The Trademark Dilution Revision Act of 2006 (2005)

Disney uses "dadt" as a domain name, unaware of its "political" meaning

2012-01-03T06:56:00.000-08:00

Yesterday, while looking up the “Live with Kelly” show (ABC) online, I found that it was on a domain belonging to Disney, dadt.com. Specifically, the link was this (the page actually gives a javascript error in Chrome sometimes). I found that dadt without a directory doesn’t resolve and that it does not have a USPTO live trademark. Domaintools (WHOIS) does show the name was registered by Disney in 2000. The acronym seems to stand for “Disney American Domestic Television”. Apparently the company was not aware that DADT was the abbreviation for the notorious “don’t ask don’t tell” policy for gays in the military.

I’ve discussed my own doaskdotell.com domain most recently on Feb. 4, 2010 here.

Picture: An SLDN rally from about 2007.

Kellogg's uses same brand for more than one cereal -- look at your Special K

2011-12-05T06:13:00.000-08:00

Did I see this right? Kellogg’s Special K has two different cereals, the “original” is much more bubbly, almost like the original Rice Krispies of the Howdy Doody show of the 50s.

That’s what I noticed this morning.

If a company uses the same mark for two different products, doesn’t it “dilute” its own mark? Yes, it has a right to, but ….

One of the worst cereal TV ads in the 50s was for something called “Alphabits”, a sugar-coated, pastel-colored cereal whose advertising was based on showing little kids misspelling words, exploiting the viewer’s “nicer weakness”.

Yes, some uses of trademark are “legal” but culturally offensive.

Do airports trademark their destinate codes?

2011-12-01T08:23:00.000-08:00

On a day that the Los Angeles International Airport lost power suddenly during violent Santa Ana winds, I noticed that the airport doesn’t own its own acronym as a domain. LAX belongs to the Lacrosse Superstore; the airport is Laxa.

I suppose most airports would claim trademarks on the standard identification codes (DCA for Reagan, DFW for Dallas-Fort Worth, IAD for Dulles, BWI for Baltimore). But would that guarantee them domain names?

Today I accidentally typed googla instead of google and got a warning from Webroot. It seems to me that it shouldn’t be such a big deal to get fake sites shut down under a SOPA worded narrowly and properly.

Wikipedia attribution link, Santa Ana winds.

P.S.: later reports say that the strongest winds were around Mammoth Lake CA. I've driven US 395, the Owens Valley road, many times. It's scary.

Would SOPA be effective against "parasite" domains (based on misspellings or different tld's)?

2011-11-08T15:20:00.000-08:00

There’s a bill in Congress, called SOPA (Stop Online Piracy Act) in the House and Protect-IP in the Senate, discussed on the “BillBoushka” blog particularly on Oct. 27.

Yesterday, I ran into another “social survey” when I tried to access “khanacademy.org” and misstyped it as “kahnacademy”. It’s a very natural error. It strikes me that the owners of legitimate sites (Khan Academy is well known for online tutorials in many subjects) would want to pursue trademark dilution claims against deliberate imitators. Perhaps SOPA makes it easier for them to shut down clones, either for parked domains (as in the past) or to send spam or malware.

The problem will be due process – whether there are areas of gray where sites that are actually legitimate could get caught in the middle.

In the meantime, larger sites ought to reserve (as equivalent domains) plausible misspellings of their domain names. I don’t know why neither Webroot nor MyWOT caught this misspelling as an obvious “parasite”.

You can check the original and parasite names on “domain tools” (WHOIS) and see different registrants. That could help provide some “evidence” for “due process” in a takedown.

I do see a “doaskdotell.org” (mine is doaskdotell.com) at Godaddy, and I don’t recommend going to the .org, don’t know what you might get. (Something else I noticed: MyWOT doesn’t like “Keywordspy” which looks up domain names.)

"Occupy" could become a trademark associated with the new protest movement; more on my "do ask do tell"

2011-11-01T07:06:00.000-07:00

Protester-entrepreneur (an oxymoron?) Robert Maresca (with spouse) wants to trademark the various “Occupy” movement names (“Occupy Wall Street”, “Occupy D.C.”, etc.). The trademarks would apply to various promotional items like T-shirts and silk screens. The news story is here. CNN has a similar story by Kristina Sgeuglia, mentioned yesterday during the morning on the network, here.

Maresca says he will turn over all money made from selling items to fund the Occupy movement.

It’s perfectly legitimate for “non-profits” to own trademarks. (Consider “Blue Cross, Blue Shield”). The important concept is that the entity uses the mark in commerce (even for non-profit purposes), such as goods or services.

As a phrase that identifies a political protest movement of concept, “Occupy Wall Street” is not trademarkable. But if it sells goods to help its cause, it can set up a brand name for the goods, which could well be “Occupy”. There is some legitimate question as to whether common English words should be monopolized as trademarks (or wordmarks). But typically a trademark is supposed to apply to only one line of business at a time.

Once registered, Maresca or any similar holder of a trademark for “Occupy” could file against other entities for prospective dilution, according to the 2006 law.

There could be questions as to how “commercial” a usage really is. If a proposed trademark holder can process his or her own orders and credit card operations (under stricter security guidelines) on its own server, rather than outsourcing to Amazon, for example, does it have a stronger claim? (either with the USPTO or later in court). I wonder. The ability to do so could be evidence of economic scale commensurate with a trademark claim.

The main entities that could be affected could be domain name holders who don’t claim trademarks, for other purposes than commercial (political speech). But ICANN generally supports domain name holders who registered in “good faith”, commercial or not.

As for me: I’ve used “do ask dot tell” for the title of two (now three) of my books since 1997, and as a domain name since 1999. To date, USPTO shows only one attempt to trademark the phrase, serial 74700025, dead, abandoned June 13, 1996, originally filed by Robert J. Powers (author of two books “A Manager’s Guide” and “A Family and Friend’s Guide” to sexual orientation, in the mid 1990s). The marks would have been used for “buttons, paper weights, stickers, writing instruments, notepads, banners, promotional materials for books and workshops”.

I have thought about the possible use of “Do Ask Do Tell” as a movie distribution company for independent film, especially films have to do with LGBT issues, most notably the historic fight over the military gay ban, or “don’t ask don’t tell” policy, and concentric issues. I have had at least one brief business discussion on the idea (yesterday).

Taylor Swift threatens "trademark" lawsuit against Celeb Jihad

2011-10-31T07:58:00.000-07:00

Singer Taylor Swift is threatening a trademark infringement lawsuit against a website “Celebrity jihad” for presenting (nude) pictures that it claims are of her but are not. How is this a “trademark” issue?

The story broke on CNN Monday morning. Here’s a story from International Business Times, link.

“Celeb Jihad” has its own account here. Note: the site is very slow this morning.

My favoite song of Swift is "Mine", on YouTube here. In January, it was the most common song on Sirius XM on a car business trip to Charlotte.

"Life Is Good" is a trademarked name

2011-10-25T07:10:00.000-07:00

While driving in Arlington yesterday, I was behind a pickup truck with a “Life Is Good” image (embedded on a picture of a tire) on the back bumper, and I could even see the trademark “r”. I thought it was interesting that a phrase of such common words could be trademarked, so I looked it up, here. It is both charitable and commercial.

I looked it up at USPTO and found it pretty recent (2011), with a description “Entertainment in the nature of festivals featuring live musical performances, games, speeches and food”.

The phrase for my own domain “Do Ask Do Tell” still has only the one abandoned attempt from 1995.

"Decca" v. "London" in music provides a trademark story; Amazon changed everything

2011-10-07T08:22:00.000-07:00

If you want to read a good trademark story, look up the history of Decca Records in Wikipedia, as well as London Records (both labels are easy to find with searches).

In the United States, the Decca name was sold off as a separate company, so for years British Decca sold classical music in the US on the London Label, which usually had a “red seal”. In the 1960s, many audiophiles considered London the most consistent label as to high quality of manufacturing in the US (the best competition was Columbia, then belonging to CBS). Decca was sometimes used to press Deutsch Grammophone recordings, but sometimes had inferior pressing quality (as I found out with a Furtwangler Schubert 9^th, and a Decca Bruckner Fifth). That was not good for the Decca “brand” but in the 1960s news spread more slowly. Audiophiles then paid more for imported “DGG’s”.

When CD’s came into vogue in the 1980s, Polygram pressed CD’s for DG, London and Philips with the same facility.

Now, it seems, British Decca is sold directly through Amazon as if it were equivalent to "London", was with a recent recording of music of Nico Muhly (my "drama" blog Oct. 4). Both London and Decca use the same-look "trade dress". The presence of e-commerce (especially Amazon) has made old arrangements to use brands differently across the Pond infeasable.

Branding was important in the 1960s in another sense in the way classical records were sold. Stores had “reputations” based on the discounts they offered, which were considerable in places like Record Sales in downtown DC (in days when mono records listed at $4.98). Other stores (like the Disc Shop on Dupont Circle) branded themselves around quality, offering pre-listening in the store but few discounts. In those days, collectors took manufacturing and retail care seriously.

President Obama signs "America Invents Act"

2011-09-18T09:38:00.000-07:00

President Obama has signed a new patent bill (“The Leahy-Smith America Invents Act”) into law, but analysts are questioning whether it wil really create more jobs, or invite turf-protection keeping out other innovation, as we’ve noted here before with patent abuse.

CNN Money has a story on it here. The story gives the chronicle of i4i and Microsoft.

The White House has a press release on the bill, signed at a local high school, here.

The White House claims that the law will reduce litigation.

The bill was HR 1249 and became Public Law 112-29. The govtrack reference is here. Sponsored in the Senate by Patrick Leahy and by Lamar Smith (R) in the House.

Would gay bars want to trademark their names? A road adventure (and a warning about red light cameras)

2011-09-03T15:47:00.000-07:00

Driving down Philadelphia Street in Ocean City (coming down from Rehoboth) I noticed a “JR’s” steak house. Actually, from the quick picture while stopped at a light, I see "JR's Ribs".

I wondered, mischievously, could the use of that name produce a trademark problem since the chain of gay bars with that name is so well known (in several cities, at least Washington, Dallas, Houston and Denver).

But the name has been used in suburbs and other cities for family restaurants, apparently. And in Dallas, other characters from the show generate names of gay bars, like SueEllen’s.

Trademark law generally allows the same name to be used for different kinds of businesses, because they won’t cause “confusion”, although that idea hasn’t always been followed well. Certainly, a character in a show is a different entity from an eating or dancing establishment.

But as the gay community becomes more seamless, at least in many parts of the country (with the acceptance of gay marriage in some states), would the idea that a brand needs to convey whether a place is gay or straight hold water? I wonder.

One other thing about Philadelphia Street (southbound). I noticed red light cameras at every intersection, but no signs warning about photo enforcement of traffic laws (becoming common in some areas in Maryland).

What gives there? (A photo enforcement camera should cause consumer confusion.)

EFF sponsor boot camp for app developers to handle patent trolls; the Lodsys litigation; Perry's "tort reform"

2011-08-27T09:21:00.000-07:00

Electronic Frontier Foundation (EFF) is settling up a “Virtual Boot Camp for App Developers” called “Patent Trolls and You”, link (website url) here (post by Julie Samuels). It gives a link to a complicated series of litigation against Apple developers by a company called Lodsys, which has somewhat become the Righthaven of the patent world, with a similar “business model”.

It’s interesting that a lot of the litigation is in plaintiff-friendly Texas, when Gov. Rick Perry, a likely front runner for the GOP nomination for president in 2012, brags about his efforts in tort reform in his state. This matter does not support his claims.

Update: Aug. 29

On Piers Morgan, guest Mark Cuban recommended doing away with software patents.

New patent litigation challenges "one party rule", could affect ordinary web hosts

2011-08-15T06:59:00.000-07:00

Julie Samuels of Electronic Frontier Foundation has an important story Aug. 10 about patent reform, specifically, challenges to the traditional “one party” rule in patent law, link here. The rule has been that only one party could be sued for infringement in a multi-step process. But in Akamai Tech. v. Limelight, there is an attempt by a plaintiff to claim separate infringements for (1) storing content on a server and (2) tagging remote content. The case is before the Washington DC Circuit. The case could conceivably affect “consumers” or ordinary web users who purchase shared hosting services. The author also gives examples from Medicine.

Obama mentions patent reform in relation to debt ceiling

2011-08-04T07:13:00.000-07:00

In his speech about signing the debt ceiling bill Tuesday, President Obama mentioned the need for patent reform, a remark that sounded curiously off-topic.

He may have been referring to excessive patent right “abuse” that drives up the cost of prescription drugs, especially for seniors and therefore for Medicare Part D.

However, as noted here before, some advocacy groups like Electronic Frontier Foundation, have criticized current patent law as potentially anti-competitive, making it too easy to get questionable patents to discourage others to try innovation.

Social media requirements to use "real names" need to recognized trademark significance of names to some artists

2011-08-01T10:29:00.000-07:00

Recently (July 28), I reported on my “BillBoushka” blog requirements by Facebook and Google-Plus that user accounts be set up with “real names”, whether legally given or commonly known.

I think that service providers should realize that some artists and others use “nicknames” as legally recognized trademarks for business activity. Service providers who want members to work only in identified (not anonymous) environments should provide, on profile panels, places to enter legal names, nicknames, and trademark and pen names, so that visitors can check and not become confused. But some providers do not provide enough buckets for all of this information.

Public transportation/highway trademarks such as E-ZPass and perhaps SmartCard work; MN shutdown affects Coors

2011-07-14T06:36:00.000-07:00

On a recent trip from northern Virginia to New England, I used E-ZPass (link) for the first time, and found that it worked perfectly. (No matter, Friday’s deluge made the southern section of the NJ Turnpike a parking lot for a while.) It does seem that “E-ZPass” works the way a trademark should. I bought it from a website in Maryland for the Cross-County connector, got a Virginia-labeled device, and found that it works in all states that I tried, including New York and New Hampshire.

But, in fact, E-ZPass isn’t used in all states, mainly in the east. Here is a FHA chart.

According to USPTO, the trademark (and associated “property rights”) belongs to the (non-profit) Port Authority of New York and New Jersey, for use in any state.

It seems to me that the same concept should be tried with SmartCard for transit systems. One electronic card could work in all subway systems. Right now, Washington DC uses SmartCard, and New York City uses MetroCard. Why not have a system with just one card, and a trademark that means “use in any mass transit system”, including the parking lots. Legally, the ownership claim to a national mark for this name could be complicated. (Here’s a basic website) USPTO shows many marks now.

The idea could give IT companies like EDS some business. A entity does not need to be “for profit” to have a trademark.

Here’s another tidbit: Miller Coors had to stop selling beer in Minnesota because the state government shut down over a budget battle and the state could not process its brand application.

Righthaven trying to copy the "patent trolling" model now, which may be more "lenient" for the plaintiff

2011-06-25T14:44:00.000-07:00

The latest twist in the Righthaven copyright troll saga is that Righthaven now wants to metaphorize itself to “patent trolls” as if that were a virtue. Apparently patent law does not require as exclusive a right of ownership as does copyright, the way statutes are written. Steve Green of “Las Vegas Inc” has a story about it here.

Green quotes the Electronic Frontier Foundation as having written “Yet because patents can be anywhere and everywhere in these technologies, the average user has no way of knowing whether his or her tools are subject to legal threats. Patent owners who claim control over these means of community discourse can threaten anyone who uses them, even for personal noncommercial purposes.” Does this mean that the content posted by a blogger or website owner could be forced to be taken down if the company hosting it had violated a patent? I haven’t personally heard of this happening.

EFF has its link for its “patent busting project” here.

The Righthaven situation is covered on the “BillBoushka” blog under the “mass litigation” Blogger label.

Best Buy protects the "Geek" in "Geek Squad" -- even from "Chuck"

2011-06-20T14:02:00.000-07:00

Nathan Kopper has a brief article “Geeks become popular in trademark disputes” (link) and Miguel Bustillo has a more detailed story on the front page of the Monday June 21 Wall Street Journal about legal action taken by Best Buy (of Richfield, MN) against other companies for trademark infringement with the word “Geek”, since Best Buy owns Geek Squad (link).

Best Buy says that it only acts when the trade dress (the orange and black or formerly black and white emblems and uniforms) or other practices, like calling techies agents, are involved.

There have been other companies that use the “geek” word, apparently without problems, like Geeks on Call (link).

Best Buy objected when NBC wanted to use the Geek Squad and the Best Buy chain in the comedy spy series “Chuck”, which wound up inventing the “Nerd Herd” and “Buy More” pseudo-trademarks for the show (with different colors). Publicly traded companies worry that if they are not aggressive in defending trademarks against small infringements, larger battles will ensue. Remember the battle back in 1999 between Amazon.com and a small Minneapolis bookstore?

Commercial films and television series often do use fictitious variations of major corporate names, apparently because of trademark dilution law.

Anyway, your favorite younger musician (even classical) is now a geek, and your future boss will be a geek. Remember what the Erika character tells a fictitious Mark Zuckerberg at the end of the opening scene of "The Social Network"?

Picture: no, there's no connection between Best Buy and LDS. I just wanted to use this old family trip picture.

More on "patent trolling": Tech Dirt artcile links Myhrvold to practice

2011-06-05T11:18:00.000-07:00

Tech Dirt has a provocative story linking the business operations of Nathan Myhrvold to “patent trolling”: setting up small companies, “selling” them patents, and then using these companies to sue legitimate inventors. The model sounds vaguely like Righthaven and copyright trolling.

The Tech Dirt link is here.

The terms “bait and switch” and “patent shakedown” get used here. It’s pretty easy to imagine the same kind of operation with trademarks against amateur domain name holders, claiming prospective infringement under the 2006 law.

Misspelled domain names: pure trademark dilution: "don't do it"

2011-05-27T06:04:00.000-07:00

If anyone thinks it’s cute to register a domain name that is a misspelling of a well known company, and then either park it to offer links that companies pay for, or come up with scams and “surveys”, leading to wake-up cell phone texts, I’d say, don’t do it. It’s trademark infringement. The trademark holder have every right to go after “you” for trademark dilution. I suppose most of these “sites” are hosted offshore and are harder to go after, maybe. Yesterday, I got a good comment on my Internet Safety blog about a Feb. 27 posting on a “social survey” scam based on misspelling “Facebook”.

What about trade names, pen names, Twitter ID;s, T pseudonymns,

2011-05-19T08:26:00.000-07:00

My legal name is “John William Boushka” and my nickname has always been “Bill Boushka” which I used as a pen name for my “Do Ask Do Tell” books.

I looked up the question as to whether a pen name can become a trademark, and found a site called “PublishLawyer” with a general page on trademarks. Generally, yes, if it’s not someone else’s name, too, and doesn’t infringe on anyone. The link is here. Note that a “trade name” is not the same as a trademark, the latter of which needs to become associated with a specific product or service (as a brand).

How many people know romance novels by author name in a grocery store? It seems to me that “Nora Roberts” sounds like a real trademark, for a particular “brand” of fiction.

There is talk that Twitter ID’s will become the subject of trademark controversy. Some artists have become clever with their Twitter names, to the point that they become to sell the artists as if they were brands. Will corporations start cracking down on “twitter squatters?” Here’s a post on that (link).

Group tries to trademark "urban homestead" and monopolize its use

2011-04-11T07:00:00.000-07:00

The use of generic terms as registered trademarks is again creating an issue, according to an April 5 story by the Electronic Frontier Foundation, link here.

This time, the generic term is a phrase “urban homesteading”, or something similar, registered by the Dervaes Institute (link) Now there is a book by Kelly Coyne and Erik Knutzen, “ titled “The Urban Homestead: Your Guide to Self-Sufficient Living in the Heart of the City” (amazon link). According to the EFF story, the Institute got Facebook to take down pages promoting this book and the activities of some other groups, such as a Denver farmer’s market, over a “bogus” trademark.

I looked up Dervaes at USPTO and found it had used mark 3855377 for "Urban Homestead" and 77326565 for "Urban Homesteading".

Generally, USPTO has said that different industries can use similar wordmarks as long as there is no chance of confusion, and it has also said that it is not likely to register common phrases or English idioms as trademarks.

A brand is supposed to be distinctive within an industry, not shut others out of the industry.

Below: a company uses the word "trademark" as part of its corporate name (the blue sign):

Charlie Sheen moves to trademark many of his "catch phrases", stirring debate on "common words" as trademarks

2011-04-09T08:18:00.000-07:00

Bad-boy comedy TV actor Charlie Sheen is going to trademark at least 22 of his “catch phrases” , according to media stories, such AP’s Anthony McCartney (reported by WPTV) link here.

There could be real issues if he moves to trademark common idioms and words. I found a list of the catchprhases at a site called “IPBrief” (website url) here and they include the word “winning”. Can you really trademark "I am not bi-polar"?

Others have joined in the fray, with attempts to trademark phrases involving various uses the word “winning”, as in this Hollywood Reporter story.

It’s not certain that the USPTO will approve all of these marks (even with the government not shut down!) Usually approved marks appear at the USPTO website in about 90 days.

Senate introduces Patent Reform Act, making challenges to anti-competitive patents easier

2011-03-09T10:12:00.000-08:00

It would be well to note that the Senate is pondering a “Patent Reform Act of 2011”, S. 23, introduced by Patrick Leahy (D-VT) with govtrack link (website url) here.

Electronic Frontier Foundation has a major writeup, by Julie Samuels, here. The reforms include raising the bar for “willfulness”, and at the same time a make the provisions for potential challeges to patentability more useful, particularly various kinds that center around a nine-month waiting period. (It’s rather like an “anti-prospective-dilution” provision.) There is also a limitation on “business method” patents in procedures that don’t involve technological innovation, which hurts competition from small business.

New professional or theme-oriented TLD suffix will raise trademark issues

2011-02-07T06:56:00.000-08:00

The looming opportunity for profession-dependent high level TLD’s from ICANN will raise trademark question

The general idea is that only “professionals” would use their own generic TLD, which is supposed to help with branding. For example, the music group “Queen” would have a domain called queen.music, which will help it get more revenue-generating traffic because “queen” is too generic a word to be used alone with “dot com”. (The official website is “queen online” here )

But how would something like “.authors” work? Would self-published writers be excluded? Would only those able to generate advances be allowed in the club?

Trade interest groups will pay ICANN about $185000 plus membership for the right to control the TLD, from which they can sell domain names.

Ian Shapira has the story (“Rush is on for custom domain name suffixes”) in the Monday Feb. 7 Washington Post here. The new suffixes will become available in early 2012.

Now, we have "patent trolling", too (FlightPrep v. Runway Finder)

2011-01-15T07:29:00.000-08:00

Julie Samuels has an important story at Electronic Frontier Foundation today about “patent trolling.” A company called FlightPrep (link ) has been using a patent registered in 2001 to go after other small businesses that generate flight plans or give information about runways. (I can imagine that the TSA would be concerned about this.) In fact, Runway Finder was forced off line, according to its own blog, here.

The EFF article is here.

The FlightPrep at USPTO is here.

There is also a “Boycott Flight Prep” site here (not yet checked by McAfee).

Trademark claims made against parody sites, or sites using common words for domain names ("Lamebook"?)

2011-01-01T07:23:00.000-08:00

An article by Corynne McSherry on trademark law abuse is worth noting at EFF, “2010 Trend Watch Update: Fair Use of Trademark”, link here.

The main concerns are frivolous lawsuits claiming (prospective) “trademark dilution” on sites involving parody (such as action against “Lamebook” (site ) from Facebook”) and suits blocking the use of common English words in domain or business names, such as “Entrepreneur” or “Face”. Lamebook does “look” like a parody of Facebook and contains a plea for funds for salvation.

"Eclipse": It's a movie, it's a chewing gum stick; or it's a natural occurrence

2010-12-19T12:46:00.000-08:00

I saw a Spearmint chewing gum with the “Eclipse” brand in a 7-11, with pictures of the young stars from the third movie (“Eclipse”) of Summit Entertainment’s famous fantasy “Twilight” movie franchise (and Stephenie Meyer’s novels). (By the way, “Breaking Dawn” is now filming, according to imdb.)

I don’t know what the legalities were, but I wonder if Spearmint needed to pay for permission to brand its chewing gum product? Or is Summit Entertainment just advertising its DVD’s?

Generally, in trademark law, unrelated products can use the same brand name, but what happens when one product advertises another?

There’s also “right of publicity” considerations.

This is a good one for comments.

Recent government raids, upcoming COICA bill raises trademark issues, too

2010-12-01T05:26:00.000-08:00

So here we go. The government has shut down 82 or more websites for primarily trafficking in counterfeit goods (there were copyright issues, too), as explained on a Nov. 30 post on the “BillBoushka” blog.

So the government has certainly stepped in on what obviously amounts to “trademark dilution” – to sell counterfeits of goods under established brand names. But here it’s government stepping in, not the individual companies; a number of the sites were involved in multiple brand infringements.

I’ve covered there the COICA bill in Congress, which would address trademark issues as well as copyright. I’ve also covered the idea that it’s a bad bill because it allows shutdown of sites (and forfeiture of domains) on trademark (and copyright) claims without due process.

Recent book on online reputation brings up some trademark issues

2010-11-18T15:16:00.000-08:00

I plan to review the 2008 book “Radically Transparent: Monitoring and Managing Reputations Online” (Andy Beal and Dr. Judy Strauss) soon on the books blog, but I wanted to note that some of the advice in the book bears on the ongoing debate on trademark law, Internet search engines, and domain names.

The authors provide a detailed discussion of how to take advantage of SEO, or search engine optimization, so for companies – especially smaller ones trying to become established with “brands” – wordmarks identifying companies and their products or services become very critical because their use is so likely to affect search engine results. Issues with this have sometimes appeared in court already. Skillful choice of workmarks and their use in metatags on the web is probably more effective than paying for placement.

The authors also discuss the best way for individuals to brand themselves (Ok “pinning a label on yourself” as my father used to say, as if I were Chicken Little) with domain names. To make your domain name unique, add your hometown and profession. That would answer problems where you have the same name as a celebrity. Now I can immediately think of some questions. If your profession is IT, should you get down to something like “mainframe” or “Web”? People’s careers have to shift gears so frequently these days that it sounds like you could put yourself in a box, even quicksand.

Can "Jisgsaw's" mask be trademarked?

2010-11-02T09:12:00.000-07:00

Okay, you have a great idea for a movie “Saw 8”, or maybe “Hacksaw”, and you want to use Jigsaw’s mask in your movie.

Well, Lionsgate (and/or Twisted Pictures) surely owns a trademark on the “Saw” brand of films since it is a series, and also one on “Jigsaw” as a character, with the particular mask. (Curiously, I couldn’t find either one readily at USPTO.)

What may be more relevant is that there have been numerous defunct television series that aspiring writers would want to adapt for indie films. “Everwood” (Warner Brothers) would be a good example; another is “Jake 2.0” (UPN/CBS). It’s always seemed to me that television networks and media companies ought to set up clearinghouses to sell legal rights to characters or series they no longer want to produce. I do know that comic book publishers jealousy guard the rights to their characters.

Just a thought for the “creative.”

Now, if I wrote my own horror movie, I’d make up my own villain. I don’t need Jigsaw. (“Do you want to play a game?”)

Halloween attraction called "Field of Screams" creates trademark battle in Maryland with a nonprofit

2010-10-23T07:25:00.000-07:00

Here’s a curious trademark battle going on, between the Mountville, PA “Field of Screams” attraction, and a non-profit “Field of Screams” fundraiser by the Olney, MD Boys and Girls Community Sports Association. It’s wound up as a trademark claim in a Maryland court, with some urgency. The Oct. 17 Washington Post story by Maria Glod is here.

The media sometimes called it a copyright claim, but it is not; titles can’t be copyrighted. They can be trademarked when they are repeated in a series or at various locations, to the point of becoming a commercial “brand”.

Tradenark dilution might occur among different lines of business

2010-10-05T06:39:00.000-07:00

WiseGeek has a good layman’s explanation of “trademark dilution”, authored by S.E. Smith (no date given, but I presume since the prospective dilution law passed in the fall of 2006. The link is here.

He correctly points out that trademark law protects both consumers and businesses, which must invest in building a publicly identifiable brand.

Smith writes that trademark dilution may occur among unrelated products or services. He gives an example of a breakfast cereal getting linked in consumers’ minds with a tire company. That raises the prospect of negative linking. This idea is more controversial. For example, I am not confused by the fact that there is a Lowe’s home improvement company and that at one time there was a Loew’s hotel company and theater chain. (I once almost got a computer programming contracting gig with Lowe’s.) However, the degree of cognition and education expected of consumers seems like a critical point. The problem can become more serious because it is so easy for an individual to register a domain name that accidentally is confused with a company the individual did not know about, even after making reasonable efforts to look for the name or similar names on the USPTO database. I know that in many cases USPTO allows similar names to be registered in different business lines, but not always.

Another problem is that a brand name becomes a generic word or noun for a product, like Kleenex, resulting in brand dilution.

In copyright or libel litigation, plaintiffs could seize a domain name or brand identity on a court order

2010-09-08T12:13:00.000-07:00

Today, in discussing a new “spamigation” or “mass litigation” threat against news aggregation websites and blogs for alleged copyright infringement, I noted that a particular plaintiff was also demanding that the domain name and apparently future content of the site be turned over to the plaintiff by the court.

In the past, this has happened with libel cases, where an organization has been put out of business in a libel case, and the plaintiff took ownership of the organization’s assets.

This does mean that, in a legal sense, a plaintiff is making a claim on the defendant’s “brand” in some cases, that is, the right to do any business under that or similar brand in the future. And that’s a scary thought.

The main story was posted on the “BillBoushka” blog today.

Counterfeiters target midlist brands rather than super-luxury ones

2010-08-04T06:56:00.000-07:00

Here’s a story by Barry Silverstein on the “Brand Channel”: “New Counterfeit Gambit: Knock Off Cheaper Brands”, link here.

Rather than going after the most exclusive and overpriced handbags and shoes, the counterfeiters are targeting the midrange brands, where the price downdraft is less and where the counterfeiting on the web (with fake sites to resemble the real ones, rather like bank phishing) is harder to pursue or less worth the aggressive effort to stop.

Nevertheless, the counterfeiters will surely face a lot of cease-and-desist and litigation even from the midlist companies.

Supreme Court draws middle road on patent eligibility

2010-07-01T04:17:00.000-07:00

On Monday June 28 the Supreme Court took a middle road in patent law, according to a Washington Post story by Peter Whoriskey on June 29 on p A7, “Supreme Court relaxes limits on patents; but it rejects a claim for a business method”, link here.

The Court rejected a patent on an algorithm for hedging risk in buying energy as too “abstract” but it also rejected a lower court’s claim that valid patents require machinery (like the Lionsgate trademark!) or “physical transformations”.

Electronic Frontier Foundation is criticial of a 1998 ruling from the US Court of Appeals for the Federal Circuit (CAFC) in State Street Bank & Trust Co. v. Signature Financial Group and warned that the Court "knocked patent law loose from its historical moorings and injected patents into business areas where they were neither needed nor wanted", in a piece by Michael Barclay here.

This case (2010) is Bilski v. Kappos, link here.

Small businesses have to worry about possibly frivolous trademark claims from large companies

2010-06-24T17:02:00.000-07:00

Emily Maltby has an interesting piece in the Small Business Page, B13, of the Wall Street Journal Marketplace today (June 24), “Name choices spark lawsuits: Start-ups can get mired in costly trademark scuffles with bigger firms,” link here.

The story starts with the saga of Jimmy Winkelmann, founder of South Butt, which got a cease-and-desist from North Face for imitating its trade dress. Small businesses don’t have the money to fight even unfounded trademark claims (which almost can resemble SLAPP lawsuits!), and large companies hire staff to troll the marketplace (especially the Internet) for possible infringements, since they believe that they have spent so much money building up their brands and have a fiduciary responsibility to protect them.

TiVo-EchoStar-Dish case seen as important by some

2010-06-11T05:25:00.000-07:00

I got a tweet this week from a party I didn’t recognize about the USPTO’s decision to reject two patnet claims by TiVo against the Dish Network and Echo Star over digital video recorders that record one program while another is being watched. The best Reuter’s story, dated June 10, is here.

A US Court of Appeals will hear the case en banc. The case is TiVo v. EchoStar, 2009-1374, U.S. Court of Appeals for the Federal Circuit (Washington, DC Circuit). A federal court had found earlier that Dish had infringed on the patent of TiVo.

The Comcast recorder that I lease can record two programs at a time, but c you cannot watch a third program if two other programs are being recorded simultaneously.

Susan Decker has a more detailed story for Bloomberg here.

A company offers high-end trademark searches, especially for international use

2010-06-04T07:32:00.000-07:00

Besides the USPTO "free form" trademark search, there is a site called Trademark.com (belonging to Thomson) that will allow users to do professional searches.

From a quick glance, it seems a bit pricey. Here is the subscription page for one day’s service for 12 hours of searching, link. The cheapest is $50 for 12 hours for US Federal only, and in an international world for media ventures, that may well be insufficient, say, if you’re starting a new film distribution company (where the UK, Canada, Australia and Europe would matter a lot). The services deserves exploring.

RapidShare goes after customers who abuse its trademark to facilitate copyright infringement

2010-05-04T11:25:00.000-07:00

A site called TorrentFreak has a story about litigation or cease-and-desist actions taken by RapidShare against other sites that either mimic its wordmark or “misappropriate” its trademark to encourage users to engage in copyright infringement. The story by “Ernesto” is (web url) here.

RapidShare Easy File Hosting has this home page (link) with a demo video. Several sites with clone-like names have been contacted, including “RapidFind” which is at this link and some others, some of which do not work now when tried.

The article suggests that RapidShare is “collaborating” with the entertainment industry to go after repeat copyright infringers.

Keyword technology raises trademark questions in Europe

2010-04-02T06:53:00.000-07:00

The Grand Chamber of the European Court of Justice (ECI) has held that some Internet companies are guilty of trademark infringement by keying competitors ads based on search results (or by allowing advertisers to purchase keywords based on competitors’ trademarks); but in an update, Google is not, partly because it follows the principles of safe harbor processing. However, advertising schemes based on keywords must not be deceptive and must allow consumers the opportunity to purchase goods or services based on the original company’s mark.

The story by Steve O’Hear had appeared on European Techcrunch (web url) (here) but had to be updated.

Facebook, Twitter go after domain names containing their "character strings"

2010-03-22T12:01:00.000-07:00

Jesse Stay has a story on the site “Stay ‘N’ Alive” (remember how John Travolta looked in that 1983 movie?) about Facebook’s recent campaign against some (but maybe not all) domain names that incorporate the character string “Facebook” in the name. Mari Smith’s “Whyfacebook.com” was surrendered and now that domain (if you try it) takes you to facebook. Jesse writes that protection of trademarks is a “common and perhaps necessary” practice. The story is here.

Twitter has gone after names including Tweet and Twit. It makes it hard to check online at USPTO with the beginning of a character string.

ICANN announces it will develop a trademark clearinghouse for domain name issues

2010-03-12T12:38:00.000-08:00

ICANN (The Internet Corporation for Assigned Names and Numbers), in a meeting in Nairobi, Kenya, announced March 12 that it had approved creating a “trademark clearinghouse”, that is, “an extensive database of trademarks for their protection on the Internet”. The link for the press release in PDF format is here and it was sent to email subscribers today.

The Board rejected a pre-registration process called “Expression of Interest” or EOI, for setting up new gTLD’s, or the last node of a domain name (“.com”).

It appears that ICANN is interested in assisting parties that believe that legitimate trademarks are threatened by new domain names, but another part of the press release appears to distance it from concerns over the main node of the domain name, often perceived by many people as indicative of branding.

Stay tuned as more clarifications come about.

The Anti-Cybersquatting Consumer Protection Act (ACPA) does have limits: important case in Michigan with a personnel business

2010-03-05T09:46:00.000-08:00

In a case in Michigan, a federal court ruled that a defendant could register a domain name(s) with the purpose of criticizing another business, when the original business (the plaintiff) had minimal presence on the web. Doing so did not constitute trademark dilution, even prospectively. The case is “Career Agents Network, Inc.” vs. “careeragentsnetwork.biz, careeragentnetwork.biz, Lawrence R. White and Aeromedia Marketing”. The order granted a defendant’s motion for a summary judgment and denied the plaintiff’s motion. The papers can be read on the Scribd website here. The opinion was linked on Mixx under trademark law.

Apparently the case involved a “Career Agents Network” and another company in Missouri called “Health Career Agents” which offered franchise opportunity to set up recruiting businesses under these names.

The opinion does discuss the Anti-Cybersquatting Consumer Protection Act (ACPA) (1999). An ACPA lawsuit is more costly that an administrative mediation with ICANN under the Uniform Domain Name Dispute Policy (UDRP). The ACPA had been intended to supplement the original Federal Trademark Dilution Act. Wikipedia’s entry with the “nine tests” is here.

Here is an FAQ on the ACPA at Keytlaw (link).

The Cornell University Law School Text for USC 15-1125 is here.

Maalox has the "opposite" trademark problem

2010-02-19T09:20:00.000-08:00

Here’s a bizarre twist on the “trademark problem”. The Food and Drug Administration (FDA) is ordering Novartis to use a different brand name for its most potent form of “Maalox”, that is, “Maalox Total Relief” because some consumers might not realize it could have other side effects due to containing ingredients chemically similar to aspirin.

A typical story is with Portland OR station KGW and the AP, link (web url) here.

It’s perfectly appropriate for companies to own multiple brands, and sometimes they need to use separate brands to avoid confusing consumers.

I didn’t have any Maalox at home for a picture.

A note on my use of "do ask do tell" as a domain name, maybe a movie name

2010-02-04T17:58:00.001-08:00

Let me reiterate my use of the phrase “Do Ask Do Tell” in my 1997 and 2002 books, and of my largest website doaskdotell.com.

It’s possible that future employment opportunities could force me to scale back my personal web presence, in ways that I may discuss later. In some situations that I can envision, it might not be possible for me to display my own material in a “free entry” fashion indefinitely. Furthermore, some time in 2010, my material may very well be restructured and simplified.

I don’t claim that “do ask do tell” is a trademark, but I am committed personally to using the term for the foreseeable future in conjunction with a certain social mindset, that has arisen in reaction to the military’s “don’t ask don’t tell” policy.

I do envision a motion picture based loosely on some materials in the 1997 book (greatly reorganized) and I would want to be able to use the “Do Ask Do Tell” to lead off the movie title. If there were to be considerable trimming or removal of material from sites to avoid potential employment conflicts, they would not go so far as to credibly prevent my keeping the registration of the doaskdotell domain. More details may come later if necessary.

USPTO still shows only one DEAD registration of the phrase from the middle 1990s.

IMDB does not show any film names starting with this phrase, neither does Sundance. However, there are films called "Ask Not" and "Do Tell".

Generally, movie and book titles are not regarded as trademarks until they have sequels and become “franchises” (like Lionsgate’s “Saw” franchise).

Delta may give up its NWA brand

2010-01-02T14:36:00.000-08:00

Just as I’ve criticized movie studios for letting go of their indie brands, so I wonder about the airlines. The FAA has given Delta the permission to operate Northwest as part of itself and to phase out the Northwest brand. Here’s the Commercial Appeal story from Dec. 31, 2009 (link).

I wouldn’t reserve a domain name “northwest” any time soon. I think it was a great brand, that helped the Twin Cities attract other business while I lived there 2007-2003. (As I've said, ReliaStar was a great brand before ING.) I’m sorry to see it go. I don’t know if Delta kept its Comair brand for small jets either. Sometimes small airline brands (like Mesaba) have been kept.

But if major companies want to protect themselves from prospective trademark dilution, they should keep their brands alive.

Sometimes domain names that parody have led to infringement claims

2009-12-20T06:30:00.000-08:00

Here’s an older trademark case I found from a Reason article (link) by Michael Lynch all the way back in 2000. The article is called “Post No Ills” and refers to a lawsuit by U-Haul against owners of a website called “U-Hell” claiming trademark dilution and infringement after a bad move. The suit was dismissed in Arizona but refilled in Georgia. The article got linked to in a newer story about the growing list of litigation against naïve bloggers and webmasters.

In other words, a name that is a parody of a company name might lead to a trademark dilution claim, but the Act in 2006 has some defenses regarding parody (check the link to the law from my June 2007 posting).

I’ve had to see where this case went.

ING could use an old name for its US insurance operations effectively

2009-12-01T05:50:00.000-08:00

Here’s a trademark thought from my own work history past. Call it a ghost of my own Christmases past (or perhaps New Years Eve's past, with Y2K 2000). I read that the Dutch financial conglomerate ING may have to sell off a lot of its insurance operations to help pay back the Netherlands for the bailout, and maybe also because there are continued bad loans in places like Dubai.

So it’s logical that ing-usa could become a separate insurance company in the US and trade on the NYSE with conventional stock under its own name. It would amount to a combination of ReliaStar and part of Aetna. It’s not clear whether the ING Direct could be part of this, or become still a differently traded company.

I think that the “old” ReliaStar brand for the Minneapolis company (from 1995-2000) would make a great brand again. (It got acquired by ING partly because Wall Street didn’t like the way certain parts of ReliaStar’s reinsurance business had been managed around the time of Y2K, and greed took over.) The wordmark is strong, and the blue trade dress was striking. The “political” problem would be whether the other pieces, many of them in Hartford and Atlanta (Aetna) would get recognition.

But from a trademark perpsecitve, ReliaStar was a great name for business.

In the meantime, I won’t try to take the name.

Trademark fight ditches Apple's Use of "Mighty Mouse"

2009-11-04T10:24:00.000-08:00

A company called Man-Machine offers “hyghenic, washable keyboards and mice”, as shown at its own website here. This sounds like an appealing concept in a world where suddenly we are worried about dangerous influenza viruses (H1N1 and maybe H5N1 down the road) that could remain dangerous on workplace-related or home hobbyist surfaces. I guess one could imagine computer components that are cat proof for people who led stray neighborhood “friends” in.

But Man-Machine also has a registered trademark for its “Mighty Mouse”. A bit of background: Decades ago, 20th Century Fox developed a character “Mighty Mouse” for its Terrytone cartoons (in the days when movie theaters showed them), and this was an acceptable deviation from Disney’s “Mickey Mouse”. But totally different lines of business can use the same wordmark as long as common sense suggests there is no possibility of confusion (that can be debatable).

That’s the rub. Apple computer has gotten served for trying to use “Mighty Mouse” as the name of its new component for newer post-iMac G machines. But it makes sense that USPTO would rule against Apple (which it did on Oct. 6), because this is in the same line of business. So Apple, darn it, has to come up with another name.

The story, by Ronald O. Carlson, is on Mac.Blorge here.

Craigslist sues a few companies for spam ad generation, claiming trademark infringement

2009-10-12T09:53:00.000-07:00

The New York Times, in the Business Section on p B4, reports today (in its “Bits Blog”) that Craiglist has followed the example set a few years back by AOL in suing spammers. The story is here. Craigslist is suing a few companies and individuals (at least one of whom is “anonymous”) for spam-loading ads on its site, claiming trademark infringement as well as copyright infringement and the violation of the DMCA.

The legal action this time seems to get some sympathy; it’s not part of the “copyright wars”.

One of the defendants is Red Trumpet, which runs “Craigsup”. When I tried to access the site, Webroot Spysweeper gave me a warning and did not let me access all of the site.

Craigslist has drawn amusing “criticism” for its use of older technology, and has legal battles on its plate due to adult services, which may have been implicated in a recent tragedy in Boston.

ICANN, US Dept of Commerce continue contract; ICANN policies continue

2009-10-01T17:16:00.000-07:00

The United States Department of Commerce has executed a contract with ICANN for some technical management of many areas of the Internet, especially domain names. The link from ICANN is here.

In a general way, this suggests that the current policies at ICANN regarding domain name disputes, particularly with reference to trademark claims, would remain intact, and would be effective in American law, even given the concept of prior dilution in effect with the Trademark Dilution Revision Act passed in 2006.

Washington Redskins trademark to be looked at by Supreme Court after "defamation" complaint by some native Americans

2009-09-15T15:57:00.000-07:00

Members of several federally recognized native American tribes will be able to take their case to the Supreme Court, complaining that the Washington Redskins football team name and trademark is “defamatory.” The Bloomberg story is here. We still have to find out if the Court will really take cert on the case.

Last week we reported another case here where a domain name was considered defamatory and an abuse of another trademark.

The USPTO had revoked the trademark in 1999, but subsequently the NFL won court appeals. The NFL (like MLB) is extremely vigorous in defending all its trademarks.

Other problems could occur, as with the Cleveland Indians in baseball, if the NFL loses.

Domain name spurs both defamation and trademark dispute; WIPO v. ICANN

2009-09-11T16:37:00.000-07:00

Here’s an interesting case. Attorneys for Glenn Beck have filed a dispute with the World Intellectual Property Organization (WIPO) claiming that a domain, to be named in a moment, infringes on Beck’s “trademarked name.” The link is here.

Ars Technica, is a detailed article by Nate Anderson, and linked by EFF, asks whether a domain name itself can be defamatory, link here. We don’t need to repeat the domain name right here, but it’s pretty raunchy. But we have to be wary of the litigation; as attorney John Dozier pointed out in a recent book (see Aug 27), we could get carried away with this: the mere appearance of some “artificial” word strings in a search engine result might be construed as defamatory (a case that happened to me with my own name; see my main blog, July 27, 2007).

Visitors may enjoy (or not enjoy) WIPO’s proposal to ICANN “to expedite domain forfeiture proceedings” here. This does not come from Jonathan Swift in your English literature courses.

Malaysian McDonald's-McCurry case mimics US trademark dilution issue

2009-09-06T13:12:00.000-07:00

Although this posting does not directly involve US trademark law (and dilution) this case in Malaysia certain fits the spirit of dilution concerns in the US, so I posted it here rather than on the International blog.

A restaurant called McCurry, which produces well known Malaysian fast food, has been in litigation with McDonald’s, in a case that is called copyright infringement but that sounds more like the US concept of trademark dilution. To a well-educated western consumer, the case sounds silly. No one would be confused by the Irish prefix “Mc” in multiple corporate names. And no one would confuse the restaurants, even if McDonald’s offers similar Asian fare (probably as a low-fat, healthful offering).

Jadeep Kumar has a story (Malaysian) “Court to take up McDonalds-McCurry issue on Monday” in Singapore’s paper “Top News.”

Discovery's e-book raises patent, trademark questions

2009-09-01T06:01:00.000-07:00

On Saturday, Aug. 29, Mike Musgrove wrote an article in the Washington Post, Washington Business, “Discovery E-Book Filing Raises Eyebrows: Maryland Firm Mum on Patent Application”, link here.

The story is interesting because Discovery Communications, a media company known for documentary science films, housed in Silver Spring MD, is making a patent filing and trademark filing for a new E-book reader and even claims infringement by Amazon’s Kindle.

Bricks and mortar trademark infringement of designer goods results in arrests in VA

2009-08-20T15:25:00.000-07:00

A police raid at a store near Manassas, VA, about 30 miles from Washington DC, netted illegal imitations of goods by Gucci, Coach and Versace brands. This case amounts to “criminal” trademark infringement.

A more common form of criminal infringement is the use of trademarks in phishing attacks sent by spam. Infringement in the bricks and mortar world had become less frequent, it seemed, until today. It used to be common in the 1950s and 1960s even with counterfeit long playing records.

ABC affiliate WJLA in Arlington VA has a news story here. http://www.wjla.com/news/stories/0809/651509.html

More accidental name similarities: Microsoft and the "gay community" even have a synonym

2009-08-06T07:31:00.000-07:00

More and more I stumble across totally unrelated business or political/social entities using almost the same name.

There are a bunch of gay-lesbian oriented free newspapers owned by a LLC called “Window Media” (link), including the Washington Blade. I noticed this again yesterday when I found a story about the new ENDA legislation in the Senate in the Southern Voice. I recall the origins of the company from the days that I lived in Dallas in the 1980s, I think. Notice that the word "window" is singular here.

Then yesterday I noticed, after an accidental touchpad click on my laptop, the omnipresent “Windows Media Center” from Microsoft on my new Dell XPS laptop. This happened five minutes after I read the ENDA story, triggering my “short term memory” which I guess I still have at 66. Of course, the Windows Media Player has been around for years.

There’s no confusion for me, since I know (and belong to) the GLBT community. But the coincidence of names struck me as odd, and probably accidental.

The USPTO generally allows the same wordmark to be used for different companies in totally different lines of business.

Arlington VA software company (Rosetta Stone) claims that search results "may" tarnish its trademark

2009-07-12T12:26:00.000-07:00

One of the most popular stories in The Washington Post online site Sunday is Cecilia Kang’s story on p A11 Saturday about a suit against Google by Rosetta Stone, a language-learning software program in Arlington Virginia, over the way the search engine allows competitors ads to come up when Rosetta Stone’s wordmark is used as the argument of a search.

Rosetta is arguing that the expense and risk that it took in building up its brand is being exploited unfairly by others who did not have to take a similar risk. The link for the story is here.

It appears that I had a similar story with similar arguments about Rescuecom on this blog in April 2009.

While not wanting to “bite the hand that feeds me”, I encourage visitors (including other “small” webmasters) to read the news story and ponder the long term consequences of the questions raised for themselves. When I entered “Rosetta Stone” into the aforementioned search, it behaved in a perfectly appropriate manner as far as I could tell.

Update: Oct. 12, 2009

PCMag has a Reuter's story from Bangalore, India on the story here.

What's going on with "extinct" motion picture studio brands? Branding ought to become the studios' best friend!

2009-07-03T05:51:00.000-07:00

With a new story yesterday about the delay or possible cancellation of a movie project (“Moneyball”) by Sony (see my movies blog), there has been increasing attention to the fact that several “boutique brand” film companies owned by major studios have been dissolved or greatly mitigated. Apparently these include Warner Independent Pictures, Picturehouse , and Paramount Vantage.

Well, Warner Independent Pictures gives you a blank web page; Picturehouse has an active web page that mentions old movies; Paramount Vantage as a URL leads back to Paramount, and has a descriptive page that seems obsolete. How sloppy!

Companies consolidate subsidiaries all the time, subject to certain regulations. Companies eliminate redundancies to save money and improve the bottom line, all the more so in recessions. But why don’t the studios keep these operations “virtually” just as brands? Picturehouse (supposedly a venture between New Line and HBO) had a great logo. It used to be used to distribute HBO films and some foreign films, especially from Spain. Why not keep the label for “grown up” content with independent production and development, even if it is not a formal separate company any longer? There is no reason why the same corporate entity can’t have and use and enforce multiple brands for differently flavored products. Food companies do it all the time. Why not movie studios?

“Paramount Vantage” used to be “Paramount Classics” and now we’ve seen it disappear, but it was never marketed as aggressively as a “brand”. But, true, Paramount should keep a “brand” resolved for more “Roger Ebert”-like movies, and give it a different musical signature and look. (“Roger Ebert” has become a brand name, hasn’t he?)

Distribution of a lot of films that WIP and Picturehouse would have handled seems to have fallen into the lap of Sony Pictures Classics, which finally has a musical signature (not as ambitious as Columbia’s).

Lionsgate has probably the best musical signature around: a combination of Saw and Metropolis, with gear-boxes opening into the real Lions Gate in Greece, with an impressive fanfare. Of course, the best known musical fanfare is Alfred Newman’s for 20th Century Fox.

MGM used to be one of the great old brands, but has been allowed to dwindle. United Artists, supposedly the “independent” releasing arm for big pictures of the 50s, became an artsy subsidiary of MGM (just as Seven Arts did once for Warner Brothers), and then Tom Cruise tried to bring the entire UA brand back to prominence. So far, he really hasn’t.

Miramax, that used to be part of the Weinstein Company, has held together pretty well as an “adult” arm of Disney. TWC ought to make up a more “creative sounding” brandname itself.

There were a lot of other studio brands in the past that dissolved: National General, Cinerama Releasing, Embassy.

Trademark law should have a "use it or lose it" policy. Studios will jealousy guard thse marks but now do nothing with them. (Look at WIP's blank web page.) ICANN might even think this is bad faith.

Just don’t try reserving a domain name now based on one of these obsolete brands. You might get a letter from a lawyer.

Monsanto has position paper defending its seed patent enforcement (brought up in recent film "Food")

2009-06-23T10:31:00.000-07:00

The new documentary film “Food, Inc.” presented the problem of Monsanto’s litigation against framers for seed patent infringement, both in planting and saving seed.

Monsanto does have a position paper where it states its own position on the problem, here. The webpage has an amusing graphic that looks like “weed”, and it lists its “Ten Points”. Interesting is its position that it’s not OK to save seed even for “personal use.”

The controversy came about originally in the 1980s when the Supreme Court ruled that one can patent genes.

However, there are various other stories about the problem, such as a dropped lawsuit against a North Dakota rancher in 2001, here (in a publication called “Herbicide Tolerance”).

There is a 2008 case about “Roundup Ready” soybean seed in a publication called “Curremt” here. The article suggests that the Supreme Court might some day recognize a concept called “patent exhaustion”.

Picture: Flint Hills, Kansas, 2006 (taken by me).

EFF "Patent Busting" goes after subdomain assignment "invention"

2009-06-18T10:51:00.000-07:00

Electronic Frontier Foundation has countered what appears to be an abuse of the patent concept, with U.S. Patent No. 6,687,746, now held by Hoshiko, LLC, which invented a method for automatically assigning subdomain names, like “billboushkatd” as a subdomain of blogspot. The technique had become particularly important on some social networking sites, such as LiveJournal. But the technique had been long known in early days of the Usenet. EFF (in what it calls its Patent Busting Project) maintains that the holder Ideaflood tries to use open source material from the public domain to monopolize a certain market of innovation. EFF says that the Internet Archive (sometimes a “reputation” buster these days) was useful in researching the case.

The story title is “EFF Busts Bogus Internet Subdomain Patent: Patent Busting Project Wins Another Victory for Developers and Innovators”; link is here.

Is personal "branding" the salvation of the Web as we know it?

2009-06-09T07:23:00.001-07:00

This may sound like a strange post for my trademark blog, but not really. We’re rapidly learning that “self-branding” is as important as corporate branding, particularly when it comes to online reputation. Cameron Johnson promoted the idea of “self brand” in his book “You Call the Shots” and so does Donald Trump.

As I look back over the history of the open Internet, since it was turned loose in 1992, it seems as though we’ve allow people ("amateurs", even “the kids”) the capability to promote themselves and become “famous” without having the capital (or accountability to others) to cover their share of the systemic risk risk (especially to those who have elected more “responsibility” – often than means parents). We’re seeing this show up now in all kinds of areas, including the online reputation problem, viruses, scams, cyberbullying, as well as the more superficial issue of “protecting minors” from pornography (my COPA blog). Even individuals who use the Net “responsibly” benefit from a system that probably allows unequal application of risk. If we were starting over, I wonder whether "we" would go to such lengths to shield providers and self-publishers from indirect liability – but then we would have nothing like the Internet that we know today. I still think we will see political calls to roll back some of these protections (like Section 230) and demand that web users become insurable.

But the web is here, and especially since the advent of social networking sites (following the inexpensive self-publishing by almost a decade) it has become a major vehicle by which people interact and “compete”. It has made people into “company-lettes”. And more and more we hear that people need to build integrated, sensible, expressive and professional (all of these) presence on the Web. That’s what Trump says a “brand” or a “good name” means.

If you had looked at my resume in the early or mid 1990s, you would have branded me as a “mainframe programmer” and “insurance person” or something like that. My personal life was still relatively private. The logical followup after “retirement” could have been sales – branding as an insurance agent or financial planner. Another outcome could have transformed me into a math teacher (maybe calculus). But, for reasons of temperament and personal history well documented in my blogs and books, some aspects of these careers would have compelled me to do some things counter to my beliefs, as I had already made myself “famous” with self-publishing and “knowledge management.”

My entry into the area had started with my involvement in the “politics” of the “don’t ask don’t tell” policy and the way it related in a curious way to events earlier in my life. But the policy and debate paid forward, too, subsuming practically every issue that can affect “individual sovereignty.” So my websites and blogs started covering “almost everything.” One observation that seems crucial is that what makes the military gay ban (and other gay issues like gay marriage and adoption) so critical is the idea that we all have to share the dirty work, sacrifices and uncertainties (and some unwelcome intimacies, sometimes) inherent in freedom; total individualism is never possible.

So my “brand” – my name – became associated with developing the knowledge base about these issues, to be sure, but also developing the technology and delivery systems to help others understand it and participate. Actually, when I was substitute teaching, I overheard students in an honors class say that I was the “gays in the military guy” – back in 2005 my online reputation was that well known, I guess --- but it really is much more than that. It invokes the processes by which we look into the nature and limits of our own individuality and face the possibility of new social contracts. Personal responsibility is more than just accounting for direct choices. I am the documentarian of how our culture goes through the process of redefining personal autonomy and personal responsibility, against a backdrop of history, of our "American Experience". It sounds pretentious. But that’s how I set myself up.

But the idea of personal “branding”, borrowed from the trademark law concept, might turn out to be the salvation of the “democratic Web” as we have come to count on it today. The number of “brands” on the planet increases by a few orders of magnitude, but that has to be made all right.

EFF provides a guide for "parody" websites mocking brands

2009-05-20T18:22:00.000-07:00

Corynne McSherry of Electronic Frontier Foundation has an important PDF whitepaper guideline for webmasters who develop parody sites to protest the activities of specific companies. The paper is called “Avoiding Gripes about your Gripe (or Parody) Site”, dated May 2009, with this link.

The basic scenario is that somebody creates a parody of “CompanyXYZ” (maybe something like “CompanyXYZs__ks”), registers a domain name, and two weeks later finds that the ISP has shut it down after an intellectual property complaint, which is likely to be trademark dilution.

McSherry goes on to discuss “nominative fair use,” and the process of determining judicially whether the speech value of the site outweighs prospective claims of consumer confusion as to brand.

One big plus is to keep the site totally non-commercial – with no ads. Another is to use an ISP with some backbone and resources.

She also goes on to discuss copyright and DMCA safe harbor issues.

More on my own "do ask do tell" domain and book names

2009-05-08T08:12:00.000-07:00

Yesterday (May 7) I got a question from a domain registration company about whether I had an issue if a businessman in China wanted to use the domain name “doaskdotell” for some of his domains overseas since I own doaskdotell.com.

I’ve discussed domain names along with company names, trademarks, and book and movie titles before.

ICANN sets up a variety of high level tld’s and permits different entities to use the same root with a different tld, as long as the names are registered in “good faith.” Well known examples are wm.com (Waste Management) vs. wm.edu (the College of William and Mary), and history.com (the History Channel) v. history.org (Colonial Williamsburg). With literate Internet or Web visitors, this does not create a problem.

Trademark law in the United States is based on the idea that instant brand recognition by consumers is important in a company’s ability to sell its products or services, provide employment, and meet the fiduciary demands of its investors. In one sense, trademark law is “anti-literate”. There has always been some tension between the subject of domain names and trademarks ever since the Web went “public” and individuals were allowed to register “untaken’ domain names, often without a lot of legal acumen. On the international stage, this idea also holds, although the specifics of laws vary from one country to the next and are a political issue, as in the EU.

Individuals, in a free entry system, often create domains for non-financial reasons, such as political participation. The suffix “.com” came into common use in the 1990s before there was much understanding of this, and that it might confuse consumers or interfere with some kinds of businesses. Subsequently, .biz was created with the idea that an individual needed capital and revenue before using an associate name.

In fact, in the bricks and mortar world, the idea of a “tld” does exist. Consider “Coca Cola” and “Pepsi Cola”. They both use the word “cola” as if it were like a tld, because cola is a common product and the general public is familiar with what it means, without any requirement for special literacy. There has never been a controversy over these two company’s names or trademarks. The problem on the Internet is that the range of products, services and ideas (and business models) is so great that typically consumers do not grasp what is happening, and often businessmen choosing domain names do not grasp it either.

The root “doaskdotell” occurs today with several tld’s. I use only “.com”. I set it up in 1999 and have it paid for and reserved (with Network Solutions, where you can look it up on WHOIS) until 2012. I intend to use it until at least that time, perhaps beyond that and perhaps indefinitely. A couple of the others appear to be “parked” domains for ads and links (probably hoping to profit from my own “notoriety” which I will get to in a moment) and still another offers a different kind of service. The phrase “Do Ask Do Tell” forms the higher level title of two of my books published by iUniverse in 2000 and 2002 (the first was originally self-published with a book manufactuer’s printing and self-registration of the ISBN in 1997). I think it is possible that the phrase would make a good title of a movie, and that it will be used as such. I cannot be more specific right now on the idea of a film called "Do Ask Do Tell...", but I think it is possible that I might even be able to bootstrap interest in such a project and have some ownership or participation in it.

Personally, I also think that the phrase would make a good name for a motion picture production company committed to making “political” or “social” or “historical” films. I think that the name would be appropriate for a news reporting service following the new “Internet age” model for journalism, recognizing that something new has to come after the “creative destruction” of the old newspaper industry.

What I hope does not happen is that it winds up as a trademark for something “silly”.

“Do Ask Do Tell” is a phrase of common words that in the United States has a social and political meaning derived out of the political debate over “openness” about sexual orientation and personal identity, which occurred when President Clinton tried to lift the ban on gays in the military in 1993, and we wound up with the flawed compromise of “Don’t Ask Don’t Tell”, which is likely to be eventually repealed. Perhaps I helped give it that meaning with my books and website. Perhaps it would have that meaning anyway. The media, both “establishment” and “newbie”, quickly give meaning to common words and phrases, often outside of normal commercial or branding usage. One should note that the poster for the new film (from Magnolia Pictures) about closeted gay politicians “Outrage” has the phrase on its poster, but it is not part of the movie title.

There is nothing legally wrong with companies wanting to use it for other purposes (for example. “Do Tell” has been used in the telecommunications business in the US). But I wonder if it is a good idea for businessmen, particularly overseas, to try to use it that way. They may find that use of a “common English idiomatic phrase” that has taken on a political meaning could hinder sales and financial success of a business. Overseas especially, they may not fully understand the meaning that the phrase has in the United States. So I think that other businesses should use caution when considering using the phrase with other tld’s.

I certainly intend to keep using it as I have outlined.

I can imagine how other words could quickly get a new meaning in the future, such as Joshua Cooper Ramo’s use of the word “sandpile” as a part-title in his book ("The Age of the Unthinkable", already noted by our president indiectly in at least one speech.

More on movies with duplicate titles (this time it's "Outrage") -- but still no problem

2009-05-03T20:19:00.000-07:00

As I noted on my movies blog (entry May 2, toward the end of the entry) there are two independent movies coming out soon with the name of “Outrage” and they are totally different. The one getting all the attention right now (starting March 8) is about closeted gays in politics, directed by Kirby Dick. But there is a totally unrelated thriller by Ace Cruz with the same name coming out (pun unintended) soon.

Any casual look at imdb shows that this happens a lot. Often there is a feature film, and various obscure short films by the same name. Sometimes a TV film will duplicate the name of a theatrical release distantly related in subject matter. For example the TV “Swing Vote” is about a jury trying an abortion-related case, whereas the Touchstone feature is about a presidential election. There is a site that catalogues all duplicate movie titles on Netflix and here is that applicable link.

As far as I know, there is nothing instrinsically wrong with two films having the same name, or two books having the same name. With books, usually there is a secondary subtitle to distinguish them. (There’s plenty of duplication on Amazon; look at “Honor Bound”).

Where you get into issues usually is with a franchise of multiple movies (or books) around a name or a character (like “Superman” or “Harry Potter”). Usually the name becomes a trademark for associated toys or clothes, or (often) has an existing mark for comic books; often the franchise is set up as a “brand” (of stylized movies in a series) so that it becomes a trademark.

Duplication of names in movies is much more likely with independent films, which tend to be made for niche audiences. The English language, with its multiple sources, and heavy use of idioms and irony on words, invites the likelihood of the multiple use of the same word or phrase. Niche audiences are not likely to become confused since most independent film buffs know what they want to see in advance, although a theater chain like Landmark would have an issue if it happened to show both “Outrage” movies at the same time in the same theater in different auditoriums.

Suburban mall blockbusters intended to satisfy the bean counters of major studios might be a different matter, however. I have a feeling you might run into trouble it you called another movie “Kung Fu Panda” (which probably became a “brand” when AMC used it for its cell phone silence pre-feature video).

I notice that the (Kirby Dick) “Outrage” movie poster has the phrase “Do Ask Do Tell” underneath the title – of course, that’s the primary title of two of my books and my main website. But the “common English” phrase obviously has a political or moral meaning that applies in all cases. It may become the idiom that survives “don’t ask don’t tell”.

"Android Data" goes after many companies for infringing on its brand: a bizarre "Star Trek" story

2009-05-01T05:36:00.000-07:00

Erich Specht has sued a large number of companies over prospective trademark dilution or infringement for the brand “Android” related to his trademark for “Android Data” which he says was set up “to communicate the seamless, almost robotic-like, bi-directional communication of data between a client and a data center in a remote location,” in 2000. The USPTO granted the mark in 2002. It would appear that the changes in the 2006 law (regarding prospective dilution) could matter.

The complete list of companies is in a story by Mike MaGee in TGDaily, here. The registration number is 2639556 and reads “G & S: Computer e-commerce software to allow users to perform electronic business transactions via a global computer network.” The USPTO record also says “no claim is made for the exclusive right to use “data” apart from the mark as shown.”

Forbes has a story here and maintains that Specht might have lost his claim because of “inactivity.”

I could not find a website for “Android Data” but I did find an “android phones blog” with an entry about this matter here.

This all sounds like something out of a History Channel episode about UFO’s and grays. It’s a bizarre case. I guess I won’t use “android” for a domain name right now.

Wikipedia challenges (noncom) artists group using a domain name to parody theirs

2009-04-23T16:43:00.000-07:00

Corynne McSherry of Electronic Frontier Foundation has an important discussion on a "trademark parody" case.

It seems that the Wikipedia Foundation is going after the domain name of a noncommercial site that discusses “Wikipedia Art” after some parties had an entity with such art removed from Wikipedia because it was not sufficiently “encyclopediac”.

Wikipedia is trying to stop the group from using the name. But it would not violate trademark law, because it is non-commercial, amounts to commentary or parody, and does not use a Wikipedia trade dress or logo. It is possible that Wikipedia could enter a dispute with ICANN and force administrative resolution with ICANN’s Uniform Dispute Resolution Policy (UDRP). They might prevail, but that would not be binding in US courts. Even the "prospective" nature of the 2006 Trademark law would not make a difference here.

The EFF story is here.

The Wikipedia art site is http://wikipediaart.org/, “a collaborative performance and public intervention.”

Company, organizations, people, and domain names can "mashup" all too easily

2009-04-15T19:23:00.000-07:00

The world is such a small place (compared to Jupiter, anyway), that it’s getting harder and harder for companies, organizations, movie and book titles, and domain names to stay out of each other’s way.

Perhaps this is just part of the inevitable “mashup” talked about in Joshua Cooper Ramo’s new book “The Age of the Unthinkable” (Little Brown, 2009), but I tried to find out a little about “Kissinger Associates.” A site called “Biblio Tec Play” has a long discussion of the cabal (they include Geithner and support the idea that there are more Democrats in high finance on Wall Street than Republicans), link here.

Wikipedia gives some discussion of the past period as Kissinger McClarty, and Biblio gives a domain name reflecting that (kmaglobal.com) that gives a 403 Forbidden error – very strange. The descendants of Frost / Nixon and Henry Kissinger really don’t want to be too transparent. But “Domain Tools” says they own about 24 other domains.

And then there is another company, in Pennsylvania, called Kissinger Associates, that appears to be totally separate. It’s domain is this and appears to be a more “conventional” consulting firm for corporations. It claims to have trademarked several phrases, which I could not confirm at uspto.gov – although, as a matter of law, it’s possible to create a trademark right without registering it, although registration is generally necessary to make it stand up in court. (There is a nice PDF from West Virginia University by William W. Aylor, Trademark Attorney, that explains the basics, here.

Of course, this sort of situation will occur when people start their own businesses using their own names, as names tend to appear with a great deal of multiplicity in our society.

Even non-profits run into this. There is an “Environmental Leadership Program” site which has nothing to do with the paid “Environmental Leadership” section in The Washington Post today (April 15).

2nd Circuit rules that plaintiff's can sue over "misleading" Internet ads for trademark infringement; overall impact very unclear

2009-04-04T06:32:00.000-07:00

Electronic Frontier Foundation is reporting a potentially damaging ruling from the Second Circuit in trademark law on April 3.

Friday, The Second Circuit reversed a lower court ruling and maintained that a lawsuit against Google by Rescuecom can go forward. EFF’s copy of the Opinion is here. The complaint alleges tradermark infringement, dilution under the Lanham Act, and false presentation of origin.

At issue were programs called Adwords and Keyword Suggestion. The court opinion (here), around page 6, describes how this process works. Rescuecom alleges that the appearance of an ad purchased by a competitor may cause the visitor to believe “trademark confusion as to affiliation, origin, sponsorhip, or approval of service.”

The Second Circuit had previously ruled, in 2002, in the case of “1-800-Contacts v. When-U” that “he use of trademarks to launch ads does not, by itself, trigger trademark liability” (EFF) and that led many observers to believe that the Second Circuit would throw this new case out, following its own precedent. It would seem to me that the passage of the Trademark Dilution Revision Act late in 2006 may have contributed to its partial reversal, because the Revision Act allows for the idea of "prospective" dilution.

However, there at least seems to be a question now as to the practice of letting a company buy and ad based on a keyword based on a competitor. Does this cause “confusion”? To me, no, as long as I understand that I have to actually read the advertisement in context. But ads are not “literary” they way web content like this posting purports to be. The are designed to sell things. Trademark law has to deal with one of the sharpest divides in our free market culture: the practical need to manipulate people to buy things from you, versus the need to educate them to think for themselves. Trademark is designed to make the former efficient enough that people can make a living selling. Copyright law is the tool much more related to the latter social aim.

The ruling does not mean that Rusecom will win at trial. It still has to prove that consumers are really confused. But there is a problem with the “average consumer”. And there are real problems in that consumer mentality varies so much as you go from one area to another. Non-profit organizations (like SLDN, with which I network) have to “sell” an idea, but to an audience that is generally much more educated than one which is out to buy cheeseburgers. What I wonder is how courts can establish any concrete tests for likelihood of confusion in so many contexts. I wonder if the Second Circuit really understood this – a surprise given its 2002 ruling.

Corynne McSherry wrote the legal analysis on Electronic Frontier Foundation’s website yesterday, “Second Circuit Expands Trademark Rights, Restricts Consumer Search Options”, link here. Her analysis indicates the practical effect on sellers of ad space: they cannot easily dismiss litigation on legal grounds, and potential “plaintiff’s bars” can find them easy targets. Again, to me, this sounds like an area where we ought to have a “loser pays” system (an idea advocated by ABC’s John Stossel) to discourage frivolous litigation in volatile areas where it is difficult to articulate clear legal divides, like this one.

On the surface, the litigation doesn’t seem to threaten holders of domain names, or publishers or distributors of book or movie titles with frivolous infringement claims. But the whole infrastructure for Internet self-publishing depends on an effective advertising mechanism, even for publishers who don’t use it, and even for writers or publishers who don’t themselves purchase adwords, because they depend on the mechanism funded by others who do. This is a good example of collective legal “karma”

There is still a trial on merits to follow. I hope that this case, however, will first be appealed to the Supreme Court. This ruling makes for an alarming development.

(Please see also an earlier posting about this case June 10, 2008 on this blog.)

AOL offers quiz on recognizing correctly branded product labels

2009-03-20T09:49:00.000-07:00

AOL today offered its subscribers a twenty-question trademark quiz called “Which One’s the Real Label”. Twenty common household products, including Crest toothpaste, Band.aids, Vlasic and Heineken Beer were presented with slightly different versions of their products in a “Product Label Quiz”. I got only six of 20 right. The Walletpop link for the quiz is here.

The exercise shows how picky the USPTO may be with trade dress, where every color and every visual figure matters. Many of the questions involved colors of print and backgrounds. With “Band.Aid” the question involved hyphenation of the corporate brand name.

The practical significance is that it’s too easy for imitators to fool the public with fake products, creating dilution and infringement. With financial institutions, slightly incorrect labels on an email could be a tip-off to a phishing attack.

A small business describes the USPTO registration process

2009-03-03T06:00:00.000-08:00

“The Official Blog” on a site called “Jealous Brother” describes in detail the process that a small Internet business is likely to go through with a trademark registration with the USPTO. The blog entry appears to have been written in the fall of 2008.

The overview is called “Registering a Trademark from Start to Finish” with link here.

The author describes the cost involved (typically between $350 to $1500) and the USPTO’s unforgiving attitude toward “mistakes” which requires starting over and repaying the entire fee.

He also discusses “standard character” or workmark registration, “stylized” registration, related to trade dress, which he apparently used here.

Picture: Internet Outlook 2009 conference at Tysons Corner VA.

Blockshopper settles deep linking case with Jones Day; could "trademark dilution" imperil deep linking on the Web?

2009-02-21T07:26:00.000-08:00

The “Blockshopper” case discussed here in November 2008 has been settled out of court, and some observers feel that the defendant was bullied into settlement and that the judge failed to follow the law in refusing to consider amicus briefs or even in not ruling on the points of law before issuing the injunction.

Ars Technica has an article by Jacqui Cheng, “BlockShopper bullied into settling over Web links, link here. Apparently the agreement allows BlockShopper to link to “Jones Day” only if it spells out the name of the site in the URL. It’s hard to grasp how doing otherwise is “trademark dilution,” and the agreement threatens to set up a precedent where deeplinking is based on “permissions”. However, since it did not go to trial (the defendant did not have the money), it doesn’t set a precedent, and it sounds likely that an appeals court would have accepted this sort of trademark “argument.”

Slate has an even more detailed article that rings the warning bells, by Wendy Davis, “Linked Out: A case that threatens the right of Web sites to link freely,” link here. Davis points out the “trademark dilution argument”, which might be augmented by the 2006 revision law, could cause undoing of the previous cases that maintained that deep linking is all right in copyright law because it is essentially bibliographic (the 2000 Ticketmaster case).

And here is a PDF copy of the Settlement Agreement.

Once in a great while, I find a situation myself where I refer, with a hyperlink, to something someone wrote or did "personally" where it might be convenient to mention their professional connections with the link. This certainly happens with lawyers or insurance agents, for example. On a few occasions, I have avoided giving the "professional" link if I knew that the person's activity was "personal." This gets related to the whole "online reputation" issue. It sounds like it is stretching things, however, to claim that this is "(prospective) trademark dilution." Some legal observers warned in 2006, which President Bush signed the revised law, that there would be some "bullying".

Given all our financial turmoil, we seem to be heading toward a world in which “the strong” want to establish their power over the “weak” for power’s sake. A lot of people, unfortunately, believe that might makes right. I thought that it was up to the law to stop this kind of powergrabbing.

Update: Feb. 24, 2009

Nevertheless, Todd Bishop, on his Microsoft Blog (on Techflash) offers this humorous account of the value of what Blockshopper does, with his "Stop the presses! Some guy from Microsoft just bought a house!" link here.

Union Square (NYC) domain name and parody case settled

2009-02-03T07:17:00.000-08:00

A website that parodied a Union Square development group (relative to ancient Union Square on 14th St in New York City, not the glitzy Union Square in San Francisco) is back up after an expensive out-of-court settlement. The original domain had been called “unionsqaurepartnership.org” and apparently the business development group did not bother to set up a domain in time before the parody site was set up. However, this domain name will be relinquished.

The new domain name cannot be safely repeated here because of a “bad word” in it, but here is the link. The satire on center left column “The Results Are In: USP Victory Over Activist Savitri Durkee and the First Amendment” explains what happened pretty well. The actual Union Square Partnership development group’s site is here.

The legal case also involved copyright law, and the arguments maintaining that parody is fair use. But it seems that the main dispute was really over the domain name itself. It sounds, in practice, more like a trademark or trademark dilution case.

I lived three blocks from Union Square, at 11th and Broadway, in the Cast Iron Building from 1974 to 1978. In those days, Union Square looked dismal, and I would note the contrast with a similarly named public space in San Francisco. The BMT and IRT (Lexington Ave. line) subways both stop there. I last saw the area in 2004, but expect a visit again some time during the first half of the year.

In a number of communities around the country, real estate developers have tended to threaten protesters with SLAPP suits. This is one of the areas where tort law abuse seems to be the most troubling. It’s unclear how the national real estate economic meltdown and financial crisis will affect the legal climate or its abuse.

Gatehouse and Boston settle news scraping case

2009-01-30T08:37:00.001-08:00

Michael Kwun has an important story dated Jan. 26, 2009, indicating that GateHouse and Boston.com (owned by the New York Times) settled before going to trial Monday morning.

The link for the story is here.

The EFF story has a link to a PDF document copy of an email communicating a “binding level agreement.”

As the story says, this is a kind of rewind or an undoredo of history. Boston will stop literal newsscraping in this fashion, and Gatehouse will impose some technical impediments to prevent it. But both sites agreed that they can continue to deep link. EFF says that the details of the agreement could be counterproductive, turning away free traffic.

As I noted yesterday, “competition” in the Internet traffic business is a deceptive concept. It is not a zero-sum game.

EFF whimsically calls one of its home page features its “Deeplinks Blog.”

In the the intellectual property world, trademark (and copyright) don't play zero-sum games; look at the "Picturehouse" story

2009-01-29T06:04:00.000-08:00

In the Internet and media world, do multiple brands dealing with the same or similar material confuse costumers and limit profits?

The conventional wisdom holds that, and trademark law reflects that belief, but it’s probably not really true. A recent book by law professor James Boyle, “The Public Domain” (reviewed on my books blog Jan. 14) challenges conventional beliefs in all intellectual property areas when it comes to the Internet.

I’m reminded of this issue by coming across stories that Time Warner, last May, put to sleep three of its movie brands: New Line, Picturehouse (which was part of New Line) and Warner Independent Pictures. Legally, it closed down some separate companies as a business decision. But why not keep using the trademarks? It looks like “New Line Cinema” is back as a brand again, and Picturehouse (originally a venture between New Line and HBO) is too neat a concept (and a great musical-video logo) to give up. Warner Brothers ought to start reusing it as a brand for eclectic, grownup independent films even if it is no longer a separate company. (The website is still there.) The brand would tell the moviegoer what “culture” of film to expect. That is how the concept of brand is supposed to be used. There is no reason one studio can’t have multiple brands (look at Sony with Columbia, TriStar, and Screen Gems). And studios could make up brands to identify collaborations, and can reuse them later when circumstances change. It just takes paying lawyers for some paperwork. (By the way, “Warner Independent Pictures” seemed less distinguished; why not use Picturehouse for all the indie release?)

In the Internet area, we know that advertisers look at analytics for page requests, bounce rates, pass-throughs and the like. In some quarters, domain names have become a sensitive area and there is a fear that misleading names of even content “paradigms” will take business away from someone else in some kind of legally unfair competition. This has gotten to be more sensitive during the economic downturn.

But this viewpoint assumes ignorant users. Perhaps it matters for product sales, but when it comes to actual content (social and political) the issue is much more complicated. Educated users typically look for things in search engines, and well-constructed and substantial essays and blog entries usually get ranked high for free without any need to pay for placement. “Valued” visitors (those likely to be interested and open to new kinds of thinking) normally will make the effort to locate most of the relevant content, so sites do not “compete” for social content attention the way they compete to sell things.

There is perhaps an issue with free content. Many authors set up websites to sell their books and make conventional sales pitches (along with e-commerce) and find them somewhat ineffective, unless the content is really novel. Sales through Amazon and Barnes and Noble are much more convenient. Should authors offer some of their content free so that it gets read anyway? Some of the discussions by Boyle suggest that the practice does not prevent sales, and might even encourage it. Unlike most products, intellectual property (in both the trademark and copyright areas) is far from a zero-sum game; it tends to become cumulative quickly.

Another lawsuit (against NY Times and Boston.com) deals with deeplinks for both copyright and trademark dilution concerns

2009-01-23T12:12:00.000-08:00

There is an important case brewing about “deep linking”, and Electronic Frontier Foundation has a major story posted today Jan. 23 by Michael Kwun, “GateHouse v. New York Times: Lawsuit Attacks Bostom.com News Aggregation Site”, link here. The action is taken against the New York Times, which owns Boston.com. The specific target for the complaint is a subdomain for Newton, MA, link here.

The full complaint is here (PDF) and deserves a reading.

The complaint claims copyright infringement in the use of banners and verbatim content, rather than links. The complain also claims trademark dilution (it seems it is using the prospective provisions of the 2006 Trademark Dilution Revision Act) suggesting that readers will believe that the Boston.com had a license to display GateHouse marks in such a manner (that is, visitor “confusion”). The brands involved include Newton Tab, Daily News Tribune, and Wicked Local.

Originally, the complaint was also concerned about ad-bypassing with deep links, but that portion seems to have been dropped. In a letter (linked in the EFF story) Goodwin/Proctor says “GateHouse does not claim that the act of ‘linking’ or ‘deep-linking’ by Defendant New York Times (or any other entity) constitutes unlawful activity of any kind.”, But the letter goes on to mention “trademark dilution.”

The federal judge (Young) has scheduled a trial to start Jan. 26 and promises a timely verdict after the arguments and evidence. It’s unusual for a case like this to go to trial.

There is real concern here for publishers, and possibly downstream liability if Section 230 gets weakened, and also for blogger insurance. Although the plaintiffs seem to be claiming that the Boston site is doing unreasonable copying beyond Fair Use, it may be difficult to draw the line in the future, particularly on the trademark questions. Remember the 2006 Trademark Dilution law was criticized on the idea that there were many gray areas that could invite abuse, although there are supposed to be defenses based on non-commercial use and a quasi “fair use” that I discussed on this blog June 28, 2007.

Stay tuned. This case is important. It does seem to remind us of the Associated Press case, which I discussed on my main blog June 2008 here.

There have been other cases, such as Google’s use of thumbnails, and many other companies use similar models for scraping news, such as Techme.

Boston.com’s own account of the litigation is by Robert Weisman, dated Jan. 23, “Lawsuit over website links in spotlight: Copyright violation or fair use to be decided”, link here.

I want to ad that in my own practice, I generally do not reproduce images or content (other than article titles) in links in my blog postings. I try to put as much of my own spin on the content as possible, sometimes referring to personal incidents, even though that practice has its own potential weaknesses for criticism.

There are other potential questions, I suppose, in my approach to blogs. Do television show and movie reviews create a problem if they provide spoilers or simply reproduce as a rewrite the program? (Paraphrasing itself presents interesting questions sometimes.) But again, I usually try to indicate why the media even is important. For example, some of Dr. Phil's programs are important because they tackle gender identity issues, or Internet "online reputation" issues and lead to further discussion of the underlying issues online. Even movies (like "A Broken Life") present ethical quandaries themselves worthy of add-on discussions, as does even opera, for example, as "Pagliacci" also covers the problem of "reputation" in "fiction." My take, in either trademark or copyright, "fair use rocks."

Update:

EFF has a story on Jan. 26 to the effect that the parties have settled. More details are forthcoming here.

Restaurant case illustrates many trademark issues; Business Week has slideshow on "David v. Goliath" cases

2009-01-05T11:47:00.000-08:00

Stacy Perman reported (in Business Week) a complicated restaurant trademark case in Business Week back on May 30, 2008, “Wolfgang Puck v. Wolfgang Zwiener: two restaurant chains with similar names are about to square-off in a trademark infringement showdown,” link here.

The fact pattern is quite complicated, and involves questions such as geographical concentrations (in this case, New York and Los Angeles) and the use of personal names as marks. The article goes on to discuss the underlying philosophical and ethical issues in trademark law: the fact that businesses feel fiduciary pressure to protect their brands, but the tendency is to crowd out small businesses, often who do not have the resources to fight what seem like morally legitimate positions, even with respect to the newer problem of prospective infringement or dilution in view of the 2006 law.

The article leads to a “slide show” of “David v. Goliath” trademark cases, here. These include Vuitton, AOL and NavQuest, Starbucks and Conga, and the Lance Armstrong Foundation.

Ebook says it makes trademark law easy to understand

2008-12-20T12:15:00.000-08:00

A website called “Trademarkingebook” purports to make trademarks understandable and usable by ordinary people. The site is http://www.trademarkingebook.com/ and the site is called “Trademarking Made Easy.”

It mentions the apparent use by Paris Hilton of “that’s hot” as a trademark, and then explains the four kinds of words that help make a brand distinct. These are (1) arbitrary [strongest] like “Exxon”, (2) suggestive, (3) descriptive, and (4) common or generic. Ordinary words are the least likely to be indicative and unique enough to become credible as a brand and qualify for trademark protection according to the USPTO. In many cases, different organizations in different lines of businesses can use similar or even the same names. For example, no one would confuse “Lowes” home improvement with “Loews” theaters.

The website also discusses the concept of “service mark” as opposed to trademark, and the relationship to the “R” symbol.

The site has a download for the ebook by credit card; I could not find it on Amazon, although maybe I didn’t look right.

Tiffany v. Ebay is a serious test of prospective "secondary" liability under trademark law

2008-12-06T13:43:00.000-08:00

There is a serious trademark case Tiffany v. Ebay in the Second Circuit now.

A federal judge rejected Tiffany’s claim that Ebay must screen all products for possible trademark infringement before posting on the site. Ebay does remove jewelry items that Tiffany specifically complains about, but Tiffany wants Ebay to be responsible for the “downstream liability” of allowing the item to appear at all.

The Electronic Frontier Foundation, Public Knowledge and Public Citizen have filed a amicus brief urging the Second Circuit to uphold the judge’s ruling. The link for the PDF document is here. It is authored by Fred von Lohmann, Michael Kwun, and Corynne McSherry.

The document mentions several concepts. The Inwood case has to do with “inducing” trademark infringement by continuing to supply objects to an entity that one knows is infringing. But the brief says that the analogy is not valid. The Supreme Court had dealt with contributory infringement in Sony v. Universal in a narrow reading.

However, the was a case in the Seventh Circuit called Hard Rock v. Concession Services, where the concept was extended to “secondary infringement.”

The brief goes on the argue that requiring an intermediary to vet customer placements for possible trademark infringement would have a chilling effect on online commerce, perhaps with other vendors like Amazon, or maybe with self-publishing services. Should a domain name registrar have to vet an application for a domain name for possible trademark infringement? That could make the whole domain business economically impractical, when ICANN already has good-faith mediation procedures in place.

It does sound as thought the “prospective” component of the 2006 Trademark Dilution Revision Act could come into play, however. Other attorneys had speculated after passage that the law could be abused, and Tiffany could represent an attempted abuse.

I wonder how this compares to other areas of intermediary responsibility in Internet law, like Section 230 or the safe harbor provision of the DMCA.

This sounds like a case of a big company with bureaucracy wanting to stifle competition from low-cost entrepreneurs in a difficult economy.

EFF has a Press Release Dec. 4, 2008 “Jewelry Company Quest to Expand Trademark Law Could Quash Internet Commerce: EFF Urges Court to Reject Appeal in Tiffany v. eBay” link here.

"History" has two different major websites (with .com, .org), no problem

2008-12-03T11:36:00.000-08:00

Here’s a good example of a common word as a domain name used by two different entities for equally legitimate purposes.

History.com refers to the History Channel (its official registered workmark is "History made every day!"), a well known cable and satellite television channel owned by A&E, Hearst, and Disney. The channel offers historical documentaries about controversial or snazzy topics, such as the JFK assassination, religious cults, early technology, early warfare, and even UFOs, as well as a new cosmology and astronomy series “The Universe.” A values series has been “Mega Disasters,” about 20 or so episodes over two seasons that outline natural (and some manmade) calamities that could challenge civilization as we know it.

History.org refers to Colonial Williamsburg, “The future may learn from the past”, the official site of the private organization that maintains the restored colonial city of Williamsburg, VA, critical to the American Revolution, about 50 miles SE of Richmond VA. And important recent addition is “Revolutionary City”, an outdoor drama that runs except during the winter months. The site also offers gifts, books, videos and DVDs about life in colonial Williamsburg and during the American Revolution, some of which are not commercially available anywhere else.

Shaun White PC Game makes me wonder about personal names as brands; what about domain names then?

2008-11-28T08:37:00.000-08:00

The other day, in a “red card” Target store (trying to break the consumer freeze in our economy), I noticed a computer game on sale with Shaun White’s name as an apparent trademark. It was “Shaun White Snowboarding” (link here). While I enjoy seeing Shaun in American Express ads (as well as in the movie “First Descent”) I wondered about what happens when celebrities use their own names as brands, possibly locking out other less famous people from doing the same thing, possibly even as domain names.

I am lucky to have an unusual enough (and difficult to spell) Eastern European name that it wouldn’t happen to me, probably. But it certainly can happen to others. Section III of USPTO’s Examination Guide (link)seems to prohibit or discourage the use of surnames (only in combination with TLD’s) as valid brand trademarks. But I still wonder where this is now.

Bizarre trademark litigation seems focused on normal journalistic links and reporting

2008-11-19T16:58:00.000-08:00

Corynne McSherry has a disturbing article about what appears to be frivolous trademark litigation, in an article (Nov. 17, 2008) for Electronic Frontier Foundation, “Judge allows bogus Jones Day claims to go forward,” link here. The case involves a defendant BlockShopper.com that provides information on real estate transactions in various cities. In this case, BlockShopper allegedly named the Jones Day law firm in a headline and provided links to Jones Day biographical profiles on the Jones Day site. Jones Day claimed that this could lead to customer confusion about the meaning of the mark. EFF says, in the article, that the law supports the idea that journalists can refer to companies and partners or officers (accurately) and link to them in ordinary reporting without suggesting some sort of confusion about “sponsorship”. The article also notes that the judge should have been able to dismiss the case summarily as a matter of law, which (unlike facts) does not depend on a jury. The article notes that if trademarks were interpreted in the manner that the plaintiffs claim, no journalist could write about any company without permission.

Another view of the case is on a site called “Chicago LP Litigation,” story by David Donoghue, link here (Aug. 14, 2008). Look here for links for the complaint and restraining order.

The litigation appears to be related to the Lanham Act of 1946, Cornell Law reference here. It does not appear to invoke the newer Trademark Dilution Revision Act of 2006.

But in another way the litigation seems bizarre to me. Normally lawyers and other professionals in any licensed field welcome the use of their professional profiles on the Internet, given the controversy over “reputation defense” and “non-professional” social networking profiles. It’s hard to understand that they would object here. They’re getting more favorable advertising, it seems to me.

An important case with "counterfeit" trademarks; could affect online advertisers and bloggers, too

2008-11-03T12:12:00.000-08:00

The legal blog of Vcorp services reports that Louis Vuitton, a leather goods company, has been awarded $3 million in statutory damages (plus attorneys fees) for trademark infringement against Marco Leather Goods Ltd., Coco USA Ltd. and the principals Chong Lam and Joyce Chan. The legal question here seemed to be “trademark counterfeiting,” which is apparently the attempt to create “ripoff” products that resemble the original. The concept would be similar to what happens in the web when another party registers a domain name, slightly misspelled, in bad faith to divert traffic.

The Vcorp story is here.

LexisNexis has a similar story in its Trademark Law Center here.

I could not find the opinion readily, but here is a cease-and-desist order (PDF link) related to the case back in Feb 2008. It makes interesting reading.

Here is a somewhat related story (earlier, date 9/5/2006) about the downstream consequences for publishing contextual ads with Adwords, here. The story is important to online advertisers (heed the implied warning!)

Faulty patents may affect innovation by music composers (classical and rock both)

2008-10-27T16:12:00.000-07:00

The Electronic Frontier Foundation has a “patent busting project” aimed at preventing illegitimate patents from stifling innovation.

A case of recent importance involves Seer Systems, which had been awarded a patent (by USPTO) for combining files of different types to be played on the Internet. Seer had already collected some money in litigation against Beatnik, which develops software for mobile devices (and might even be used for “Gossip Girl” style mobile blogging). Some of Seer’s technology had already been published in a book by the patent inventor, Stanley Jungleib. An Amazon search shows that Mr. Jungleib has published several works on electronic or computer-generated music and even on the theory of tonality, a topic important to modern composers (who today often write “atonal” or “twelve-tone” music).

The story on “Outlook Series” is called “EFF Challenges Bogus Patent on Internet Music Files” here.

EFF’s own blog reference (Oct. 8, 2008) is similar and gives some detailed technical links. The URL is here.

This case would be important to modern music composers, both classical and rock or disco, and I am familiar with some of their work.

U.S. Attorney tries to revoke trademark of motorcycle group

2008-10-25T07:20:00.000-07:00

A United States attorney has said that the government will take control of a biker gang’s trademarked name, while filing an indictment against members of a gang called the Mongols. The attorney said he would seek a restraining order preventing the gang from using or wearing its symbol.

Indeed the USPTO database for registrant number 76532713 filed in 2003 says that the mark is for G & D: Association Services, “promoting the interest of persons interested in the recreation of riding motorcycles,” and classifies it as a “typed drawing.”

The Los Angeles Times story by Scott Glover, Oct. 22, 2008, is titled “Raid targets Mongols motorcycle gang” with link here. Electronic Frontier Foundation provided a link to it on its “deep links blog” list.

The case calls to mind the motorcycles movies from the 60s and 70s, especially those from American International Pictures (like “Born Losers”).

Fake networking profiles could create trademark infringement, and even school districts could file complaints

2008-10-20T06:49:00.000-07:00

There has been a lot of discussion of phishing emails on the Internet, where spammers use the names and even trade dress of well known corporations and banks (or even ISPs) to get personal information. I’ve noted before that, among other remedies, it would sound as though corporations could claim that this is trademark infringement, because such activity obviously dilutes and tarnishes an organizations mark (even prospectively, as in the 2006 law).

I’ve also noticed occasionally that social networking and even professional networking sites are misused for this purpose. Occasionally, spammers set up accounts in the names of well known organizations to attract traffic for fraud, pornography, or other patently unlawful content and activity. The targeted organization may be a non-profit or a government entity. Last week, I found a comment (in monitoring status – I monitor all comments) on one of my other blogs which pointed to a URL that claimed to be a profile on “members.work.com” from the Muscogee County School District, which would be the area around Columbus GA and Fort Benning (which I actually visited in 1994). A school district has “customers” (parents and children) and in the broadest sense of the concept of trademark law, this would sound like an attempt to tarnish the reputation of the school district as a quasi-commercial entity doing business (by falsely suggesting that its teachers or employees are involved in “adult” commerce). If the school district learns of this, it would seem to be it could bring trademark action against whoever posted that profile. Of course, there could be other questions (libel).

Here is an example of using the law to stop obviously objectionable behavior by others. The problem is that it is hard, then, to know how to draw the line.

Many companies in different business lines have similar names and should be careful about trademarks

2008-10-18T15:13:00.000-07:00

I have recently noticed more examples of companies in different lines of business with the same name and with domain names spelled almost the same (sometimes the TLD is different, sometimes there is a hyphen). Sometimes one company has a USPTO trademark and the other does not.

I am under the impression that generally it is all right for companies in different (and non-competing) business lines to have the same name, as long as there is no reasonable chance of customer confusion or some act of bad faith (an attempt to connect another company with pornography, for example). However, when an entity or new company wants to use a trademarked name in a different line of business, it should check with a trademark attorney first. It is likely to be a good idea to go ahead and apply for a trademark with the USPTO and make sure that the USPTO will accept it. Look here at ip-brands discussion (look at the POLO example).

An important concept is the Trademark Acceptable Identification of Goods and Services system, link here. The 45 basic classes are identified here but the USPTO requires more specificity in identification than these categories with an application.

Remember that ICANN has inexpensive administrative procedures to resolve domain name disputes where “good faith” is claimed.

Attempting to claim parody of another’s trademark can be dangerous. Trademark is more resistant to parody than copyright in the “fair use” area. For example, see this discussion at World Patent & Trademark News.

Internet companies try to stretch the concept of trademark ("Cloud Computing"; "Live Mesh")

2008-10-07T11:06:00.000-07:00

Recently (Aug. 31, 2008) Steve Lohr of The New York Times ran a thoughtful discussion and recapitulation of new issues regarding “branding” on the World Wide Web. The story is called “A New Battle is Brewing for Branding on the Web,” link here.

One issue is that companies want to trademark computing service concepts that go beyond the idea of what usually is expressed in a domain name. Dell wanted to wordmark “Cloud Computing” and was turned down by the USPTO. Microsoft wants to trademark a concept that it calls “Live Mesh” regarding coordinating the activities of people in a cohort. (It sounds more like something a social networking site would try to trademark.) The jury is out on that one.

The article notes that ICANN has been active in managing domain name v. trademark disputes since 1999, and that a recent area of controversy is domain names set up to criticize or parody a commercial product or service already established as a brand. Does such activity cause dilution in the meaning of trademark law? Another controversy is the practice of buying “keywords” of business competitors from search engines in order to display “your” ads from a search on that keyword. This seems to be more acceptable in trademark law in the United States than in Britain or Europe.

USPTO official Lynne G. Beresford is mentioned in the story, and she indicates that some attempts to establish trademarks in cyberspace seem to stretch the intention of the legal concept.

Merrill Lynch will still have a valuable trademark and brand

2008-09-15T07:22:00.000-07:00

The acquisition of Merrill Lynch by Bank of America, as announced yesterday, does seem to present an argument for aggressive use of trademark laws and of the concept in some cases.

Although Bank of America will own the shares and the ML will cease to be traded as a separate entity, the Bank will have the right to operate Merrill Lynch under the Merrill Lynch brand if it chooses. It would have the right to keep a separate corporate reporting structure if it wants, but the main concept is that the “brand” (with the name as a wordmark and the bull as a trade dress) will continue to exist to identify a brokerage service for consumers. No other party would have the right to use the mark for financial services. Purchase of a business does not eliminate its identity as a brand under trademark law and has no direct effect on its trademark registration.

Media reports have continued to stress the separation of accounts within a brokerage business, and the proper use of the brand name should help reinforce the public’s confidence in that concept.

So, trademark law is necessary for many activities that we take for granted, including economic continuity.

HR 4279 could strengthen trademark dilution provisions

2008-09-09T07:16:00.000-07:00

It’s important to note a new bill in the 110th Congress, H.R. 4279, “Prioritizing Resources and Organization for Intellectual Property Act of 2008”, introduced by John Conyers (D-MI), with nineteen cosponsors. The Congressional Research Summary on govtrack for the bill is here.

Section 104 is important, because it would make it a crime to intentionally induce another party to “violate a trademark” and for providing goods and services to enable a trademark violation. It would double the minimum and maximum statutory damages for trademark infringement. In combination with the “prospective dilution” provision passed in 2006, this development could be dangerous for some novice parties.

USPTO, Office of Science and Technology Policy announce National Medal of Technology winners

2008-09-05T17:20:00.000-07:00

The United States Patent and Trademark Office has a cover story regarding the 2007 National Medal of Technology and Innovation awards at the White House, announced by President Bush and U.S. Commerce Secretary Carlos Guiterrez.

The winners dealt with technologies in packet switching, hereditary metabolic disorders, real time server based operating systems, online trade software, Total Quality Management (of which I took a course in 1994 at work), bioelectrochemistry, lithographic imaging, and aircraft technologies.

The details are in a web article PDF from the Office of Science and Techology Policy, Executive Office of the President, here.

And here, from the Department of Commerce.

The selection process is described on this page.

The USPTO in Alexandria also reports that it has added a new exhibit in its museum, with the byline “Electronic “Portrait Gallery” Brings History of the U.S. Intellectual Property System to Life.” I will visit the exhibit later.

Noted Christian writer lets his domain lapse, has domain based on his name squatted

2008-08-25T09:14:00.000-07:00

A well known Christian author and speaker Ed Gray had his domain name stolen by a “cybersquatter” when he failed to renew it on time. Gray is the author of “40 Days to a Life of G.O.L.D. (God Ordained Life Development) .” You can visit the parked domain now and see that the domain name is held “hostage” for sale.

Gray quotes Shakespeare: “He who steals my purse steals trash … but he who robs me of my good name – robs me of that which – makes me poor indeed.” I hadn't thought about this, but it seems that "online reputation defense" could apply to tarnishment with domain names, too.

Fortunately, Ed Gray has an alternate domain, here.

I’m not sure if ICANN regards a situation like this as registration in “bad faith.” If your domain processes commerce, than it is likely you can register it as a trademark with the US Patent and Trademark Office. If might be considered a trademark if it had become “famous” in commerce even without registration, and it’s conceivable that the “prospective” aspect of trademark dilution expressed in the 2006 might become an applicable concept in this sort of situation. It’s important to pay attention to WHOIS information and re-register on time. One of my favorite “domain information” sites right now is Domain Tools which used to be “whois.sc.”

To review (I think I've post this before, but I can't find it now), the URL for ICANN's administrative domain name dispute resolution policy is here. ICANN has a new Policy Information page here, which I will have to spend some time navigating.

Picture: Brownie Hawkeye shapshot from around 1972 in West Virginia (Tygart Dam).

Chilling Effects has major page on trademark

2008-08-06T15:55:00.000-07:00

Chilling Effects has a trademark information page that is well worth noting. The basic link is here.

There is an FAQ page by Maya Alexandri titled whimsically “What to expect when you’re expecting (to be sued for trademark infringement).

The page covers such topics as international issues, and similar but not exactly matching wordmarks, and the idea that a trademark connotes the source of a product or service. The page indicates that “it isn’t easy in the United States” to establish if another party has a valid trademark. There are some interesting concepts, such as contributory trademark infringement, and even the possibility that the use of HTML meta-tags based on another party’s trademark could sometimes constitute infringement.

“Fair use” is possible in trademark law (as in copyright). Here the term refers to the use of a term for its descriptive value rather than a secondary commercial (and therefore trademarked) value. Parodies are possible.

It is entirely possible for non-profit organizations to use trademarks if they are engaged in commerce.

Jared Kramer discusses the Anticybersquatting Consumer Protection Act (USC 1125, section (d), “Cyberpiracy prevention”, link here on Cornell Law School’s site. This, of course, starts with the premise that domain names can interfere with the use of trademarks, a problem that became evident in the 1990s, as some companies were slow to set up domains based on their marks before others had used them, sometimes unaware of the existing companies’ marks. Cameron Johnson discussed this problem in his book “You Call the Shots” (see this blog April 14).

Amy Bender discusses ICANN’s Uniform Domain Name Dispute Resolution Policy.

Picture: from NASA (p.d.)

Facebook removes Scrabulous game; an authorized version of Scrabble to be launched in August

2008-07-30T06:21:00.000-07:00

Facebook has reportedly removed its “Scrabulous” application, after Hasbro and Mattel filed a lawsuit against the creators (Rajat and Jayant Argawalla from India) of Scrabulous for copyright infringement. Technically this is a copyright action involving the notion of derivative works and fair use, but it’s obvious that there could be trademark questions as well.

Mattel (and its publisher Electronic Arts) has offered a legally authorized version of Scrabble for Facebook, to be implemented in August 2008.

The Scrabulous controversy was first discussed on this blog March 22, 2008.

Facebook users said that the Scrabulous game enhanced their social networking experience, in a way that went beyond the experience of the game itself.

A typical news story appears in Digital Journal, here. That story maintains that Facebook had received a (Digital Millennium Copyright Act) DMCA “safe harbor” takedown notice in advance of the litigation.

Even so, the Scrabulous link at Facebook was still working this morning (July 30) when I tried it around 9 AM EDT. The direct link is this.

Aug. 1, 2008

The Washington Post Express reports (on p. 10) that Facebook has reinstated a legally acceptable version of this program called "Wordscraper" with different graphics. It may well have the official Mattel product soon, however.

Roger Ebert keeps the idiomatic "thumbs up" as a trademark

2008-07-22T10:42:00.000-07:00

In a bizarre development of corporate namesakes, the Walt Disney company will take “Siskel & Ebert” and then “Ebert & Roper” in a “new direction”, and Roger Ebert will no longer be connected to it. Yet, the studio will apparently use his name.

At the same time, however, Robert Ebert is keeping the “thumbs up” or “two thumbs up” (or “thumbs down”) phrases as trademarks for movie ratings. A fairly common idiomatic expression in English becomes and stays a trademark.

Siskel and Ebert had started as “Sneak Previews” in 1975. Siskel died of a brain tumor in 1999 at 53. Ebert has battled salivary gland cancer in recent years.

Ebert has always been known for innovative reviews that tended to favor smaller, independent films before they themselves became big business. A couple other of his favorite movies were “Wolfen” and “The Year of Living Dangerously.” He seemed to like originality in story telling, a willingness to take risks with the “three part” structure so fundamental to screenwriting.

Ebert’s account of the change appears on his own site in a Statement here.

Online Education Database lists Martin Schwimmer's "The Trademark Blog"

2008-07-15T08:44:00.000-07:00

I wanted to make notice of Martin Schwimmer’s “The Trademark Blog,” link here.

I noticed several interesting items on it immediately. For example, there is a case in Alabama of a textbook company that is trying to prohibit used copies of its book from being sold. Imagine how that fits into the law! (I wonder how Amazon would react to that. Sales or residuals of used books is just part of the book business; as an author, I live with that.)

But what’s even more interesting is the text of the Petition to cancel the Facebook trademark registration (specific link called "Trademark Practice" and is here), a case that I discussed earlier on this blog, as well as in my book reviews and “information technology jobs” blogs (see my Profile for links). My own take is that trying to combat what sounds to me like “reverse engineering” bucks the trend of progress, and that I hope that the parties settle amicably – and move on to better things (like indie movie making).

Schwimmer’s blog was mentioned on a long list published yesterday by the Online Education Database (discussed today in my main blog).

I set up my own blog about trademark because of my concern about trademark and domain names, exacerbated by the Trademark Dilution Revision Act of 2006 (originally proposed in 2005, and signed into law in Oct. 2006 by President Bush). The details of the legislation are discussed particularly in June 2007 on this blog.

USPTO will host inventor's conference

2008-07-08T07:10:00.000-07:00

The United States Patent and Trademark Office will hold its 13th Annual Inventor’s Conference on the downtown Alexandria Conference (fairly close to the King Street Metro on Aug 8-9 2008. The web reference is here.

This may be an opportune moment to give a link point out the differences in the legal definitions of patent, trademark and servicemark, and copyright here.

On this page there is a link to a video that explains the Patent Office (particularly to perspective employment applicants) and includes a section “What is intellectual property?” There is another longer section where employees explain the work of the USPTO. The video requires the latest Real Player and some machines may require automatic updates for the video to work. The USPTO in insists that among government agencies, "we're different."

Company associated (at least tangentially) with founding of Facebook was in interesting trademark case

2008-07-06T11:31:00.000-07:00

Having read Aaron Greenspan’s intriguing book on his place in the birth of Facebook (itself a matter of controversy) and read about his own trademark battle, I looked a little further.

I found a press release from June 2004 from its site “Think Declares Resounding Victory in Trademark Dispute”, link here. The other party was a company named H. Co. Computer Products and this time the dispute was settled by administrative law judges within the USPTO (in Alexandra VA.) From a reading of the press release, it would sound as if there was some thought about future confusion, a concept codified into law with the 2006 Trademark Dilution Revision Act (discussed in detail on this blog in June 2007).

Think Computer offers a sublink called "Common Room," which as of today is undergoing renovation, but is seems to offer a variety of innovative services including literary agent submission (I wonder if this includes movie screenplays!) and specialized "professional" social networking, which employers may want to see their associates engage in (as I noted in a July 7 entry on the IT Job Market blog -- see my Profile). Because of my own interests (including a future screenplay submission) I'll watch this link to see what the company does with it.

My book review is here.

I noted in the review that variations of the words “think computer” have occurred in the trade and domain names of several businesses or entities (links given in the review). Because the name comprises common English words, it is more likely that other entities will want to use them. They may sound less distinguishing than a trade name that includes someone’s name (like Greenspan). I was able to figure out which domain went with which business in a couple of minutes, but that presumes some computer and Internet domain knowledge. Has trademark law evolved to the point that it is willing to assume that most consumers are able to figure out which businesses do which? Maybe an administrative law judge would consider the nature of the product or service being branded: a prospective customer for any of these entities would probably be computer-literate enough not to be confused. A prospective buyer of home furniture would not necessary be as literate.

I easily found the USPTO registration with a TARR search at USPTO. The mailing address (Palo Alto CA) on serial 78100628 matches that on Think Computer’s website. The registration includes an interesting disclaimer to the effect that no claim is made for exclusive use of the word “computer” in a wordmark, but the combination of “think computer” is presumably exclusive. The visitor may want to try various wordmarks on the TESS database at uspto.gov (Free Form Search or Advanced Search) and see how the site behaves and how similar marks, often in unrelated businesses, may come up for a particular search string.

I don't think there is any connection between these computer companies and "ThinkFilm" which is a Canadian distributor for independent films.

But, let's say, the "kids" settle this "feud" amicably and make a movie about the formation of Facebook. Maybe they throw in some material about "reputation defender." I'll help them write the screenplay. And guess who should distribute the (still hypothetical) movie in places like Landmark Theaters: "ThinkFilm."

A link to my Wordpress overview of trademark law bills and opinions is here.

M&M case has artists suing a major company for infringement

2008-06-25T04:53:00.000-07:00

In a trademark case that reverses roles, a lone artist Robert Burck, who dances and performs at Times Square in New York as the “Naked Cowboy” with cowboy gear and white underpants reading that phrase, is suing Mars Inc. and its ad agency for using his image to promote its candies. Robert appeared on NBC’s “Today” show today. A judge in New York has ruled that his lawsuit can proceed.

The CNN news story is “’Naked Cowboy’ can sue makers of M&M’s” and appears here.

Burck says that the parody interpretation of First Amendment rights would not apply to selling things. He talked about candy and obesity type 2 diabetes (even in kids) on the show.

There can be questions as to whether Burck's sartorial custom in public represents a real "trademark" or brand in the meaning of the law. It does need some commercial purpose, although non-profits can use trademark law, and do.

Craigslist in trademark and domain name dispute with spoof site and "unofficial blog"

2008-06-24T06:31:00.000-07:00

There is a new trademark dispute involving Craigslist. This incident involves the website called “craigslistblog.org” tared by Tim White. The site has a banner that reads both “unofficial craigslist blog” and “not affiliated with craigslist, Inc.” The site is a blog with amusing stories about little scams and incidents and some humorous and even mildly sexy pictures.

Craigslist finally started its own corporate blog, and I note that it is done with simple Wordpress.

Craigslist then also sent Tim what appears to be a cease and desist letter and Tim posted it on the blog, here.

This would appear to be a case of using the new concept of “prospective dilution” spelled out in the 2006 revised trademark law (see June 2007 on this blog). There is an increasing body of experience that suggests that domain names based on existing trademarks sometimes are considered infringing and likely to cause “confusion” or “dilution.” There is also an inexpensive administrative domain name resolution policy specified by ICANN based on the idea that the domain owner must register the name in “good faith.” However, as Electronic Frontier Foundation has pointed out, use of a trademarked name in a domain name is not necessarily infringing if it is set up to parody or criticize an existing trademarked entity. That is because parody or criticism provide legitimate (even if unfavorable) information about a brand. From a cursory look at White’s site, it isn’t obviously clear, however, that this is his intention.

Arstechnica has a story about this situation by Jacqui Cheng, “Craigslist bullies unofficial blog over domain, trademarks,” here.

I've noticed that people often set up "unofficial fan sites" for celebrities, sometime using the celebrities' names as domain names, and have wondered about the legal consequences of such practice.