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.