The owners of buildings in Times Square sued the producers of the movie “Spider-Man.”  The film digitally modified the billboards on those buildings deleting the ads which appeared, replacing them with other ads.  When I first heard of the suit, my reaction was “they would have been sued if they hadn’t removed the ads.”  Spider-Man won.

The Baltimore Ravens of the National Football League were found to have infringed the copyright of a logo designer named Beuchat, in coming up with a new logo (affirmed by the Fourth Circuit back in 2000).  The damages trial has now concluded and the jury came back with zero damages (decision not yet posted but check here).  Law.com reports that the jury must have been swayed by the Ravens’ counsel’s argument: the revenue from the team’s merchandise had “nothing to do with the logo per se but everything to do with fans, NFL brands and the power of professional football” (emphasis mine). 

There is a certain irony in hearing Baltimore fans getting credit for the goodwill of the RAVENS brand?  They must now be wondering two things.  First, where are the royalty checks and second, how stupid were they in 1984?  At that time, when Baltimore Colts’ owner Robert Irsay moved the team to Indianapolis, Baltimore was so outraged that the City brought an unsuccessful eminent domain action in an attempt to seize ownership of the Colts.  Indianapolis Colts v. Mayor and City Council of Baltimore [741 F.2d 954 (7th Cir. 1984)]; [733 F.2d 484 (7th Cir. 1984)] (not available in digital format). 

Baltimore took a second shot at reclaiming what it believed to be its own in 1993, throwing its support behind a new Baltimore Colts, this a CFL franchise.  The Seventh Circuit  took little time to find that the Indianapolis Colts did not abandon the mark when they moved, and that BALTIMORE CFL COLTS was confusingly similar to BALTIMORE COLTS.  To illustrate how the anger had not died after a decade, Johnny Unitas, famed Colts quarterback from the 60’s, testified that the Indianapolis transplants were not his Colts.  To which Chief Justice Posner of the Chicago School of Metaphors replied: “a sports team is like a Heraclitus’ river, always changing, always the same.”  Really.

Clearly, the fans of Baltimore should merely have framed the problem back in 1984 as a dispute among owners.

 

 

I’m sorry there have been no blog items since Thursday but I was involved in something very important.  Musa al-Mustapha of Nigeria emailed me.  It’s really a sad story about how his father received $18 million from former dictator General Sani Abacha, but then the father died, and you know those court systems!!  One thing led to another and now Mr. al-Mustapha asked my help in getting the money out of the country.  I usually don’t work on commission but this time I’m looking a $1.8 million!! I have no idea who referred me but I’m just flattered he thought of me, when Trusts and Estates isn’t even my field!!  As soon as I can get together some kind of “good faith deposit” or something I start.  Sort of a reverse retainer thing.  I guess that’s how the “really rich” do business!!

Here is a Washington Post article on a request by domain name registries Verisign, Nominet and DeNic, approaching DoC to reign in ICANN.  One of the things that’s bugging Verisign these days is that ICANN is commenting on how much Verisign intends to charge for its Wait List Service (I’m now on the Transfer Task Force of the Names Council of ICANN  which means that I get email about this stuff).

Everyhing about ICANN and the domain name industry depresses me so I will leave the commentary to Icann.blog et. al.  I will only cite the funniest (and most cynical) paragraph from the report released today from the task force for evaluating new TLDs, discussing the public comments:

Although the responses on the ICANN Forum were traditionally spirited and frank, almost all were off-topic insofar as their authors were intent on conducting their own evaluation of ICANN, of the new gTLD registry operators and registrars, and of the start-up processes, and did not comment on the Interim Report itself. Nevertheless, they did serve to reflect the general areas of concern associated with new gTLDs that were at least of interest to those segments of the community that participate in the ICANN on-line forums. There were three on-topic comments on the Interim Report itself. The Task Force carefully considered these comments, but for various reasons either did not accept the comment, or believe the essence of the comment was also incorporated elsewhere in the Report.

Paraphrase: There’s no love for ICANN, the registries, and the registrars; no one in the public can follow instructions on a simple request for comments; if they do say something relevant, it’s nothing we don’t already know.

What’s a TLD without a dispute resolution procedure.  The first USDRP decision (right, the dispute resolution procedure for the .US TLD) has been handed down.  CDW prevailed over the registrant of cdw.us, who didn’t show up.  The first 8 filed USDRPs are listed here. 

I happen to know that a big-wig at Neustar, registry operator of .US is a reader of the Trademark Blog.  Maybe he can write in and talk a little about (1) how the .US sunrise procedure worked and (2) what are the early registration numbers for the expanded .US space.

I should note that one of the domain names for this blog is trademark.blogs.us.

A Danish Band, Aqua, released a song named “Barbie Girl,” the lyrics of which would likely have been forgotten, but now, thanks to this lawsuit, will be reprinted in F.3d.  The characters in the song are named Barbie and Ken and the chorus is:

I’m a Barbie Girl, in my Barbie world, Life in plastic, it’s fanstastic, you can brush my hair, undress me everywhere, imagination, life is your creation.

Anyway, Mattel sued lots of different companies associated with the record, lost at trial and appealed to the Ninth Circuit.  Mattel alleged trademark infringement, dilution and a brand new cause of action Mattel created under Section 44 of the Lanham Act.  That last cause was dismissed under the doctrine that you can’t plead non-existent causes of actions (See the decision at 10502.  Unlike law.com, I provide links to the actual decision so that you can see that I don’t make this stuff up).

First, the trademark infringement cause was dismissed.  The Ninth Circuit adopted the reasoning in the Second Circuit Fred and Ginger case, in that use in a title tends not to be perceived as designating origin.  The public doesn’t understand a movie named “Fred and Ginger” to be endorsed by Ginger Rogers, and it doesn’t perceive a pop song named “Barbie Girl” to be endorsed by Mattel.

More importantly. the dilution cause under Lanham Act 43(c) was dismissed.  There is a tension in the dilution statute because there is unlawful tarnishment (a strip club named ACME’S) and lawful tarnishment (ACME is evil because . . . ).  That’s why the defenses to dilution in Section 43(c)(4) are fair use (as in comparative advertising), noncommercial use and news reporting. 

Here, the only prong available to MCA as a defense would be non-commercial use.  However a song is clearly a commercial use (as would be any type of potentially dilutive use which required a 43(c)(4) defense).  So the Ninth Circuit turns to the First Amendment caselaw, and points out that the core notion of commercial speech is that it ‘does no more than propose a commercial tansaction.”  But this speech (use of the name in the title and song) is ‘expressly intertwined with expressive elements.’  That which is not purely commercial speech is noncommercial speech, and thuis protected under the First Amendment. Dilution claim dismissed.

See additional blurbs about the case below.

 

 

The Ninth Circuit in Mattel, noting that song titles tend not to be perceived as designating origin, finds that “. . . upon hearing Janis Joplin croon ‘Oh Lord, won’t you buy me a Mercedes-Benz?’ would we suspect that she and the carmaker had entered into a joint venture.”  Sure, baby boomers aware of her psychedelic Porsche would not, but those who knew that the posthumous copyright owner licensed the song to Mercedes might suspect it, as would those who purchased the song as a ringtone for their Nokia phone.

Until today I have never laughed out loud  while reading a Ninth Circuit Opinion.  This is the last paragraph of Mattel v. MCA (discussed above):

“MCA filed a counterclaim for defamation based on the Mattel representative’s use of the words “bank robber,” “heist,” “crime” and “theft.”  But all of these are variants of the invective most often hurled at accused infringers, namely “piracy.”  No one hearing this accusation understands intellectual proeprty owners to be saying that infringers are nautical cutthroats with eyepatches and peg legs who board galleons to plunder cargo.  In context, all these terms are nonactionable “rhetorical hyperbole,” (cite omitted).  The parties are advised to chill.  (Emphasis mine.)