Saturday, December 20, 2008

Ebook says it makes trademark law easy to understand


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.

Saturday, December 06, 2008

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


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.

Wednesday, December 03, 2008

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


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.

Friday, November 28, 2008

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


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.

Wednesday, November 19, 2008

Bizarre trademark litigation seems focused on normal journalistic links and reporting


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.

Monday, November 03, 2008

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


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!)

Monday, October 27, 2008

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


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.

Saturday, October 25, 2008

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


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”).

Monday, October 20, 2008

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


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.

Saturday, October 18, 2008

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


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.

Tuesday, October 07, 2008

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


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.

Monday, September 15, 2008

Merrill Lynch will still have a valuable trademark and brand


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.

Tuesday, September 09, 2008

HR 4279 could strengthen trademark dilution provisions


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.

Friday, September 05, 2008

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


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.

Monday, August 25, 2008

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


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).

Wednesday, August 06, 2008

Chilling Effects has major page on trademark


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.)

Wednesday, July 30, 2008

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


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.

Tuesday, July 22, 2008

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


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.

Tuesday, July 15, 2008

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


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.

Tuesday, July 08, 2008

USPTO will host inventor's conference


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."

Sunday, July 06, 2008

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


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.

Wednesday, June 25, 2008

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


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.

Tuesday, June 24, 2008

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


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.

Tuesday, June 10, 2008

Major litigation on search engine results and ads based on "trademark" names as arguments


Search engine companies and advertising revenue strategies might be affected by ongoing litigation involving the company Rescuecom, which is a computer repair firm.

The basic problem seems to be that when one enters the company name in an Internet search, not only the company comes up but so do ads of competitors or distractors who may be trying to use the trademarked name to draw business to their websites by taking advantage of supposed customer “confusion.” Sometimes, after some search engine results, ads from “competitors” may come up as well as or even instead of the ads for the trademark holder. There is some question as to the validity of the analogy with a drug store or supermarket where strongly branded products are placed in physical proximity to “generics” often branded by the retailers themselves. There is also some question about the way non-profits and political advocacy organizations may use “trademarks”, where searches will naturally result in pulling up results (including those from my blogs and sites) that may be critical of these organizations, or at least of the political positions that they take on particular issues.

Rescuecom entered into litigation against Google, making complicated and (to the layman at least) obscure arguments about possible confusion and misuse of branding. A federal judge dismissed the case in 2006, without having a full trial, apparently believing that this case did not fall within the legal definition of trademark infringement. CNET and AOL Mobile have a story on the dismissal here. Rescuecom appealed and the case was heard before a three-judge panel in the Second Circuit in the early Spring of 2008.

There is an account of the oral arguments (by James Grimmelmann) at a site called Laboratorium, here. I didn’t see any mention of the expansion of trademark law with the passage of the “Trademark Dilution Revision Act” in October 2006 (and the federal dismissal had occurred in September). But it sounds to me as if the concept of prospective dilution could be legally relevant.

Timothy B. Lee has an analysis of the case on Arstechnica, from April 2008, here. Eric Goldman has a brief discussion on the “Technology & Marketing Law” blog here. Were Rescuecom to win, the case would probably have a trial on merits first (based on the Second Circuit's statement on the applicability of trademark law, including dilution as it is now), and the litigation would last a long time.

Theoretically, arguments like these might apply to automated ad algorithms on websites and blogs. A writer might mention a trademark in the context of criticism, and ads of competitors might results, or the ads from the mentioned company might result in a situation that places it in an unfavorable light. This sounds like a novel problem to raise in the concept of traditional trademark law, maybe applicable with the concept of “prospective” dilution. The circuit judge would probably have rejected such an idea but the Second Circuit could comment on it soon. What seems apparent is the apparently widening “business culture” gap between older companies (driven by older paradigms of customer loyalty and marketing and properly concerned about fiduciary responsibility to stakeholders) and never start-ups that expect more freedom in a global economy. Even from a libertarian perspective, it’s not clear how the rules of “market fundamentalism” would apply.

Electronic Frontier Foundation discusses a brief of an important legal precedent, "1-800 Contacts v. WhenU.com and Vision Direct", here . It would be well to examine the amicus brief and Second Circuit opinion links (PDF files) from 2004, provided on that page.

Rescuecom has indeed attracted some negative comments in cyberspace, such as a Tech Republic message board posting about their franchise contract and policies as being unreasonable, here.

Wednesday, May 28, 2008

AARP provides an example of a non-profit use of trademark


As noted in an earlier posting about MADD, advocacy organizations can have trademarks. Some insurance companies, especially United Healthcare, have been offering various kinds of retiree, Medicare supplementary and drug benefit health insurance through AARP. I found when I called the 800 number and was transferred to another number to discuss the prescription drug benefit (see also today’s entry on the retirement blog), that the recorded announcement included the fact that UHC could use AARP’s “trademark” in offering health insurance coverage, but that the policy was not written by AARP, it was written by UHC.

The reminds me of the Blue Cross and Blue Shield health insurance plans. They are supposed to be "not for profit," but as any who has ever worked for them before (I have, indirectly, twice), they are very "commercial".

AARP describes itself as “AARP is a nonprofit membership organization of persons 50 and older dedicated to addressing their needs and interests.”

AARP has a link called “Divided We Fail” for issue advocacy (the domain name is equivalent to the link), with the introductory statement “We believe that health care and financial security are the most pressing domestic issues facing our nation” and also a laudable statement that partisan gridlock needs to stop. USPTO gives this as a registered mark and gives the address of the registrant, but does not say that the registrant is affiliated with or equivalent to AARP (which it is likely to be so in practice; WHOIS for the domain name does mention AARP; I think I’ve heard Hillary Clinton refer to the phrase).

I do have some concerns about registering a catchy phrase of common English words that convey a political meaning as a “trademark” or “brand” (eventually vulnerable to "dilution"). Philosophically, it seems to me that equating a political or social concept to a “brand” could encourage superficial attitudes among voters. Perhaps libertarians (and even the candidates like Bob Barr) would agree with me. But it seems to be allowed and even encouraged.

This reminds me of Blue Cross and Blue Shield plans. Even though they are supposed to be "not for profit," they are very "commercial," as anyone who has worked for them (as I have, indirectly, at least twice) can attest.

Wednesday, May 14, 2008

A wordmark with many different USPTO registered trademarks: "Front Page"


Here’s another good example of a wordmark that can be used by different lines of business without confusion: Front Page.

The Front Page Restaurants
is a trendy franchise of brunch restaurants (a bit like TGIF) with a décor based on newspaper front pages in murals around the restaurants. There are other chains with this theme, such as the Times (on the East Bank in Minneapolis). I noticed this when I had Mother's Day brunch at a Front Page restaurant.

The other well known use of this workmark is, of course, Microsoft’s web publishing product, which it is now replacing with Expression Web.

But a quick check with uspto.gov for “Front Page” shows a large variety of registered marks in different businesses, ranging from printing to securities trading to advertising.

The concept, of course, is that a “Front Page” is the first page that a customer sees, regardless of the business, and most naturally refers to a newspaper.

USPTO allows registration of the same work mark in different businesses. However, sometimes litigation has accepted the idea that dilution may occur across lines of business, even in areas where common sense says it should not. The concept of “brand” seems to run counter to the idea that a consumer should become educated.

I recall a battle in the 1990s between amazon.com and a bookstore in Minneapolis called “Amazon.”

Saturday, May 03, 2008

Many movie and comic characters are trademarked; are they too finicky about unsolicited submissions?


Movie studios generally enforce a “third party” policy with respect to submissions, which generally means they must receive all creative ideas from agents rather than novice writers themselves. They say they must enforce this to protect themselves from accidental liability, should something developed in the normal guild channels accidentally resemble a work submitted by a newbie. I expect to cover this in more detail later on the movies blog, but there is one way in which trademark law can help reduce the risk that studios perceive, and it becomes more relevant in a world of instant publication on the Internet.

Television series names (because they have multiple episodes) and characters can be trademarked. Movie franchises (Star Wars, Indiana Jones, etc) can be trademarked. The familiar comic book characters that have generated so many films and television series generally are protected by trademark. The USPTO gives comic book characters their own class (16). Often the characters are trademarked not only for comics or media, but also for use in promoting other consumer products, like cereal (which means that separate registrations will be done in other classes). That probably means that no novice could safely publish a book (or distribute a micro-budget film) using these characters. (If I write and publish a novel about two brothers, they (along with their story setting) need to be recognizably different from Dean and Sam – likeable as they are – in “Supernatural,” and the book needs to be called something else; there are some complicated issues with legitimate parody, however.) That probably also means that an unsolicited submission for a story with these characters could not present a risk because they are already well-protected. The 2006 extension of trademark dilution to include a “prospective” provision probably strengthens the hand of studios further.

A good discussion of all this appears from Law.E.M., “Superheroes Need Protection Too,” by William E. Maguire, here. He uses a fictitious character “Prime”, but it seems to me that “prime” would make a good didactic jargon synonym for “fictional character trade dress” if the industry wanted a term for the concept. Visual depictions of a character also can get copyright protection.

Some studios (like CWTV) have message boards discussing their shows, but warn posters that the studio “owns” the creative potential of any comment made—meaning they will not compensate the poster for any “suggestions” that accidentally or perhaps intentionally get used later. That’s probably window dressing, as trademark law would protect the studios anyway from claims.

I do remember all the boards for Everwood and Smallville, where readers try to predict what will happen, and they are always wrong. I suggested that Ephram (in Everwood) play a specific piece of music, and six months later he really did. I think they read the comment. Sorry, no compensation for me. WB “owns” the comment and the artistic concept for that “character” (Ephram).

I’ll come back to this later with the topic of submission of scripts to agents.

Wednesday, April 23, 2008

Trademarked professional networking sites could help with "reputation defense" problem on the Web


Cameron Johnson ‘s book (previous post), in discussing the negligence of many companies in securing domain names and trademarks quickly, and in presenting the idea that “you are your own brand,” motivates perhaps some partial solution to the “reputation defense” problem with social networking sites as they affect the workplace.

As I’ve noted on a few blogs, employers can reasonably be concerned that clients or stakeholders could be alarmed about material that could be found about their associates or contractors on the web, specifically on social networking sites. In some cases, they may want to have their associates’ “online presence” professionally managed. Companies like Ziggs are appearing to maintain “professional profiles” online.

It would seem to make sense to set up “professional social networking sites” by career field with domain names and, particularly, registered trademarks that communicate the nature of the field. Only professional information would belong on the site. Clients would be shown the information on these profiles, which would be augmented resumes. On the other hand, in many cases associates would be able to have personal profiles or blogs that they “own” personally on conventional social networking sites, with the idea that they would keep the material from the two worlds “separate.”

It could be useful to develop a new TLD suffix for professional networking sites, to further strengthen their "branding" and make it clear to clients what they are to be used for. As an alternative, always use .biz rather than .com for them. Or perhaps use .pro for this purpose. (Wikipedia reference).

The branding of the “professional profiles” social networking site would help anchor the sense of professionalism in the minds of clients, because the concept of “brand” (as expressed in trademark law) is intended to do just that: recall to mind a level of service and professionalism to the mind of the client.

There is no reason why existing social networking companies like Myspace and Facebook should not develop and own these, but they should be separately named as domains and have separately registered trademarks.

Cameron, in his book, however, emphasized that an individual becomes his own “brand.” That sounds like the more general concept of “reputation.” Nevertheless, I would hope that in some cases trademarked professional social networking sites would allow individuals to have more than one life credibly on the web. This would not work well, in many cases, for people whose job it is to make decisions about others or to speak publicly for a company, for a group of clients, for a political candidate, for an adversarial interest.

Sometimes trademark law can be your friend. Sometimes!

Monday, April 14, 2008

Young entrepreneur (Cameron Johnson) discusses important trademark issue in his book


In his recent book “You Call the Shots” (review is here) young Virginia entrepreneur Cameron Johnson (also a contestant on Oprah’s “Big Give”) discusses a trademark action that was taken against him when he tried to “flip” a domain name as a teenager back in the late 1990s.

He had reserved a name called “PremierAutomotiveGroup.com” after learning that Ford Motor Company was going to introduce a line of that name. He checked and found that Ford had neither registered a trademark nor even a domain name before making the announcement.

Back at the time, the practice was common, and remained so for a few years until more companies “wised up.” It was not considered unethical in the early days of the Internet. Corporations tended to be slow and bureaucratic in registering both domain names and trademarks. It is true that one can easily check uspto.gov for trademarks, but there is some time lag before applications are put up there. To be really safe, one has to do a manual search at the office in Alexandria, VA, and expensive and time consuming and cumbersome process. As a practical matter, if one has taken a “catchy” domain name but cannot use it for a trademark, one should check uspto.gov periodically, as in time a registered mark would appear. The Electronic Filing Date is always later that the Paper Filing Date. One should be careful to check spelling variations, although the uspto.gov website seems to adjust for punctuation and capitalization automatically.

Cameron’s account of the suddenness of the process service by a local sheriff’s deputy (it could have been a private process server or even registered mail; check “serve-em.com”) is interesting, as well as the course of the subsequent litigation and final “out of court” settlement are interesting, and would make for good independent film – except that Ford keeps it a secret, to avoid the public shame. Cameron, in his account, makes a lot of the fact that apparently Ford had neglected to file a trademark with USPTO before the announcement, although it sounds quite conceivable that Ford had done so but that the online check wouldn’t show it yet. (USPTO has gotten faster in recent years, after moving to its new headquarters.) Ford also sued lots of people who had tried to grab domain names, and apparently did not know that Cameron was a minor.

Of course, Cameron is right about one thing: Ford behaved incompetently. One can make up philosophical objections to “amateurism” or to flipping or “squatting” (that latter of which has become objectionable), but any company can prevent this whole problem by registering both the domain names (at a minimum. .com and .biz) and the trademark before making announcement. USPTO has gotten more efficient, but there could be holdups for smaller companies, which will have to show that they really will use the mark for legitimate commerce. (Free content on the web for political purposes doesn’t justify a trademark.) For Ford, there is no excuse for not having done so; it sounds like plain laziness (or, worse, ignorance). How many people in big companies are good at their jobs? I wonder. Courts should not reward inept corporate behavior.

ICANN does have a procedure for resolving domain disputes administratively (link), but ICANN policy specifies that a domain name be registered in “good faith” for the provision of real content, which can be either free content, or commercial transactions (or both), but must have some kind of “substance” beyond mere profit from trading a name itself. A conflict over a name that has been associated with a body of content will probably resolve with some fair consideration to the party offering real content, even if it is “free” (whether or not it has advertising or sponsors).

Trademark law had been revised in the mid 1990s to make “dilution” actionable, and as discussed on this blog, was revised in 2006 to allow trademark holder to take action prospectively against dilution.

There was another case that I’ve discussed before, but it bears mention in comparison to Cameron’s case. That would be Interstellar Starship Services v. Epix. The case is complicated (summary link), but ISS was closely connected to the Clinton Street Theater in Portland Oregon and took the domain name of epix.com, whereas Epix happened to be the trademarked name of an electronics imagining company from the 80s. ISS took on the domain epix.com and eventually prevailed at the Ninth Circuit after years of litigation from Epix (opinion link). As in the Ford case, Epix failed to register a domain name in a timely manner, but it did have a trademark. The Ninth Circuit (in 2002) went into a long discussion of Epix’s desire to establish as a matter of law the idea of “initial interest confusion.” Now, it would seem that the 2006 Revision Act would establish something like that as a matter of law now. However, the justices discuss some important concepts. They say that real dilution can occur across business lines (USPTO generally allows similar marks in different business lines), but any challenge across such lines must be carefully considered as to the facts of the case and as to the practical likelihood that consumers will be misled or confused. In this case, the Court did not believe that this existed. Confusion is less likely with the use of a common English word(s) or phrase than with a specific or unusual proper name. If a name has been used in commerce before by differing entities (as was true of Epix), then a claim of actual or prospective infringement (in the sense of the 2006 law) is weaker.

I traded emails with someone involved with Clinton Street Theater in 2000, and discussed this with a law student friend who now is a prosecutor in a Midwestern city.

Of course, this brings us back to a core problem: what are the legal and ethical ramifications of an “amateur” taking on a catchy phrase for a domain name in order to be easily found and remembered. One factor could also be how unusual the person’s name is: common names are likely to be confused as domain names and trademarks (people have been precluded from using their own names as domain names when they match the names of celebrities; hard to spell “foreign” names will be hard to remember and tend to encourage using common words or socially meaningful phrases). An important concept seems to be the use of the name to provide legitimate content, commercial transactions, or both. It is still common to find domain name parking (usually set up as a series of links to generate ad revenue or even sometimes “link spamming”; in rarer cases, these “fake domains” may transmit viruses or house unsafe downloads or try to misuse the name of a well known legitimate company to generate spam -- email sender spoofing would sound like a kind of trademark infringement!) both with TLD’s and deliberate misspellings (a least one TLD derivative of my own domain has been parked); but trademark holders generally can challenge these. Website safety rating services (like McAfee Site Advisor or the newer Web of Trust) are likely to flag these. The practice is perhaps more silly than it is really harmful.

Picture: As Cameron points out in his book, a businessman must become his own "brand." So, yes, under the right circumstances, you can trademark your own name (if you use it to do business, and it isn't a duplicate). From the USPTO Expo (previous post).

Thursday, April 10, 2008

USPTO starts Expo in Alexandria, VA


Today April 10 the United States Patent and Trademark Office on Dulany Street in Alexandria, VA right off Duke Street after crossing the Metro, started its National Trademark Expo, in the main atrium. There were signs and placards of various trademark holders, and signs proposing and answering questions about trademark law. For example, one sign indicated that one can sometimes trademark one's name if using it that way in commerce (like the Tiger Woods Foundation). There was another sign answering questions about rejection for trademark application, saying one cannot trademark a "surname." One can trademark a color in a trade dress (as the yellow of National Geographic) or a shape or graph (as in Levi's jeans). Fictional characters (Superman) can be trademarked.

There were actors dressed as trademark characters (like the Jolly Green Giant) willing to pose with visitors.

The Expo runs through Saturday April 12. The USPTO web link is this.

Tuesday, March 25, 2008

Smashing Pumpkins goes after Virgin after 17 years


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

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

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

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

Monday, March 24, 2008

Internet advertisers look for publishers interested in promoting and protecting brands


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

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

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

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

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

Saturday, March 22, 2008

Scrabulous controversy (Nightline, Wired)


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

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

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

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

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

The Wikipedia entry for Scrabulous is here.

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

Wednesday, March 12, 2008

My own domain names -- a brief history


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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Wednesday, February 27, 2008

Artists should consider getting trademarks, sometimes


I’ve noticed that a number of artists, including musicians who make CDs and DVDs (even classical music pianists), composers, and filmmakers distribute their material for sale under their own name without the assistance of major media companies.

It’s a good idea for any such musician, even with relatively low volume, to apply for and get a trademark on his or her own name or on the business name (“brand”) that he or she wants to use. Sometimes there are conflicts over names that have been duplicated. Sometimes there are conflicts when Internet domain names conflict with existing marks. Probably, the artist will need to demonstrate that there is some significant level of commercial activity and sales (at least intended), even if carried out informally, as with a family business.

The main website for the U.S. Patent and Trademark Office is this.

Friday, February 01, 2008

Domain names get traded as if they were "money"


Brad Stone has an important story about domain names with trademark law implications in the Business Section of today's (Friday Feb. 1, 2008) The New York Times, p C1, "Coins in the New Realm: Trading in Domain Names Gains Investor Acceptance," link here. The story continues on p C9 as "Domain Name Trading Gains Respect."

The metaphor, of course, compares a domain name to fiat money, hardly an adequate model. Sometimes common word domain names may be important for the political influence that they may have than for generating revenue.

The article discusses trademark infringement lawsuits against small domain registrars and "domainers" for creating parked domains with names that are similar to those of famous marks. Often McAfee Site Advisor catches this practice and flags such sites as yellow. A related practice is "domain tasting" which ICANN and other industry players are trying to discourage.

The subject is a bit complicated. There are complaints that people make money without running a real business (but that sounds like house or condo flipping connected to the subprime crisis, doesn't it!), or even without developing any meaningful content. On the other hand, an individual may develop considerable political content and attract considerable attention by using a catchy name without trying to earn revenue, arguably taking opportunity away from investors who might use the name to create jobs.

Relevant, of course, is the Trademark Dilution Revision Act of 2006, passed in October 2006, as on this blog. Companies might be able to go after domainers under this act, if they have a reasonable case that future tarnishment would occur. However, the Act, as worded, still appears to offer a defense for non-commercial (new-content-oriented) use.

Monday, January 07, 2008

"Ordinary people," domain names and commercial trademarks or wordmarks


When people started getting their own Internet domains in the mid to late 1990s, the main issue that people looked for was whether the name was “taken.” Even when it was, they could often use the root with a different TLD. There were supposed to be some rules about .org and .edu and others, and these weren’t always followed. In time, many more TLD’s appeared (with .tv being very popular for a while). Because “dot com” was so popular, the original intention to use it for business was lost, so that “dot biz” had to be invented.

The new trademark dilution law (discussed in this blog and passed in Oct. 2006) would seem capable of raising questions about the practice of individuals using catchy names for domains in order to be remembered and noticed. I did this with my domain doaskdotell.com in 1999, which is based on the title of my 1997 book. I had originally promoted the book with a domain called hppub.com (for “High Productivity Publishing”) and used only one domain when I set it up in 1997. At the time, expected conventions for domain names were not as well established or understood.

If a domain is strictly non-commercial and offers nothing for sale, but rather exists for political or social commentary, the new law, as I read it, still seems to offer some protection and defense. I talked about this with some entries on this blog last summer. A question could come up, however, if a domain links to a major e-commerce site (amazon, which I do) to make the sales. Logically, the site is promoting commerce, potentially for profit or at least revenue. Perhaps that could weaken a defense claim. Non-profit organizations can still be concerned about this problem, because many non-profit organizations sell things for revenue. For example. Blue Cross and Blue Shield plans are very much commercial enterprises, even if technically they are “not for profit” and they all jealousy guard their own trademarks and “brands” just as do conventionally financed public companies. A more relevant point may be that it’s supposed to be acceptable for companies in different categories to reserve the same names as wordmarks, but often these have been challenged anyway.

Another issue is, of course, the well known problem of parked domains and poaching; other companies take out names that are misspellings of famous names and post link farm entries for easy revenue. Trademark owners will probably have the right to shut these down, but usually don’t bother. McAfee Site Advisor catches these and flags them (with a yellow rating) as deliberate link farms.

Still another issue is synonymous names. People have been blocked from using their own names as domains when they match the name of a more “famous” person or company.

Even so, it doesn’t seem to be a problem always for different entities to use the same domain root with a different tld. Try “brainbox” with both .com and .tv .

A trademark connotes a “brand”, which is supposed to be a consumer’s “key” to understanding what a company (or sometimes even an advocacy organization like MADD) stands for. In a sense, a trademark is an “anti-intellectual” concept that relieves the consumer of some homework, even as the notion is well established in common and statutory law. Public companies defend their brand marks aggressively because they believe that they have a fiduciary responsibility to their shareholders to do so.

A potential factor in trademark litigation between entities of vastly different financial resources (to afford lawyers) could be who started using the wordmark in public first, and whether a non-commercial or “less commercial” entity has become known. A possible factor could even be whether it has a Wikipedia entry or whether Wikipedia would view it as meeting notability standards. Generally, notability requires some evidence of financial success or some accomplishment in the form of recognizable industry recognition. Companies with established financial stakes in a name will argue that jobs and benefits of employees depend on it, and than financial success is an important consideration in evaluating “fame” or notability. Legally, it may all be pretty murky.

Parties can always research a particular mark by going to the US Patent and Trademark Office website and clicking on “Search TM database TESS” (Trademark Electronic Search System). The “Free Form Search (Advanced Search)” is probably the best one. The visitor should check the most recent paper and electronic filing updates. The electronic date will be more recent. The website will warn the visitor that results are not conclusive, although in practice the site is quite reliable and up-to-date. Workmark conflicts may occur with names that do not appear at the beginning of a search string ,like the “for Dummies” book series – that’s a good search to try .

So will individuals be able to use cute and easy-to-remember domain names in the future as easily as in the past, or will this cause trademark difficulties with well-established financial and commercial interests? It still seems too early to say. So far, there have not yet been a lot of problems since the new law passed, as far as one can tell.