Tuesday, March 25, 2008

Smashing Pumpkins goes after Virgin after 17 years

Another bizarre branding case! The Smashing Pumpkins is suing Virgin records, claiming that Virgin misappropriated its brand in tunes and ads apart from the intended use of their music, especially in a promotional campaign for "Pepsi Stuff." Although the band has worked with Virgin for seventeen years, apparently, it claims, Virgin only had permission to sell online downloads. The suit was filed in Los Angeles.

The E! News story "Smashing Pumpkins Sue Label Over Ads; Pumpkins Hammer Virgin" is by Josh Greenberg, and appears here, and (AP story on AOL) here. The general reaction of the public in the AOL survey that appears is that the suit is frivolous. A copy of the suit (from the Eonline site link) is here (PDF).

From the reports, this does sound like a case of "dilution" (Pumpkins claims its commercial reputation is tarnished) although here it appeared retrospectively, can could have been alleged even before the 2006 Trademark Dilution Revision Act passed.

One of Donald Trump's "Apprentice" tasks was to design a new Pepsi bottle and ad campaign, and I remember that the losing side made the bottle, a globe, into a "geography lesson."

Monday, March 24, 2008

Internet advertisers look for publishers interested in promoting and protecting brands

The Washington Post Express (a free condensed tabloid-looking paper for Metro riders) on Monday carried an AP story on p 12, by Anick Jesdanun, “Online Ad Showdown: Big media companies fight back by creating their own networks.” Major retailers and businesses are forming their own ad networks and placing ads on specific professional websites that fit their branding image. There seems to be an impression that the large number of personally owned blogs, in their legitimate attempt to “democratize” media content, are less likely to conform to branding standards, and that is true. Wenda Harris Milalrd, associated with Martha Stewart, apparently said [large corporate] “publishers are brand steards…. The folks .. who are assembling these massive networks, most come out of the technology sector. Some of them are good business models, but they are not about protecting brands.” The brand, as we noted, is the point of trademark protection. That was drummed into me at ReliaStar and ING before retirement.

Agreed. Blogs like these (mine) are more about reporting things as we see them, not promoting one brand.

Jesdanum has a related Newsvine story “Media Groups Share Content in Ad Deals,” March 23, 2008 (Easter Sunday) link here.

Or, closer, “Media Companies Battle Web Portals on Ads,” also March 23, link here.

Will some upscale companies pull away from ads on websites not from "the establishment"? I hope not. Some setups, like Linkshare, allow advertisers to scan all possible "publishers" within a particular subject matter group and pre-reject unsuitable publishers ahead of time. For example, airlines don't like to advertise on "less established" sites that deal with international political controversies, however well they do it.

Saturday, March 22, 2008

Scrabulous controversy (Nightline, Wired)

Last night, Friday March 21, 2008, ABC Nightline had a brief story about the online computer game Scrabulous, which appears to resembled Scrabble.

Nightline does not yet have a link for the story, which brings up some interesting questions. The story indicates that the game had a registered trademark with USPTO, but a check this morning shows that the application was withdrawn in Feb. 2008 (or go to the Trademark search at USPTO, navigate, and do a Search TM Database (TESS)).

The main legal issues seem to be with copyright – whether the offering of a game that resembles the famous board game Scrabble represents “Fair Use,” and infringes on the rights owned by toy company Hasbro.

The Facebook application is still active, here and there is a group called Save Scrabulous, story (Jan 17 2008) by Asomi Novak on Wired, here. There is also discussion of a buyout of the game on Wired (Jan 28), story by Terrence Russell, here.

ABC has an older story by Jake Coyle from Feb. 6, 2008, “The Best Applications on Facebook,” here.

The Wikipedia entry for Scrabulous is here.

It is possible that an inventor of a computer game or service could get a trademark for this and still have it wind up being copyright infringement.

Wednesday, March 12, 2008

My own domain names -- a brief history

I thought I would review my own use of domain names for the record.

In 1997, I self-published my first book “Do Ask Do Tell: A Gay Conservative Lashes Back” and used the imprint High Productivity Publishing. At the time I was naïve about the potential for the Web, but a coworker was in the business of web hosting. I had actually started online publishing with “hometown AOL” back in 1996. Since AOL owned the domain and screen-names became subdomains, the issue of domain names (and a possible relation to trademark) did not come up. This was first viewed a “personal publishing” (the predecessor of today’s social networking), and non-commercial so “branding” was not viewed as an applicable concept.

I used the name hppub.com for my first domain, starting Aug. 1, 1997. I wanted a short name, easy to type, and “not taken.” “High Productivity Publishing” took too long to type. I was naïve then about the idea or reserving multiple domain names.

I retrospect, it seems that I should have used “do ask do tell.” That would have been stronger, an easier name to remember, and would have helped establish a public presence for the book more quickly, and probably would have helped accelerate sales of my own first print run. I secured a book distributor in Minneapolis (the Bookmen, now absorbed by Ingram) and more or less let them handle it.

However, my perception then was that a “publishing company” name ought to be different from the book title. "High Productivity Publishing" at the time seemed to complement "do ask do tell" because the "productivity" suggests the idea of organizing and publishing (political and social) information in a canonical manner so that others may learn the material without the expense of formal education or politicization of depending on an educational, business, religious (particularly) or familial hierarchy to provide information. I used "High Productivity Publishing" as the publisher name when I registered the book with RR Bowker (Books in Print and the ISBN Agency). Using two different names (one for the book and one for the publishing entity) and a third abbreviated name for the domain named seemed more legitimate, but actually it was a misguided notion. I still got plenty of attention at first, making cable television appearances in Minneapolis with a lecture at Hamline University (from crutches!) in 1998. It’s important that in the book world, the “publisher” is the visible company; in the motion picture world, it is usually the “distributor” which is often distinct from the production company but that normally winds up owning the copyright to the film. In movies, people tend to connect movies to distributors for branding rather than production companies. That’s because originally the big studios (MGM, Paramount, Warner Brothers, etc.) did both, but in time the big studios tended to spin off production and focus on distribution and finance.

By 1999 the book was reasonably well known in Minneapolis, to the extent that a manager at an indie theater told me that he had heard someone was interested in using tht title for a movie. I recall that on the day that I went to see “Blair Witch Project,” another little movie (Artisan) that had created an arthouse sensation. So I setup another domain in 1999 called doaskdotell.com, to promote the idea of a movie at first. I was clumsy with this, but this was relatively early in the days of the Web, well before blogs and social networking became staples. At the same time, hppub.com was entered in court papers as the domain at issue in the challenge to COPA, the Child Online Protection Act.

By 2000 the literature was reporting cases around the country where domain names were thought to infringe on established trademarks. One problem that sometimes occurred was that older companies had not bothered to establish a presence on the Web until some other party accidentally used the same name for some other purpose, sometimes non-commercial. This has never actually affected me, but I started to become concerned about other cases appearing in the news.

Trademark, remember, relates to commercial branding. A trademark tells the customer that a product or service comes from an entity that represents a certain public identity associated with a consumer experience. It is an anti-intellectual concept. A customer trusts a “brand” and does not have to research it. At the time, I was working for ReliaStar (which had bought out Uslico) and in employee meetings the company officers (John Turner, Bob Salipante) would talk about branding all the time. So by 2000 the concept had real meaning to me, and I wondered how it could affect the book and the idea of a film some day.

Trademark, however, has boundaries. According to trademark law, different lines of business can use the same name without customer confusion, but this principle has not always been followed. Non-commercial entities are not supposed to be affected, but it is hard (on the Web) with its “free content” ultimately aimed at fame and some big sale some day to decide what “commercial” means. (That was also a problem in the COPA trial.) The “fame” of a mark used to be measured by bottom line commercial success, but it’s no longer clear that this alone is an appropriate measure. Until 2006, trademark holders had to wait until dilution or tarnishment had occurred to take action; but with a 2006 law, discussed earlier (see June 2007 in this blog) they now can sometimes act prospectively, although there are defenses of non-commercial use and parody, and the split among lines of business should still hold.

In 2000, I sold out my first printing of my first book, so I outsourced further production and distribution to iUniverse, a print-on-demand cooperative publisher. I felt that it could be harder to justify the domain name “hppub”. (I also had “highproductivitypublishing.com” for a while.) I placed more material on doaskdotell.com. In 2005, I abandoned hppub.com. In fact, a casino company took over the name for a while. I moved all the content to doaskdotell.com and kept a similar directory structure. It got indexed into the search engines quickly (I never had to submit it to them) and, according to statistical reports, people were finding it readily by fall. I find that as a whole, people remember where the material is more readily when there is one major content domain, doaskdotell.com

Now on this domain all content is free, and there is no advertising. Technically it is “non commercial” although it gives links to large corporate e-commerce sites to sell the books (Amazon, Barnes and Noble, and iUniverse). However, I started the practice of blogs (like this one) to keep up with “news” because I found that the content on doaskdotell (the “editorials” and running book footnotes) were constantly hitting “moving targets” as the issues changed over time (especially after 9/11). On the blogs I do have advertising. I’ve also started a domain billboushka.com (my “pseudonym” where the “Bill” is derived from the legal middle name of “William” (not “prince”), where I can experiment with other techniques of presentation for more flexible and non-intrusive advertising. On that blog I am experimenting with Wordpress (and its category feature) in place of blogger.

My use of my own informal "wordmark" in a screenplay that I posted caused me to be identified as a character unfavorably portrayed in a fictitious screenplay that I had posed once. The details of the incident are posted on July 27 here. But in theory, in the "case history" in that entry, if I had denied that the character was me, I might weaken a future claim on a right to use the mark. This certainly is an interesting twist in the way wordmark (or trademark, even unregistered) can affect the law in other areas.

There is also a domain johnwboushka.com which focuses on my information technology (“professional”) background only.

One feature that I’ve noted is that, from the beginning, “.com” has probably been overused. Some confusion probably could have been avoided if the domain name world had promoted “personal” TLD suffixes more. (There is a “.name” but it never caught on.) In fact, “real” companies often use .biz, which is much more expensive than .com.

Getting back to “movies”, which is where I would like to see “do ask do tell” head – yes, I am serious – let me reiterate one observation. Most studios and distribution companies use wordmark, trade dress (like the MGM lion – “The Cat”) and often music or sound. (like the lion’s roar). Companies should always use their musical marks when introducing movies. Often some of them (like Warner Brothers and Village Roadshow) telescope their marks into the background music of the movie. Of all the studios, 20th Century Fox (when will it become 21st Century?) is the most consistent in using its musical trademark (the famous fanfare composed by Alfred Newman), to the point that the fanfare itself was parodied last year in “The Simpsons” movie. Lions Gate (actually a Canadian company, I believe) has the best trademark in the business now: machinery that looks like it comes from Metropolis opens up on a scene of the “real” Lions Gate on the Greecian Coast, while the musical figure accelerates, rises three times and ends with a triumphant chord. It played to great effect before “The Bank Job”. If I could introduce “my movie” with a corporate fanfare, that would be my choice. One never knows.

I’ve sometimes wondered if the fact that two movie companies use the idea of a lion matters. It doesn’t confuse me, but I suppose some people could claim that it would. Companies in many other businesses, like European financial giant ING (my last “big” employer and source of retirement), use the lion for a corporate symbol. It seems that, in the trademark world, there is more than equal time for cats.

My doaskdotell.com domain name is registered through Dec 2, 2012 with Network Solutions.

The United States Patent and Trademark Office has a link on trademarks and domain names, here.