Somebody created two ads showing a woman performing a sex act on a man.  Both are wearing PUMA sportswear, the PUMA stripe prominently displayed.  The ads were forwarded to Adland with the comment that these ads ran in a Maxim-like publication in Brazil, a claim plausible only if you consider the high-fashion quality of the photos, and ignore the ejaculate.  Puma has now sent a demand letter to Adland (which responded by pixillating the trademark).  If Puma had a sense of humor, it could have said something like “Of course the ads are fake, that’s a discontinued line.”

Which brings us to tarnishment, and the debate as to whether an actionable form exists.  Setting aside Adland’s First Amendment defense, does this ad cost Puma any money?  Is there a lost sale, a lost licensee?  Last week’s Victor’s Secret case expresses the sentiment that tarnishment reflects poorly on the tarnisher, not the tarnishee.  Of course, if the tarnishment takes the form of a hoax, then that might not be true (among those who never learn that it is a hoax).

p.s. I’m not posting the ad because in a random survey, I have determined that the ad is offensive to some.  If you wish to take an affirmative act and view the fake PUMA ad, click here.

p.p.s. Puma is upset by the fake ad, but Gucci paid money to run the brand positioning ad to the right.  To paraphrase Spinal Tap, there’s a thin line between tarnishment and fashion advertising.  More on that here.

UPDATE:  Actual Malice blogger guest-writes on TechLawAdvisor on Puma.

Citigroup v. City Holding, 9 Civ 10115 (RWS) (SDNY Feb 7, 2003) (available at Courtweb).  Citigroup fails to cancel CITY INSURANCE registration and apparently tolerates use of CITY-variant marks by City Holding of West Virginia (see photo left).  Double edged sword:  Citigroup had previously had to argue that it could co-exist with a CITY-variant mark in the financial field.    The long decision contains an interesting history of Citigroup’s policing efforts over the years.  Tidbit: The CITIBANK mark has 89% consumer awareness (although the decision does not indicate if that is aided or unaid brand awareness).

Prior decision here.

Via Copyfight, the text of the proposed “Benefit Authors Without Limiting Advancement or Net Consumer Expectations” (“Balance”) Act.  ISTTRNOTB (I’m serious, that’s the real name of the Bill).  Key provisions include Section 3, which expands and clarifies a consumer’s fair use rights to make home archival copies, Section 4 which clarifies the first sale exhaustion doctrine and Section 5, which allows you to throw a digital copy against a wall in order to break any DRM device which was preventing home copying.  This bill was introduced by Silicon Valley’s Congressperson.

Off-topic communism shirt available here.

If you happen to invent something like a new grape, and have to name it, choose a term that describes it.  If you would rather pick a catchy name that suggests an attribute, then you ought to do a name search.  Here is the February 20 press release from Cornell announcing its creation of the ‘Abundance’ grape.  Here is the article with the interesting headline “Grape Violates Trademark Law” announcing that Cornell has changed the name to Gr-7 after getting a demand letter from the ABUNDANCE WINE Co.

ABUNDANCE, as used by Cornell, suggested an attribute of the grape.  Descriptive terms for that attribute would have been HIGH-YIELD or HARDY or something of that nature.

Today’s NY Times features an article about USA Interactive’s CitySearch network instituting paid keyword searching at the local level.  The question of competition with global search engine arises.  The article gives the example that someone can put in “laser surgery” on the Atlanta site.  But right now I can “Google” “Atlanta laser surgery” and get hits that seem relevant (and I get a sponsored link for “Atlanta’s laser specialist.”).   The quality of the results may vary of course on the quality of the database.   A directory consulting firm, the Kelsey Group, indicates that 43 percent of small businesses, do some form of advertising on the Internet, and thus are “findable” by global search engines. 

By the way, we see the drawbacks of search – the returns for both sites joined together cosmetic laser surgery with eye laser surgery – two different markets.  The less specific the search term, the less accurate the results.

I’m all for focused directories and I’ve no issue with (non-exclusive) sales of topical keywords. To me it’s the equivalent of a shoe store paying the local yellow page directory to be listed under shoe stores.  It’s when the keyword sold is a brand name that, imho, trademark issues arise.  I hope that the Ninth Circuit will decide the Playboy keyword case soon so that this industry can develop with some guidance on the point.

I don’t have the sitzfleisch to weigh in on the question as to whether “Governments own a part of the domain name system as a matter of international law,” but ICANNWATCH, which believes this theory is “unprecedented and unsupported,” does.  This is part of a larger article predicting that Paul Twomey, an Australian politician, will become the new president of ICANN.  There are interesting allegations that Mr. Twomey has mis-used the .biz IP claim service. 

ccTLD and international law fans will also closely follow the dust-up reported here between the government of Niue, a small Pacific island whose country-code, .nu, is administered by a business out of Massachusetts.  The government of Niue is not ok with that now.

 

Slashdot announced the debut of ROOGLE, a search engine for RSS feeds and worried out loud “Let us hope it does not get in trouble because of its name.”  Given Google’s use of FROOGLE as well as GOOGLE, it can plausibly claim an OOGLE family, and Slashdot was right to worry but apparently behind the events. Roogle now announces on its home page “The name ‘Roogle’ will change.”

Time on their hands.  The Counsel to the Vice President (of the U.S.) wrote a demand letter to the operator of whitehouse.org asking that it remove this fictitious bio of the VP’s wife, this letter to the folks at whitehouse.org for running this fictictious bio of Mrs. Cheney.  Some might view the fake bio to be political speech.  The VP’s lawyer believes that the disclaimer indicating that the website is a parody is insufficent.  They’re probably bummed about the clown-nose photo as well.  Perhaps VP Cheney has coulrophobia. 

Go to the site – you be the judge.

I appreciate that the government should incur expense for ensuring Mrs. Cheney’s physical safety.  However, while the letter does mention mis-use of the presidential seal, the thrust of the letter alleges violations of Mrs. Cheney’s rights of privacy and publicity, torts suggesting economic harm.  As such, it’s interesting that the government pays for the lawyer (I’m not familiar with the law on this – if you are, please share).

Practitioner’s Note: Further proof that protesting something is the best way to ensure its universal dissemination.

Side note: in checking this out I mis-typed and wound up at www.whitehous.org, which I recognize from previous matters as a Zuccarini typo-site. Don’t hit that link if you don’t want to spend several hours killing pop-up ads.   It’s great that children might be searching for info on the White House and find “Hanky-Panky-College.”

Further aside: Coulrophobia is the term for fear of clowns.  I read that on the Volokh Conspiracy so it must be true.