Thursday, December 06, 2007

Governments can use trademarks: "Made in NY"


Non profit organizations can certainly have and enforce trademarks, as they need to engage in commerce in order to survive. In fact, so do governments and government entities. The United States Postal Service owns many trademarks, such as for "National Change of Address" software like FASTforward. Cities and municipalities often use them to attract business. In the movie business (as well as other consumer items), the City of New York has a trademark that says "Made in NY" with the slogan inside a circle. Films made in the City often display this trademark in the closing credits. Some films (like MGM / Weinstein Company 's "Awake") that have outdoor scenes made in the City but indoor scenes made elsewhere (like London) still can use the mark.

Wednesday, November 07, 2007

Trademark Dilution Revision Act aims more at prevention of encroachment rather than actual tarnishment


There is a bit of literature around on the web that the new trademark law (Trademark Dilution Revision Act of 2006 as passed in October of 2006) really is intended not so much to protect a mark (trademark, service mark, workmark, trade dress) from consumer “confusion” as from a more fundamental “whittling away” of distinctiveness, from encroachment that would, in theory, cause the effectiveness of the brand in a fiduciary sense (in the ability to generate sales) or possibly even politically (in the ability to keep a particular social concern high on the public radar screen).

The concept seems elusive. It seems more concerned with the notion that an established “corporate” interest has a right to maintain a public perception for results-oriented reasons regardless of the intellectual value of the perception, an idea that contradicts the understanding of society that academia encourages.

There is an essay about this view by Roberta Jacobs-Meadway “The Trademark Dilution Revision Act of 2006 Becomes Law—Dilution Revived? Intellectual Property” here, at Ballard Spahr Andrews and Ingersoll, here.

See blog story on passing the law (2006/10) on the June 7 2007 entry on this blog.

Saturday, October 27, 2007

MADD v MAIA -- can non-profits use the Trademark Dilution Revision Act? This case seems to confound common sense


Today (Saturday, October 27, 2007) CNN reported that “Mothers Against Illegal Aliens” (MAIA) as an organization recently received a cease-and-desist letter from “Mothers Against Drunk Driving” (MADD). Copies of the letter exist on the web, for example, at this link.

Although MADD is a non-profit and an advocacy organization, it does have a registered trademark (and wordmark) for its name. It would appear at first glance that MADD is making use of the Trademark Dilution Revision Act of 2006. On June 28, 2007 on this blog I wrote some detailed comments on the literal text of the law, and one of the affirmative defenses appears to be “any non-commercial use of a mark” which would appear to apply here, at least from the viewpoint of common sense.

As CNN reported, a search of “Mothers Against” unmasks many advocacy organizations. Only a few of them have been served notice by MADD.

It also seems counter to public policy to allow one organization to monopolize a common English language phrase or word if only part of the mark.

That’s not to say that there aren’t some potentially reasonable uses the law in a prospective sense. I agree that I probably should not publish a book with a title ending with “… for Dummies” (as IDG publishers have long owned a famous trademark on that well-known series of “how to” books, and the use is clearly commercial and related to legitimate fiduciary concerns of the owners and investors). However, even this example shows a certain paradox. The whole concept of public “confusion” over the use of a mark seems founded in notions of, if not illiteracy, at least a parochial sense of knowledge derived from the past when so much knowledge was derived from social (and business and religious) power structures. In today’s individualistic online age, members of the public, in general, are much less likely to misinterpret the intentions and associations of a “good faith” mark like “Mothers Against Illegal Aliens” than they may have been a few decades ago. In this particular situation, MADD’s claims seem facetious and driven more by subtle politicking than real need.

It’s true, organizations do have a reason to be concerned that the public get the “messages” they are delivering for the benefit of dues paying constituents. There is a bit of financial accountability, after all, even on K Street. In the asymmetric Internet age, individual speech has become much more effective and politically influential (relative to that of well-funded organizations) than at any time in the past.

I’ve also heard of a few cases where people have been challenged when using their own name for a business mark (when it, by coincidence, matches another individual or sometimes a company). That again is a serious concern.

Wednesday, October 03, 2007

USPTO to have trademark exhibit


The United States Trademark and Patent Office has announced that it will hold an exposition in Alexandria, Virginia from April 10-12, 2008. Companies or other entities with registered trademarks may apply to become exhibitors. The applications will be evaluated as to how well the exhibitor would be able to educate the public on the value of brand and on the appropriate use of the trademark concept. Potential exhibitors would be notified Jan. 15, 2008.

There are future details and an application link on the USPTO home page.

The uspto website has, for a number of years, offered consumers the ability to check wordmarks online. There is an information page that indicates how recently the online database was updated. There are disclaimers to the effect that only a manual search at the office would be definitive. In practice, however, the “Search TM database (TESS)” and “Free Form Search” (Advanced Search) are quite effective and reliable. The searches do not appear to be case or punctuation sensitive, and one can find similar combinations of words. There is a problem when the distinguishing mark is at the end of a phrase (“.. for Dummies” witn IDG books). The site warns about excessive bandwidth use.

The USPTO also announced that it has published guidelines to improve patent quality. The announcement is here:. The rules appear to have expanded the patent application process and allowed more claims per application. Here is the link:

Another important link is “Claims and Continuation Practice: The Final Rule”

Update: Oct. 8, 2007

The Washington Post has an important editorial on patent law reform here, p A16 in print in today's paper. It says that Pharmaceutical companies are particularly vigorous in defending intellectual property patent rights, whereas software companies prefer a more liberal interpretation (which sounds like a paradox) in allowing weaker patents. Low quality patents tend to increase litigation.

Saturday, September 08, 2007

Michigan Law Review aritcle on TDRA of 2006


The Michigan Law Review has a series called “First Impressions” and that series contains an interesting article by D. M. Cendali and Bonnie L. Schriefer, “The Trademark Dilution Revision Act of 2006: A Welcome—and Needed—Change." Here is the link.

The authors review the Act and answer some of the criticisms often made of it, both before and after the October 2006 passage and signature by President Bush. Ms. Centali is Chair of the National Copyright, Trademark & Internet Litigation Practice Group (INTA) and chair of its Dilution and Well-Known Marks Committee. The article warns that the opinions expressed are hers and not necessarily those of her associations.

She discusses the concepts of Fame, Dilution, and Tarnishment & Blurring. She discusses the concepts of “fair use” noncommercial uses for the purposes of political comment, criticism or parody, which somewhat mirror similar concepts in copyright law. Even before the revision in the law to allow prospective consideration of the “likelihood” of future dilution (a concept that reminds me of “propensity” in the military “don’t ask don’t tell” law – trying to predict an unfavorable result at some unspecified time in the future), she indicates that courts heavily favored fair use defenses. She indicates that the new statute, with some rewordings, strengthens these defenses. She indicates that a typo (using “subsection” instead of “section”) does not threaten the use of Fair Use in claims made for unregistered marks under the Lanham Act.

There is one major concern remaining, that many smaller businesses or web operators may not have the financial resources to defend themselves against dubious or frivolous “silencing” claims.

Thursday, August 09, 2007

Fantasy real estate properties; baseball


Sam Diaz has a story in the Thursday Aug. 9 2007 The Washington Post, Business, D1 print, “’Real Estate’ Sale: Fantasy Properties Get You Actual Money on the Web”,(story link) about Weblo, that offers online virtual replicas of real properties that can be traded like Monopoly properties. People can use the replicas on their own websites to generate business or ad revenue, or sometimes to stimulate sales of a real product in the real world.

At the Digital Media Conference in Silver Spring in June, I recall hearing about a similar capability in Second Life.

So far, copyright claims seem infrequently made, but can be by the original holder. It would seem that trademark claims could be made if the property were a brand name.

Monopoly, of course, provides a good example of trademark in practice, as there are hundreds of licensed variations of the game for various cities and hobby interests.

Another example of this kind of thing sounds like fantasy baseball. But MLB has really made its real world trademark stick, with incredible details and video and online progress available for every game available online.

But “Baseball reference”, a separate site, seems like a complete historical reference, with box scores back to 1957. A typical reference might be a the Washington Senators 1959 schedule, complete with 18 game losing streak in August, here: http://www.baseball-reference.com/teams/WSH/1959_sched.shtml or a typical box score
Or try this bottom-of-the-ninth meltdown for the "new Senators" in 1961: here. Look at old Griffith Stadium here.

Wednesday, July 25, 2007

Duplicate book, movie, television program names


Once again, in recent days various individuals have had questions about whether the same titles can be used in multiple books or multiple movies or television programs or series, websites (particularly domain names), or combinations thereof.

I am not an attorney; I am (for the purposes of these blogs) a researcher and writer. If the visitor has a specific question, it’s always safest to contact an intellectual property attorney in the same state (or country; overseas some rules can be different).

But, of course, I have watched this issue for years with respect to my own books and websites. I can share what the overwhelming majority of sources say.

Generally, the answer is yes. It is all right for more than one book to have the same title, or more than one movie, or a book and movie with different subject matter. Titles cannot be copyrighted. (Here is the Copyright Office link). A title of a series of books (like “… for Dummies”) that is marketed as a brand can be trademarked, so someone else who tries to release a book or movie with the same name may run into trouble.

It is common for movies to have different titles in different countries, and sometimes translations from one language to another are not “literal.” It is also common for unrelated movies to have the same name. Just browse through imdb. A good recent example is “Sunshine.” When movies are presented in a series with sequels (like “Harry Potter” or “Die Hard”) the series title is probably viewed as a brand, inasmuch as most large movie studios regard these series as cash cows and are sensitive to the possibility that the public interest in the film as a brand would be diluted. With a television series, it is not as clear, but probably in many cases a television series itself (“Smallville”) is like a brand. However, a work (from a different source) with the same name that had existed before the series came into being should be all right.

(Note: Sec. 2, (1) reads "...who, at any time after the owner's mark has become famous, commences use of the mark or trade name in commerce that is likely to cause blurring by dilution by tarnishment..." See the posting from June 7 for the link to the text.)

Lawyers have been concerned that the “likelihood” of dilution (and the ambiguities in some of the terminology of the new law) could be an excuse for large companies to go after small fry, but not when the smaller works were in circulation first.

Here is a USPTO trademark office link: (look at 4c.) Here is another typical link on using trademarked names as book titles.

Saturday, July 14, 2007

Business 2.0 on domainers


The June 2007 issue of Business 2.0 had a startling cover story, “The Man Who Owns the Internet”. That’s owns, not invents, so he’s not Al Gore. The title continues “Kevin Ham is the most powerful dotcom mogul you’ve never heard of. Here’s how the master of Web domains built at $300 million empire.” The article, on p. 69, is by Paul Sloan, and illustrated by Michael Llewellyn. The link is here:

A blog by Jay Westerdal claims that Ham’s fortune is even greater than reported in the mag, link here:

Ham is a medical doctor, living in Vancouver (aka Smallville, of course). But rather than medicine (this is single payer Canada, after all, in Michael Moore land) he decided he could make his fortune on the domain name business – as a big league “domainer.” This is all the software and infrastructure that generates synonym spelling names (parked domains) with advertising links. The article talks about Cameroon, the tld .cm, and the master site agoga.com. The article mentions some other moguls, like Yun Ye, Garry Chernoof, Craig Lovik, and Scott Day.

One operator even did a .org park on my doaskdotell.com. I ignored it. It does seem to me that this sort of thing goes against the “good faith” practices of ICANN rules and might run into issues with the revised trademark law (going offshore makes it complicated). The article indicates that Lam kept a low profile because of the ambiguities. Sometimes there is a tradeoff between making money and enjoying the limelight, I guess.

The blogosphere, not being particularly moralistic, tends to like what he did. It’s innovative, and the money he makes will eventually do good. I don’t pass judgment. I’ve had people ask me about this, and no, I wouldn’t want to. I’d rather create content and be publicly known for it and be read about in literature anthologies a half century after I’m gone in high school English (not high school musicals with Zac Efron clones).

Until August 2005 I had a lot of my content on hppub.com, which was supposed to be contraction for "High Productivity Publishing." Because I no longer was really selling books myself, I didn't think it was kosher to keep a name like this, and moved everything to doaskdotell.com, based on the title of my first 1997 book. A casino company took it over. A woman called me in a couple weeks and asked me to sign it over (I thought if I didn't pay Network Solutions for the renewal, I had no rights) and offered $50 at Paypal, but I took no money, as I had relinquished the domain.

Monday, July 02, 2007

Trademark Dilution would apply to spammers


I repeatedly get unsolicited emails, cleverly set up, from banks claiming all kinds of things: that my online banking is suspended, that I need to do a system test, that I have overdue bills, etc. Of course, we all know that this is “social engineering” and that these are the well known phishing scams. If one follows the hyperlink on such an email, one finds a link other than the bank, an IP address that, if looked up on WHOIS, tracks to overseas, often China.

These emails have the bank trademarks, with sender addresses cleverly spoofed to look like they come from the bank. Of course, as noted earlier, this argues for replacing email with protocol safer than SMTP, but the main point here is how the spammers use the bank trademarks, and format their pages to look exactly like the banks’ legitimate emails.

Bank of America seems to be the main target. The spammers love to reproduce its red, white and blue trademark.

It strikes me that this kind of activity provides a legitimate use of the Trademark Dilution Revision Act as passed. A bank can now say that it does not have to prove financial harm yet in order to claim tarnishment or dilution, which this kind of criminal activity obviously represents. But legal action may be of little value overseas.

Thursday, June 28, 2007

More on the literal reading of the Trademark Dilution Revision Act of 2006


The Trademark Dilution Revision Act of 2006, which modified the Trademark Act of 1946 by stipulating that the owner of a “famous mark” may obtain injunctive relief against another party that “at any time after the owner’s mark has become famous, commences the use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence of absence of actual or likely confusion, of competition, or actual economic injury.” The change, as often noted, is that the mark owner may file for pre-emptive injunctive relief before damage to the trademark occurs, upon reasonable expectation that it is likely to occur at an unspecified time in the future This is the “pre-emptive first strike” theory.

The last posting referred to some comments by various legal groups that anticipate widespread litigation. I’m not aware that this has occurred in the eight months since passage. Nevertheless, one of the major ways a name gets introduced into commerce, especially by “amateurs” is domain names.

I looked up the Uniform Domain Name Dispute Resolution Policy, here, of ICANN, the International Corporation for Assigned Numbers and Names. It does not appear to have changed. It specifies a low-cost administrative (rather than court-driven and litigious) manner to resolved domain name disputes. The main requirement is that the domain name owner not register the name in “bad faith” in order to disrupt another business. Examples of bad faith are intentional misspellings (which McAfee Site Advisor now catches and flags sites as yellow), and probably use of similar names with other .TLD’s to provide “parked domains” that will provide links and ad revenue, with no real content, trying to profit on typing errors by visitors seeking the original domain. This practice is very common, and usually it is not worth the trouble to try to stop it.

The text of the new Act does provide affirmative defense provisions as exclusions: “The following shall not be actionable as dilution by blurring or dilution by tarnishment”. Point (A) that follows is “fair use” that is somewhat analogous to fair use in copyright law. But point (B) says “all forms of news reporting and news commentary” and point (C) reads literally “Any noncommercial use of a mark.” Taken together, these provisions would seem to suggest that a domain whose name happens (especially unintentionally) to resemble the name of a company would be OK if it did not charge for content or seek advertising revenues (that is, was noncommercial) and/or provided only news, commentary and interpretation. Note that (B) and (C) are separated apart from the “fair use” provision (A). These “exclusions” seem to match, in spirit at least, what ICANN means by “good faith use” of a domain name.

There is one cultural aspect of the trademark dilution concept that creates concern, and that is the recent bashing of “amateur culture” on the web. This was demonstrated in the recent book by Andrew Keen, “The Cult of the Amateur”. The review is here. This Act, among other legal tactics, could conceivably be used for turf protection against the fear of dilutive competition from amateurs. However, if so, that concedes that amateur speech and commerce is effective, and makes one wonder what is wrong with larger, older, less nimble companies.

A link to the text of the Act appears in the June 7 post.

Thursday, June 07, 2007

Trademark Dilution Revision Act of 2006 passed in October 2006


I hadn’t seen this news before (I had searched repeatedly but not seen it until today), but President Bush signed into law, in early October 2006, the Trademark Dilution and Revision Act of 2006 (HR 683). Here is the final text of the law: The law is an amendment of the Trademark Act of 1946 and the two texts would have to be merged for a final interpretation.

Recall that this law allows commercial plaintiffs to sue and possibly recover damages if they reasonably can predict the “likelihood” future damages, particularly if plaintiffs can show that the defendant intended to tarnish the brand or commercial reputation of a famous mark. This bill was apparently motivated by Moseley v. Secret Catalogue, Inc., as is discussed by Weil, Gotshal and Manges here. It appears that the 2006 law is a slight rewrite of the 2005 bill and had separate tracking at Thomas LOC.

Eric Goldman does an analysis of this act in the Technology & Marketing Law Blog, here:
He provides a “good news, bad news” analysis. The good news is that addition kinds of dilution, including “niche dilution” will not be allowed. The law does appear to allow a “fair use” bill of criticism and comments. As I look at the Act, The bad news is that “use in commerce” is not defined completely, and Goldman claims that it should be limited 15 USC 1127 (Lanham Act Sect 45). He seems to feel that “blurring” and “tarnishment” are not clearly defined. He also warns that even “non-commercial actors” could face “life-altering” judgments, although the text of the law when read literally seems to minimize that risk. However, "non commercial" use is explicitly listed as a defense (presumably that means free content). The law does not allow a "newly famous" brand to take action against an older entity, however (just because the new entity is "bigger" -- again a philosophical concern).

There is another detailed analysis by Kaye Scholer here.

John C. Nishi has an analysis on an "Intellectual Property Client Alert" of Dickinson Wright LLP, at this link (pdf).

Apparently, the precise (and immediate) effective date is Oct. 6, 2006, according to Cowan, Liebowitz, & Latam, link here.

Companies have sued domain-name owners over trademark claims (such as the Epix and Clinton Street Theater in Oregon case around 1999). In some cases suits have come from companies that were slow (in the 1990s) to purchase domain names that matched their brand names (which all companies do now, which should reduce this kind of risk in practice.) There have been other bizarre trademark fights between national brands and local businesses.

One problem is simply a philosophical one: America is supposed to like entrepreneurs and individual initiative, but securities law puts a heavy fiduciary burden on public companies to defend even the appearance to tarnishment on their brands, and this law could add fuel to the fire. Another observation should be that it should be permissible to use the same name in different lines of business (there is a “Lowes” home improvement company and there used to be a “Loews Theaters” and that should not cause confusion for most consumers). Yet, sometimes claims get made across lines of business, because companies must assume that the “average consumer” is relatively uneducated or "commercially illiterate" outside of his own life. Perhaps the Internet itself, in combination with search engines and wikis will change this, but it’s necessary to make this into a legal concept. There is a way to go with this.

Update: Jan. 25, 2008

The Govtrack reference for this bill HR 683, which became law, is here.

Note that often (or usually) bill numbers change when they "die" in one Congress and are re-introduced in the next Congress with essentially the same language and provisions.

Saturday, May 05, 2007

New tld of ".bank" proposed


Mikko Hypponen, Finnish security expert and founder of F-secure, makes an interesting suggestion for internet security on page 47 of the May/June 2007 edition of Foreign Policy. He suggests that banks stop using “.com” as the TLD of their domains, and that ICANN create a special TLD “.bank” for them, very expensive (perhaps $50000) that only legitimate financial institutions could afford. He claims that this would make phishing more difficult.

Home users who receive suspicious emails can preview the links embedded in the emails, and even check them on WHOIS registries. In Hypponen’s system, banks would not be allowed to use any other TLD than “.bank” and it would be easier for consumers to spot fraud.

The following link is ICANN’s discussion of TLD’s. .com. .net. and .org are unrestricted, although originally .net was supposed to be used for networks and .org’s for non-profits. Here is the link. Individuals have tended to use .com, although at times the suggestion has been made that .org is also appropriate.

One of the reasons why there has been controversy over domain names is the non-specific nature of “.com”. It is not possible to determine whether a domain is a real transaction-processing business with reportable revenues, or simply a soap box. “.biz
became a partial solution to this issue, being more expensive and limited to genuine commercial businesses.

Sometimes different entities do have the same root with different tld’s. Try wm.com and wm.edu. Or aaa.org and aaa.com. Or even brainbox.com and brainbox.tv. Same root domain names with different tld's do not seem, in practice, to cause much confusion for the public.

What is more common is intentional misspellings of well known names to create “parked domains” with advertising links for easy revenue, or even the use of different tld’s for the same root. The legal status of this practice has always been unclear, but it does not fool reasonably educated web users.

ICANN does have a relatively inexpensive administrative process for resolving domain name disputes and generally requires that a domain name holder show “good faith” and provide legitimate content or substance or else commercial or processing capacity (or both) if challenged.

Notification companies tell existing domain name owners when additional tld’s based on their roots are released. For example, I have johnwboushka.com but recently got a notification for johnwboushka.us . I don’t need this, and I don’t think it could be attractive to anyone else.

Friday, April 06, 2007

Patent dispute between Vonage and Verizon: Injunction issued against Vonage


On Friday April 6 a federal U.S. District Court judge in Virginia, Claude Hilton, told Vonage Holdings that it may not add new customers to use its service that could connect to the public telephone network. It may continue to service existing customers. This case relates to a patent dispute with Verizon. Vonage had been founded in 2001 and has never made a profit. Apparently, larger companies like Comcast have been moving in on the Internet telephone market without encountering these same legal patent problems.

Alan Sipress has a story in The Washington Post, “Judge Rules Vonage Cannot Add New Customers,” at this link. Another story is here.

As a general rule, "judicial activism" and "judicial review" have become more controversial lately. Here is a book review on the topic on blogger.
Judge Hilton is well known for issuing usually conservative rulings, such as in a challenge to the military gay ban back in the mid 1990s. He has often written that controversial social and economic issues should be understood and addressed by voters (whom he views as a bit complacent) pro-actively, with minimal reliance on the judiciary to overthrow troubling laws.

Update: 4/7/2007


Late Friday night, an appeals court in Richmond postponed the injunction against Vonage. Story by Alan Sipress and Sabrina Valle is here.

Update:Alan Spiress, Vonage Wins Stay in Patent Dispute, The Washington Post, April 25, 2005, p D03, here.

Thursday, March 29, 2007

Martha Stewart in potential trademark dispute with hometown of Katonah


The latest trademark battle to hit the news involves domestic diva Marhta Stewart. Apparently, one of her hometowns is upscale Katonah, New York, a place that I sometimes visited when working at AT&T in the early 1970s. The Katonah Village Improvement Society has filed legal action to prevent Martha from using the name of her hometown in Westchester County as part of the brand name for any other products. The New York Daily News story is here.
According to imdb, Martha Stewart Living Omnimedia already uses the Katonah name for a furniture collection. It is not clear what confusion the town thinks results from her proposed use of the name. Katonah must file its objection before the US Patent and Trademark Office by April 11.

Saturday, March 24, 2007

Viacom's counsel Fricklas writes about the YouTube case


The March 24, 2007 The Washington Post contains an op-ed by Michael Fricklas, general counsel for Viacom-Paramount. The piece is called “Our Case Against YouTube.” It is at this link. The earlier story was by Frank Ahrens in the Post, March 14, 2007, “Viacom Sues YouTube over Copyright: Infringement “Cornerstone’ of Site’s Business, Media Firm Says”, at this link. .

Fricklas points out that the Digital Millennium Copyright Act (DMCA) is structured so that ISP’s and communications providers have no obligation to monitor their subscribers’ content. There is a safe-harbor and provisional take-down process that ISPs follow when a copyright owner files or “serves” a complaint following an accepted administrative legal procedure as outlined in the statute.

Fricklas believes that YouTube is essentially different in nature from an ISP. It is more like an entertainment or media company. That is, it is more like Warner Brothers (or New Line or PictureHouse) than it is like AOL; it is more like LionsGate than it is Earthlink. Or, in fact, in a sense it is a trade competitor to Viacom and Paramount itself, by offering film and video content, however amateur some it is or “self-published” or “cooperatively published.”

I can even imagine trademark law questions here, because Fricklas is posing a question as to exactly what kind of business YouTube is. Similar questions have been raised about search engines companies and Amazon. The suit suggests that YouTube’s business model may be predicated upon infringement, and we know that this would not bode well given the MGM v. Grokster case from 2005. Down the road, an ultimate question is how this kind of litigation may affect “newbies” in the media business (partly because newbies often have very low costs under free entry and “instant fame” through search engines), and those can lead to trademark as well as copyright questions.

Earlier paper (by Tim Lee) discussing the DMCA linked here.

Wednesday, March 07, 2007

Book search spurs legal fight



This page probably should have gone on my main blog, but there is a lot else there right now, and although this is mainly about copyright, it certainly also touches corporate branding, which is the heart of trademark law.

Alan Sipress has an article "Microsoft Attacks Google Over Book Search," in the March 7, 2007 The Washington Post, Business Section, p D1, at this link.

Google (which owns the operation that supports blogger and adsense, so I am going to simply be neutral here and try to stick to reportable facts) has been growing beyond its image as a fun-loving search engine company to an operation that can compete with Microsoft and Apple in providing tools for business productivity and even facilities to media or motion picture companies to distribute video. In that sense, the psychological meaning attached to its "brand" may change.

The copyright dispute seems to come from the observation that Google takes the position that any material may be copied and cached unless the copyright owner deliberately, and on a case-by-case basis, opts out. I am not sure that is true. For example, cooperative publisher iUniverse offers its books to Google book search, but the terms in the publishing contract (starting at some date a few years ago) explicitly allow it to do that with electronic rights. (iUniverse does allow authors to opt out.)

There have been bitter battles in the writing (and sometimes filmmakinga and music community) about electronic republication. The National Writers Union has bitterly fought for specific royalties for electronic republication. (Generally, copyright law, as written, is much more protective of content owners when it comes to music and video than written word content, because of the way Fair Use is interpreted in our legal system). There has developed a cultural battle within the writers' community over free content. Some people who regularly get paid to write for others feel that free content and free electronic caching, book-searching and the like dilutes their ability to earn a living. Other writers have an "all or nothing" model and feel that free distribution by search engines helps them to become known.

Microsoft, to complicate the pot, has developed its own library of digitized books, and has established itself as a valid trade publisher ("trademark") in computer books, which are often leading texts in the industry.

Pictures: New United States Patent and Trademark Office in Alexandria, VA. Also, the Library of Congress (which houses the Copyright Office) in Washington DC.

Monday, March 05, 2007

Now it's Spam v Spamarrest



The latest in these silly trademark disputes seems to be a battle between Hormel Foods, famous for the canned meat Spam (remember that scene in the movie "Sophie's Choice" where all the cans of Spam fall on the floor), and a company that sells a software product blocking unwanted email called "spam" -- the company is called SpamArrest.

Here is the latest, a January 2007 story by Laura Ellis, "Hormel 'spam' lawsuit outcome due in Feburary", from Computer Business, at this link.

It does not seem that this matter is yet fully resolved. I could not find a uspto trademark record for Spamarrest online.

Remember, software and food are two totally different kinds of business. It should be legally possible for both companies to use the same wordmark without creating public confusion, even prospectively. Spamarrest claims to have spent a half million dollars defending its rights.

Spam does not seem to have a problem with the Monty Python Broadway musical Spamalot, which it does not regard as derogatory.

Hormel is located in Austin, MN, in southern MN, a town which I visited at least once when I was living in Minneapolis.

Cans of spam have appeared in critical scenes of at least a couple of movies, such as Sophie's Choice, and Steven Spielberg's Empire of the Sun.

Sunday, February 25, 2007

"La Dolce Vita" namesake spurs a trademark lawsuit


I saw "La Dolce Vita" in 2004 at the AFI Silver in Silver Spring, MD, the three hour black and white Cinemascope film in its original 1960 American International release (AIP was known in its day for motorcycle movies like "Born Losers"). International Media Pictures now owns the rights to La Dolce Vita ("The Sweet Life") and the distritbutor recently sued Andrei Treivis Bregman (aka pseudonum Micjael Lucas) for trademark and copyright infringement for his Parts 1 and 2 of the porn adventure "Michael Lucas's La Dolce Vita". The AP story appeared in the Feb. 16 2007 Washington Blade, link here.

In the Feb 23 issue of The Washington Blade, a reader pointed out that imdb.com (run by amazon.com) contains many examples of movies with the same or similar titles but different plots, concepts, and characters. The same is true in general with books and novels--as one can tell by browsing amazon.com or barnesandnoble.com quickly. Typically, a book title or movie title can be trademarked only when it becomes a series. So, for example, IDG books's "For Dummies" series owns valid trademark rights (similarly so does "Idiot's Guide"). In the same way, a movie franchise probably would claim trademark rights. For example, "Scary Movie" (now complete with Dr. Phil) belonging to Dimension Films and The Weinstein Company. One interesting situation for me could be presented by a series of films called "The Substitute", which generally deals with paramilitary people coming into school systems and pretending to be substitute teachers. I have a feature-length screenplay script called "The Sub" (which has a totally different take on substitute teaching, to say the least) and if I wanted to sell it (with this title) I would probably have to have an agent negotiate with studios owning that series (I believe that may be Lions Gate, since Artisan owned it before).

A lot of movies on imdb have "working titles" (there is even a movie production company called "Working Title") and titles sometimes change, sometimes in specific countries. For example, Universal's "The Good Shepherd" opened in December as a film about the history of the CIA, but there had been an earlier small film with that title in 2004 about a Catholic priest accused of murder, but that film was changed to "The Confessor". I guess it was just conincidence that Warner Brothers released the 40s-film-noir parody "The Good German" at the same time as the Universal picture.

In any event, the "Dolce Vita" lawsuit filed in New York sounds frivolous (even just plain dumb), and supports calls for tort reform and "loser pays". I hope it is dismissed summarily. No one with any common sense could be confused by the Lucas film.

My review of "La Dolce Vita" (1960) is on this file.

Picture: Overlord Memorial, Bedford, Va.

Saturday, February 24, 2007

Another good example is Nader v. Mastercard on "priceless"



As pointed out in the new film, "An Unreasonable Man" (2007, IFC), MasterCard had sued "geek laywer" and consumer protection activist Ralph Nader (that is, MasterCard International v. Nader, 00civ-6068) back in August 2000 for Nader's "Priceless" campaign, where Nader usedand "spoofed" the Mastercard slogan and logo to call attention to the practice of corporate interests buying political candidates' positions on issues, before and during his 2000 run for president. The charges had included trademark dilution, unfair competition, and copyright infringement.

In 2004, a trial court ruled that Nader's practice was "fair use" under copyright law as parody and did not violate commercial trademark law. Here is a discussion at LawGeek. Fish & Richardson defended Nader. Here is another summary at Standord. At issue is the principle of using a commercial slogan for political and non-commercial purposes. It is significant, as noted in the Stanford article, that no actual dilution had occurred (conceivably new legislation could change that holding if a new case occurred today, although the court also held that likelihood of dilution really did not exist either). Another issue would be whether infringement or trademark dilution occurs when the workmark consists of familiar English words and occurs in a line of difference substantially different from that of the plaintiff (since USPTO recognizes separate lines of trade). This has always been a reliable concept.

Salon's account is also interesting.

Wednesday, February 07, 2007

New domain name/trademark dispute when a namesake is used


There are news reports of a legal dispute between Keith Urban, the singer, who has a domain http://www.keithurban.net , litigating against another Keith Urban, the painter, who has a domain http://www.keithurban.com Apparently this is a trademark dispute.

A good summary of the dispute occurs here. The news reports indicate that the singer married Nicole Kidman. CNN's story is here. According to the CNN story, the singer claims that the painter is falsely implying that the painter's site is connected to the "famous" singer, so there may be more at issue here than a simple namesake domain name dispute.

There have been disputes over namesake domain names before. Generally, the literature maintains that people can use their own names for domains. Why didn't the singer reserve the .com name if he really wanted to keep it? On the other hand, there might be no issue if the painter's content does not imply any relationship to or endorsement by the singer. When I personally look at the painter's site, I don't see a connection; it would not confuse me, at least.

It would take some time to go into all of the trademark law background, and I don't know what is definitive on this personally as of this moment.

One observation would seem to be that a "famous" person -- an "established celebrity" who earned his celebrity with conventional means of competition -- might claim that his "right of publicity" trumps over someone else's right to use that name it that "someone else" has the same legal name. In the Internet world, this does not sound fair, although the reasoning might get a bit convoluted. Furthermore, someone with money could keep a newbie without it from competing. This sounds like good old feline "turf protection."

Philosophically, domain name disputes sound more legitimate when the names are based on common English words that companies may be using as registered trademarks. Publicly traded companies had a fiduciary responsibility to defend their brand names in public vigorously and with "zero tolerance." Nevertheless, trademark law is supposed to recognize the idea that entities in different business lines may reasonably use the same or similar names without confusion, even though in practice trademark suits have occurred even in those cases. I would have thought that a domain name based on a person's legal name (especially if it is hard to remember until it does become famous) would be safer from challenge than a name based on common words.

I would wonder what ICANN would say about this. Generally, ICANN insists that a domain name be used in "good faith" and it would sound as though someone's using his own legal name is good faith.

One idea could be, when two people have the same name, the second person to use the name must use a suffix -- like -2, (-3, -4, etc) after his name. That would eliminate any possibility of confusion, which is one of the aims of trademark law.

I am not personally confused by domain names this way. There are plenty of examples on the Internet where a .com and a .net represent totally different entities, without causing any real problems.

It will be important to gather more facts about this case.

Postscript:

Keith Urban the singer appeared on NBC Saturday Night Live, Feb. 10, 2007 (singing at the "Entrance to Trains"). Forrest Whitaker was the host.

Urban also appeared on and performed on the NBC Today Show on Feb. 16, 2007.

The picture is of a "babushka" doll. My last name is boushka. There is a store in the Minneapolis Mall of America called "babushkas" that sells Russian dolls as gifts. I wonder. Even unusual names can have similar spellings.

Saturday, January 27, 2007

Indianapolis Colts and "Red Zone" dispute with Heinz


The Indianpolis Colts NFL football team are in a dispute with Heinz foods (ketchup) over their use of the "Red Zone". Three other NFL teams have been using it with charity drives with Heinz, but the Colts may have a historical claim. Ketchup and football would seem to be different kinds of business under trademark law, but maybe not when there is already an agreement among different industries already.

Dan Nephin has the AP story "Heinz Claims Penalty for Use of Red Zone," at this link, Friday Jan. 26, 2007.