[This is the 1 second delay dubbed English version of the original blurb in Japanese].  This via Politech.  Toho, owner of the GODZILLA mark, has sent a demand letter to Dave Linabury, who maintains the  DAVEZILLA humor website.  I repeat my advice from a prior post (so profound that it was repeated on Instapundit), that you should not send a demand letter you would not want to see re-posted on a website (or second-guessed by the likes of me).   I wonder if incidents such as this actually increase the number of third-party usages of the mark.

But what is a mutated giant lizard to do when its name is this famous?  There is a difference between a usage which turns your trademark into a household word, and a usage which turns it into a household name (which is dilution, and is commercial death of the brand).  The trick is to figure which situation you have and pitch the letter accordingly. 

The title of this blurb, by the way, is from one of the comments Declan received when he posted the letter, and now you get the inside joke.

UPDATE: As would be expected, many are commenting on the Zilla-ness.

MORE UPDATE: PR issue escalates.

Here is an editorial via Dave from the News-Record of North Carolina on the proposed Berman/Coble “hacking” bill (See here for text of bill). Interesting quote that the bill:

“would give record companies and other entertainment industries the right to invade our personal computers, based merely on the suspicion that we might have illegally downloaded copyrighted material.

That would be tantamount to allowing Sears or Kmart to invade your home if they believe you have shoplifted merchandise from one of their stores. And if they should accidentally bang a door or shatter a window in the process, well, no harm, no foul.”

When you come to think of it, retailers have extraordinary rights to search and physically detain customers they suspect of shoplifting (not in our homes but perhaps in our bags and pockets – I mean search, not detain).  Retailers also have interesting exposure under tort law for false arrest and other horribles when they detain the wrong person for the wrong reasons. But an analysis of existing law on a proprietor’s right of self-help (and the exposure in exercising that right of self-help) is the right way to proceed in shedding light on this bill.

Inverizon is a Missouri company providing agricultural services.  When Bell Atlantic announced that it was adopting VERIZON as a housemark, Inverizon got in line and sent Verizon a demand letter.  After Verizon responded, Inverizon left Verizon on indefinite hold.  The Declaratory Judgment Act is intended to end such limbos so Verizon filed a DJ action in Missouri, seeking a declaration of non-infringment under hte LAnham Act. Six weeks later, Inverizon brought a suit in Missouri state court, leaving out any federal claims. The district court stayed.

The Eighth Circuit has now reversed (click on ‘full text search’ and use Inverizon as a search term).  It ruled that the lower court had erred in finding that Inverizon was deprived of its forum (it clearly wasn’t rushing up the court house steps when Verizon filed its action) and, importantly, the lower court had not considered whether a federal court should be deciding Verizon’s federal claim, when it stayed the federal action.

What is of interest is the concurrence by Justice Bye, placed in the context of the federalization of trademark law.  He strongly believes that federal courts should try federal questions, however, under prevailing law, had the lower court considered that factor and still stayed the federal action, that in and of itself what not have constituted the abuse of discretion necessary to overturn the stay.  It is because the lower court did not even evaluate the federal question factor that the decision represented an abuse of discretion, and therefore the decision can be overturned.  And, while we’re at it, the Justice throws in a shot at state trademark law, namely that no one cares about it anymore (I’m paraphrasing), and that in the future, it should be the practice that federal questions, at least federal trademark questions, should only be decided by federal courts.

The firm of Lyon and Lyon is closing.  Among its notable achievements was obtaining patent protection for many of the early electric guitars, and a Fender Stratocaster was proudly displayed in its offices.  A last-ditch merger effort failed.  I was struck by the sentence in the law.com account that the “stumbling block was Lyon’s ‘very significant lease obligation.'”  It’s my understanding that other firm closures such as those of Shea and Gould, and Lord, Day Lord, while caused by underlying business and structural problems, were aggravated by lease obligations.

I am someone who traded a partner’s office with a fantastic view of the Chrysler building for an office at home.  I work with other attorneys, here and abroad, and I don’t miss the expensive real estate.   I believe that face-to-face interaction with colleagues and clients is necessary (in moderation) and I also acknowledge that some practices (trial work being the most obvious) require a specific location.  I don’t agree that on the whole, law has to be practiced utilizing several hundred thousand square feet of downtown trophy space.  Clients resent paying for it and lawyers are in denial as to how many weeks (or even months) they work merely to pay that premium..

Lyon’s NY office was not in Manhattan but in White Plains in Westchester.  Some may argue that the suburban location kept them out of the ‘scene.’  Nevertheless, the Boies Schiller firm, which maintains some mid-town space, but is headquartered in Armonk, even further than White Plains, is doing fine.

The Wall St. Journal, the NY Times and MSNBC are reporting tensions between Rosie O’Donnell and Gruner + Jahr, her co-venturer in publishing ROSIE Magazine (the re-named re-positioned McCALLS (see background)).

If the parties’ can’t resolve their differences, bu someone wants to continue the magazine, what should it be named?  This illustrates an unplesant scenario for the lawyer drafting the trademark section of a joint venture agreement (or more accurately, for the marketing people who name the joint venture). 

If a joint venture is named after a compound of two parents (which was the first choice here – ROSIE McCALLS), you could have a situation where no one will benefit from the goodwill created by the joint venture, unless both parties are prepared to permanently contribute their brands to the venture.  OWENS CORNING and DOW CORNING are examples of the form working successfully.  However, if the parties quarrel, a buy-out of one partner will ordinarily necessitate a name change (with possible loss of goodwill).

In the ROSIE situation, where one partner contributes its name to the venture, a buy-out is also problematic.  If there is a split here, G+J isn’t likely to keep the name ROSIE without her; it also might not be prepared to sell her what is in effect the McCall’s subscriber base (but you never know – also, we don ‘t know to what extent O’Donnell is bound by non-compete agreements should the joint venture be terminated).

Speaking from a trademark law  (and not marketing) point of view, it may be better to pick an original name for a joint venture (with the parent’s names used as secondary identifiers, if desired).  At least that way, if there is a divorce, there won’t (involuntary) loss of good will.

Disclaimer – We have no idea how much in the articles are true and how much is mere corporate gossip.  I just used the ROSIE situation to illustrate one potential pitfall in naming joint ventures.