, the DNS is taking half-steps towards being a smart system.  Through the UDRP and through ‘sunrise’-like allocation systems, there is some attempt to match ‘one-of-a-kind’ names to their ‘rightful’ owner after-the-fact or before-the-fact (I am using quotation marks like tongs to handle hot terms).   I think that both registrars and trademark owners are not satisfied with the level of cost arising from the present allocation method.  Also, these remedial systems are themselves mis-used.

Making the domain names themeselves smarter a little bit reduces external costs a little bit.  With “chartered” TLDs there is some attempt to build context into the name itself.  DELTA.AERO cannot be confused with Delta Dental.  The early reports are that there is no abusive registration within the structured TLDs (and little non-abusive registration as well).  However, while adding structured TLDs  will result in lower external costs than adding, for example 1 or 2 more unstructured gTLDs, I think that neither course will solve the issue of how to allow for quick navigation to small (commonly-named) businesses.  Neither the creation of 100 more .com’s, nor the creation of a .PIZZA, will satisfy all the JOEs and JOHNs who want to be known by a short name on the net.

As a short aside, I note that domain names can be made dumber as well and this would (1) reduce external costs while (2) expanding the namespace.  If you just needed a domain name, you could be assigned a name like the old Telex address system – there would be no semantic meaning, but it would consisting of randomly generated numbers and phonemes (like MARTRADE7).  It would be memorable in a short-term memory sense, not a branding sense.  This would move the DNS away from being a bad directory and back to being an addressing system (which it was engineered to be).  This would also reduce domain names to fungible commodities (with lower prices).

Getting back to the common name problem, I submit that the “meta-problem” for brand owners (large and small) is not really how to minimize the external costs of the DNS (although that problem has kept many people like me busy for years).  The real “meta-problem” is how to allow brands to efficiently function as navigators.  Guessable domain names for all is not logistically possible but browsable names are.   Browsable, granular search engines, can allow me to ask for SONY, and distinguish between the SONY manufacturer, the SONY-authorized service center, and the cheapest place to get a SONY camcorder.  Also, I can look up BROADWAY PIZZA and get the one in Armonk, not the ones in Manhattan or in Minneapolis.

It seems that the web is making progress towards such services.  I would certainly keep an eye on Froogle.  I was also intrigued by 37signals.com which is demonstrating a “better Google.” (I learned of this via Kottke.org).  So we should expect search engines to continually improve.

However something that can accelerate towards browsable brand navigation will be the promotion of such systems by brand owners.  We see brand owners identifying AOL keywords in advertising – I don’t see advertisers communicating other ways to identify their web presense.  At some point businesses may say in their ads, “To order, Google [or Froogle or Overture] Joe’s Pizza, Armonk” (or words to that effect).

Halo Management describes itself as a “Strategic Intellectual Asset Management” company, run by a patent lawyer.  Its services are described here.  It owns a federal registration for HALO for, among other services, web hosting services.  Interland is a hosting company that offers BLUE HALO ARCHITECTURE hosting services.  Here is a copy of Halo Management’s trademark infringement complaint against Interland.

First there were the unauthorized PUMA ads (background here, here and at this point, everywhere).  Now we have ads disavowed by NOKIA and by VICTORIA’S SECRET.  Bear in mind that there are differences in degree to ad parodies.  There are ad parodies clearly presented as parodies (WACKY PACKS, for example).  There are parodies which ought to be understood as parodies, such as SIMPLY PORN).  There are parodies that ought to be understood as parodies but fool some of the people some of the time (MICHELOB OF.3d 769).  And then there are hoaxes of sufficient quality that, if coupled with a statement of authenticity, cause consternation to trademark owners (disclosure – I have responded to this letter on behalf of two websites).

And then there are conspiracy theories about viral marketing campaigns.  No comment.

Museum of Hoax Photo Gallery here.

 

Terrance Brennan is a noted Manhattan restaurateur who recently opened TERRANCE BRENNAN’S SEAFOOD AND CHOPHOUSE.  The NY Times (registration required) reports that he prevailed yesterday in a lawsuit brought by the Brennan’s Inc, described as “the company that runs the 53-yr old restuarant in New Orleans.”  Showing how much he learned during this experience, Terrence Brennan is quoted today saying “I didn’t know you could copyright a name.” (OK, to be fair,  I can’t cook).

Unfortunately Judge McKenna does not appear to participate in CourtWeb do there’s no decision to link to.  There’s more to the case than the Times reports.  In addition to the personal name issue there is a messy concurrent use situation.   Brennan’s Inc. has multiple locations and does have a federal registration.  However there are least two other split-offs from the Brennan family, one group which owns some concurrent rights in the mark BREAKFAST AT BRENNAN’S (outside of New Orleans) and one group which runs DICKIE BRENNAN’S STEAKHOUSE (in New Orleans), whose website begins “Not affiliated with Brennan’s Restaurant.”

I would hope New Orlean’s favorite Attorney, Ernie, can provide us with some local color on this story.

UPDATE:  Ernie reports that he once worked as a waiter for a Brennan’s restaurant named THE COMMANDER’S PALACE and that it was there he learned all the really useful stuff he knows.

Domain name renewal was not complex enough, so now be on the look-out for a scam email from mailto:noreply@melbourneit.com.au which advises people that if they renewed domain names through MSN or Yahoo or other resellers, then they need to renew through Melbourne IT.  Melbourne is the true registrar for MSN and Yahoo and many other ISPs – the problem is that the email is a fraud (according to this article).