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.