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 “” 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. 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.