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 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!)