Sunday, December 20, 2009

Sometimes domain names that parody have led to infringement claims


Here’s an older trademark case I found from a Reason article (link) by Michael Lynch all the way back in 2000. The article is called “Post No Ills” and refers to a lawsuit by U-Haul against owners of a website called “U-Hell” claiming trademark dilution and infringement after a bad move. The suit was dismissed in Arizona but refilled in Georgia. The article got linked to in a newer story about the growing list of litigation against na├»ve bloggers and webmasters.

In other words, a name that is a parody of a company name might lead to a trademark dilution claim, but the Act in 2006 has some defenses regarding parody (check the link to the law from my June 2007 posting).

I’ve had to see where this case went.

Tuesday, December 01, 2009

ING could use an old name for its US insurance operations effectively


Here’s a trademark thought from my own work history past. Call it a ghost of my own Christmases past (or perhaps New Years Eve's past, with Y2K 2000). I read that the Dutch financial conglomerate ING may have to sell off a lot of its insurance operations to help pay back the Netherlands for the bailout, and maybe also because there are continued bad loans in places like Dubai.

So it’s logical that ing-usa could become a separate insurance company in the US and trade on the NYSE with conventional stock under its own name. It would amount to a combination of ReliaStar and part of Aetna. It’s not clear whether the ING Direct could be part of this, or become still a differently traded company.

I think that the “old” ReliaStar brand for the Minneapolis company (from 1995-2000) would make a great brand again. (It got acquired by ING partly because Wall Street didn’t like the way certain parts of ReliaStar’s reinsurance business had been managed around the time of Y2K, and greed took over.) The wordmark is strong, and the blue trade dress was striking. The “political” problem would be whether the other pieces, many of them in Hartford and Atlanta (Aetna) would get recognition.

But from a trademark perpsecitve, ReliaStar was a great name for business.


In the meantime, I won’t try to take the name.

Wednesday, November 04, 2009

Trademark fight ditches Apple's Use of "Mighty Mouse"


A company called Man-Machine offers “hyghenic, washable keyboards and mice”, as shown at its own website here. This sounds like an appealing concept in a world where suddenly we are worried about dangerous influenza viruses (H1N1 and maybe H5N1 down the road) that could remain dangerous on workplace-related or home hobbyist surfaces. I guess one could imagine computer components that are cat proof for people who led stray neighborhood “friends” in.

But Man-Machine also has a registered trademark for its “Mighty Mouse”. A bit of background: Decades ago, 20th Century Fox developed a character “Mighty Mouse” for its Terrytone cartoons (in the days when movie theaters showed them), and this was an acceptable deviation from Disney’s “Mickey Mouse”. But totally different lines of business can use the same wordmark as long as common sense suggests there is no possibility of confusion (that can be debatable).

That’s the rub. Apple computer has gotten served for trying to use “Mighty Mouse” as the name of its new component for newer post-iMac G machines. But it makes sense that USPTO would rule against Apple (which it did on Oct. 6), because this is in the same line of business. So Apple, darn it, has to come up with another name.

The story, by Ronald O. Carlson, is on Mac.Blorge here.

Monday, October 12, 2009

Craigslist sues a few companies for spam ad generation, claiming trademark infringement


The New York Times, in the Business Section on p B4, reports today (in its “Bits Blog”) that Craiglist has followed the example set a few years back by AOL in suing spammers. The story is here. Craigslist is suing a few companies and individuals (at least one of whom is “anonymous”) for spam-loading ads on its site, claiming trademark infringement as well as copyright infringement and the violation of the DMCA.

The legal action this time seems to get some sympathy; it’s not part of the “copyright wars”.

One of the defendants is Red Trumpet, which runs “Craigsup”. When I tried to access the site, Webroot Spysweeper gave me a warning and did not let me access all of the site.

Craigslist has drawn amusing “criticism” for its use of older technology, and has legal battles on its plate due to adult services, which may have been implicated in a recent tragedy in Boston.

Thursday, October 01, 2009

ICANN, US Dept of Commerce continue contract; ICANN policies continue


The United States Department of Commerce has executed a contract with ICANN for some technical management of many areas of the Internet, especially domain names. The link from ICANN is here.

In a general way, this suggests that the current policies at ICANN regarding domain name disputes, particularly with reference to trademark claims, would remain intact, and would be effective in American law, even given the concept of prior dilution in effect with the Trademark Dilution Revision Act passed in 2006.

Tuesday, September 15, 2009

Washington Redskins trademark to be looked at by Supreme Court after "defamation" complaint by some native Americans


Members of several federally recognized native American tribes will be able to take their case to the Supreme Court, complaining that the Washington Redskins football team name and trademark is “defamatory.” The Bloomberg story is here. We still have to find out if the Court will really take cert on the case.

Last week we reported another case here where a domain name was considered defamatory and an abuse of another trademark.

The USPTO had revoked the trademark in 1999, but subsequently the NFL won court appeals. The NFL (like MLB) is extremely vigorous in defending all its trademarks.

Other problems could occur, as with the Cleveland Indians in baseball, if the NFL loses.

Friday, September 11, 2009

Domain name spurs both defamation and trademark dispute; WIPO v. ICANN


Here’s an interesting case. Attorneys for Glenn Beck have filed a dispute with the World Intellectual Property Organization (WIPO) claiming that a domain, to be named in a moment, infringes on Beck’s “trademarked name.” The link is here.

Ars Technica, is a detailed article by Nate Anderson, and linked by EFF, asks whether a domain name itself can be defamatory, link here. We don’t need to repeat the domain name right here, but it’s pretty raunchy. But we have to be wary of the litigation; as attorney John Dozier pointed out in a recent book (see Aug 27), we could get carried away with this: the mere appearance of some “artificial” word strings in a search engine result might be construed as defamatory (a case that happened to me with my own name; see my main blog, July 27, 2007).

Visitors may enjoy (or not enjoy) WIPO’s proposal to ICANN “to expedite domain forfeiture proceedings” here. This does not come from Jonathan Swift in your English literature courses.

Sunday, September 06, 2009

Malaysian McDonald's-McCurry case mimics US trademark dilution issue


Although this posting does not directly involve US trademark law (and dilution) this case in Malaysia certain fits the spirit of dilution concerns in the US, so I posted it here rather than on the International blog.

A restaurant called McCurry, which produces well known Malaysian fast food, has been in litigation with McDonald’s, in a case that is called copyright infringement but that sounds more like the US concept of trademark dilution. To a well-educated western consumer, the case sounds silly. No one would be confused by the Irish prefix “Mc” in multiple corporate names. And no one would confuse the restaurants, even if McDonald’s offers similar Asian fare (probably as a low-fat, healthful offering).

Jadeep Kumar has a story (Malaysian) “Court to take up McDonalds-McCurry issue on Monday” in Singapore’s paper “Top News.”

Tuesday, September 01, 2009

Discovery's e-book raises patent, trademark questions


On Saturday, Aug. 29, Mike Musgrove wrote an article in the Washington Post, Washington Business, “Discovery E-Book Filing Raises Eyebrows: Maryland Firm Mum on Patent Application”, link here.

The story is interesting because Discovery Communications, a media company known for documentary science films, housed in Silver Spring MD, is making a patent filing and trademark filing for a new E-book reader and even claims infringement by Amazon’s Kindle.

Thursday, August 20, 2009

Bricks and mortar trademark infringement of designer goods results in arrests in VA


A police raid at a store near Manassas, VA, about 30 miles from Washington DC, netted illegal imitations of goods by Gucci, Coach and Versace brands. This case amounts to “criminal” trademark infringement.

A more common form of criminal infringement is the use of trademarks in phishing attacks sent by spam. Infringement in the bricks and mortar world had become less frequent, it seemed, until today. It used to be common in the 1950s and 1960s even with counterfeit long playing records.

ABC affiliate WJLA in Arlington VA has a news story here. http://www.wjla.com/news/stories/0809/651509.html

Thursday, August 06, 2009

More accidental name similarities: Microsoft and the "gay community" even have a synonym


More and more I stumble across totally unrelated business or political/social entities using almost the same name.

There are a bunch of gay-lesbian oriented free newspapers owned by a LLC called “Window Media” (link), including the Washington Blade. I noticed this again yesterday when I found a story about the new ENDA legislation in the Senate in the Southern Voice. I recall the origins of the company from the days that I lived in Dallas in the 1980s, I think. Notice that the word "window" is singular here.

Then yesterday I noticed, after an accidental touchpad click on my laptop, the omnipresent “Windows Media Center” from Microsoft on my new Dell XPS laptop. This happened five minutes after I read the ENDA story, triggering my “short term memory” which I guess I still have at 66. Of course, the Windows Media Player has been around for years.

There’s no confusion for me, since I know (and belong to) the GLBT community. But the coincidence of names struck me as odd, and probably accidental.

The USPTO generally allows the same wordmark to be used for different companies in totally different lines of business.

Sunday, July 12, 2009

Arlington VA software company (Rosetta Stone) claims that search results "may" tarnish its trademark


One of the most popular stories in The Washington Post online site Sunday is Cecilia Kang’s story on p A11 Saturday about a suit against Google by Rosetta Stone, a language-learning software program in Arlington Virginia, over the way the search engine allows competitors ads to come up when Rosetta Stone’s wordmark is used as the argument of a search.

Rosetta is arguing that the expense and risk that it took in building up its brand is being exploited unfairly by others who did not have to take a similar risk. The link for the story is here.

It appears that I had a similar story with similar arguments about Rescuecom on this blog in April 2009.

While not wanting to “bite the hand that feeds me”, I encourage visitors (including other “small” webmasters) to read the news story and ponder the long term consequences of the questions raised for themselves. When I entered “Rosetta Stone” into the aforementioned search, it behaved in a perfectly appropriate manner as far as I could tell.

Update: Oct. 12, 2009

PCMag has a Reuter's story from Bangalore, India on the story here.

Friday, July 03, 2009

What's going on with "extinct" motion picture studio brands? Branding ought to become the studios' best friend!


With a new story yesterday about the delay or possible cancellation of a movie project (“Moneyball”) by Sony (see my movies blog), there has been increasing attention to the fact that several “boutique brand” film companies owned by major studios have been dissolved or greatly mitigated. Apparently these include Warner Independent Pictures, Picturehouse , and Paramount Vantage.

Well, Warner Independent Pictures gives you a blank web page; Picturehouse has an active web page that mentions old movies; Paramount Vantage as a URL leads back to Paramount, and has a descriptive page that seems obsolete. How sloppy!

Companies consolidate subsidiaries all the time, subject to certain regulations. Companies eliminate redundancies to save money and improve the bottom line, all the more so in recessions. But why don’t the studios keep these operations “virtually” just as brands? Picturehouse (supposedly a venture between New Line and HBO) had a great logo. It used to be used to distribute HBO films and some foreign films, especially from Spain. Why not keep the label for “grown up” content with independent production and development, even if it is not a formal separate company any longer? There is no reason why the same corporate entity can’t have and use and enforce multiple brands for differently flavored products. Food companies do it all the time. Why not movie studios?

“Paramount Vantage” used to be “Paramount Classics” and now we’ve seen it disappear, but it was never marketed as aggressively as a “brand”. But, true, Paramount should keep a “brand” resolved for more “Roger Ebert”-like movies, and give it a different musical signature and look. (“Roger Ebert” has become a brand name, hasn’t he?)

Distribution of a lot of films that WIP and Picturehouse would have handled seems to have fallen into the lap of Sony Pictures Classics, which finally has a musical signature (not as ambitious as Columbia’s).

Lionsgate has probably the best musical signature around: a combination of Saw and Metropolis, with gear-boxes opening into the real Lions Gate in Greece, with an impressive fanfare. Of course, the best known musical fanfare is Alfred Newman’s for 20th Century Fox.

MGM used to be one of the great old brands, but has been allowed to dwindle. United Artists, supposedly the “independent” releasing arm for big pictures of the 50s, became an artsy subsidiary of MGM (just as Seven Arts did once for Warner Brothers), and then Tom Cruise tried to bring the entire UA brand back to prominence. So far, he really hasn’t.

Miramax, that used to be part of the Weinstein Company, has held together pretty well as an “adult” arm of Disney. TWC ought to make up a more “creative sounding” brandname itself.

There were a lot of other studio brands in the past that dissolved: National General, Cinerama Releasing, Embassy.

Trademark law should have a "use it or lose it" policy. Studios will jealousy guard thse marks but now do nothing with them. (Look at WIP's blank web page.) ICANN might even think this is bad faith.

Just don’t try reserving a domain name now based on one of these obsolete brands. You might get a letter from a lawyer.

Tuesday, June 23, 2009

Monsanto has position paper defending its seed patent enforcement (brought up in recent film "Food")


The new documentary film “Food, Inc.” presented the problem of Monsanto’s litigation against framers for seed patent infringement, both in planting and saving seed.

Monsanto does have a position paper where it states its own position on the problem, here. The webpage has an amusing graphic that looks like “weed”, and it lists its “Ten Points”. Interesting is its position that it’s not OK to save seed even for “personal use.”

The controversy came about originally in the 1980s when the Supreme Court ruled that one can patent genes.

However, there are various other stories about the problem, such as a dropped lawsuit against a North Dakota rancher in 2001, here (in a publication called “Herbicide Tolerance”).

There is a 2008 case about “Roundup Ready” soybean seed in a publication called “Curremt” here. The article suggests that the Supreme Court might some day recognize a concept called “patent exhaustion”.

Picture: Flint Hills, Kansas, 2006 (taken by me).

Thursday, June 18, 2009

EFF "Patent Busting" goes after subdomain assignment "invention"


Electronic Frontier Foundation has countered what appears to be an abuse of the patent concept, with U.S. Patent No. 6,687,746, now held by Hoshiko, LLC, which invented a method for automatically assigning subdomain names, like “billboushkatd” as a subdomain of blogspot. The technique had become particularly important on some social networking sites, such as LiveJournal. But the technique had been long known in early days of the Usenet. EFF (in what it calls its Patent Busting Project) maintains that the holder Ideaflood tries to use open source material from the public domain to monopolize a certain market of innovation. EFF says that the Internet Archive (sometimes a “reputation” buster these days) was useful in researching the case.

The story title is “EFF Busts Bogus Internet Subdomain Patent: Patent Busting Project Wins Another Victory for Developers and Innovators”; link is here.

Tuesday, June 09, 2009

Is personal "branding" the salvation of the Web as we know it?


This may sound like a strange post for my trademark blog, but not really. We’re rapidly learning that “self-branding” is as important as corporate branding, particularly when it comes to online reputation. Cameron Johnson promoted the idea of “self brand” in his book “You Call the Shots” and so does Donald Trump.

As I look back over the history of the open Internet, since it was turned loose in 1992, it seems as though we’ve allow people ("amateurs", even “the kids”) the capability to promote themselves and become “famous” without having the capital (or accountability to others) to cover their share of the systemic risk risk (especially to those who have elected more “responsibility” – often than means parents). We’re seeing this show up now in all kinds of areas, including the online reputation problem, viruses, scams, cyberbullying, as well as the more superficial issue of “protecting minors” from pornography (my COPA blog). Even individuals who use the Net “responsibly” benefit from a system that probably allows unequal application of risk. If we were starting over, I wonder whether "we" would go to such lengths to shield providers and self-publishers from indirect liability – but then we would have nothing like the Internet that we know today. I still think we will see political calls to roll back some of these protections (like Section 230) and demand that web users become insurable.

But the web is here, and especially since the advent of social networking sites (following the inexpensive self-publishing by almost a decade) it has become a major vehicle by which people interact and “compete”. It has made people into “company-lettes”. And more and more we hear that people need to build integrated, sensible, expressive and professional (all of these) presence on the Web. That’s what Trump says a “brand” or a “good name” means.

If you had looked at my resume in the early or mid 1990s, you would have branded me as a “mainframe programmer” and “insurance person” or something like that. My personal life was still relatively private. The logical followup after “retirement” could have been sales – branding as an insurance agent or financial planner. Another outcome could have transformed me into a math teacher (maybe calculus). But, for reasons of temperament and personal history well documented in my blogs and books, some aspects of these careers would have compelled me to do some things counter to my beliefs, as I had already made myself “famous” with self-publishing and “knowledge management.”

My entry into the area had started with my involvement in the “politics” of the “don’t ask don’t tell” policy and the way it related in a curious way to events earlier in my life. But the policy and debate paid forward, too, subsuming practically every issue that can affect “individual sovereignty.” So my websites and blogs started covering “almost everything.” One observation that seems crucial is that what makes the military gay ban (and other gay issues like gay marriage and adoption) so critical is the idea that we all have to share the dirty work, sacrifices and uncertainties (and some unwelcome intimacies, sometimes) inherent in freedom; total individualism is never possible.

So my “brand” – my name – became associated with developing the knowledge base about these issues, to be sure, but also developing the technology and delivery systems to help others understand it and participate. Actually, when I was substitute teaching, I overheard students in an honors class say that I was the “gays in the military guy” – back in 2005 my online reputation was that well known, I guess --- but it really is much more than that. It invokes the processes by which we look into the nature and limits of our own individuality and face the possibility of new social contracts. Personal responsibility is more than just accounting for direct choices. I am the documentarian of how our culture goes through the process of redefining personal autonomy and personal responsibility, against a backdrop of history, of our "American Experience". It sounds pretentious. But that’s how I set myself up.

But the idea of personal “branding”, borrowed from the trademark law concept, might turn out to be the salvation of the “democratic Web” as we have come to count on it today. The number of “brands” on the planet increases by a few orders of magnitude, but that has to be made all right.

Wednesday, May 20, 2009

EFF provides a guide for "parody" websites mocking brands


Corynne McSherry of Electronic Frontier Foundation has an important PDF whitepaper guideline for webmasters who develop parody sites to protest the activities of specific companies. The paper is called “Avoiding Gripes about your Gripe (or Parody) Site”, dated May 2009, with this link.

The basic scenario is that somebody creates a parody of “CompanyXYZ” (maybe something like “CompanyXYZs__ks”), registers a domain name, and two weeks later finds that the ISP has shut it down after an intellectual property complaint, which is likely to be trademark dilution.

McSherry goes on to discuss “nominative fair use,” and the process of determining judicially whether the speech value of the site outweighs prospective claims of consumer confusion as to brand.

One big plus is to keep the site totally non-commercial – with no ads. Another is to use an ISP with some backbone and resources.

She also goes on to discuss copyright and DMCA safe harbor issues.

Friday, May 08, 2009

More on my own "do ask do tell" domain and book names


Yesterday (May 7) I got a question from a domain registration company about whether I had an issue if a businessman in China wanted to use the domain name “doaskdotell” for some of his domains overseas since I own doaskdotell.com.

I’ve discussed domain names along with company names, trademarks, and book and movie titles before.

ICANN sets up a variety of high level tld’s and permits different entities to use the same root with a different tld, as long as the names are registered in “good faith.” Well known examples are wm.com (Waste Management) vs. wm.edu (the College of William and Mary), and history.com (the History Channel) v. history.org (Colonial Williamsburg). With literate Internet or Web visitors, this does not create a problem.

Trademark law in the United States is based on the idea that instant brand recognition by consumers is important in a company’s ability to sell its products or services, provide employment, and meet the fiduciary demands of its investors. In one sense, trademark law is “anti-literate”. There has always been some tension between the subject of domain names and trademarks ever since the Web went “public” and individuals were allowed to register “untaken’ domain names, often without a lot of legal acumen. On the international stage, this idea also holds, although the specifics of laws vary from one country to the next and are a political issue, as in the EU.

Individuals, in a free entry system, often create domains for non-financial reasons, such as political participation. The suffix “.com” came into common use in the 1990s before there was much understanding of this, and that it might confuse consumers or interfere with some kinds of businesses. Subsequently, .biz was created with the idea that an individual needed capital and revenue before using an associate name.

In fact, in the bricks and mortar world, the idea of a “tld” does exist. Consider “Coca Cola” and “Pepsi Cola”. They both use the word “cola” as if it were like a tld, because cola is a common product and the general public is familiar with what it means, without any requirement for special literacy. There has never been a controversy over these two company’s names or trademarks. The problem on the Internet is that the range of products, services and ideas (and business models) is so great that typically consumers do not grasp what is happening, and often businessmen choosing domain names do not grasp it either.



The root “doaskdotell” occurs today with several tld’s. I use only “.com”. I set it up in 1999 and have it paid for and reserved (with Network Solutions, where you can look it up on WHOIS) until 2012. I intend to use it until at least that time, perhaps beyond that and perhaps indefinitely. A couple of the others appear to be “parked” domains for ads and links (probably hoping to profit from my own “notoriety” which I will get to in a moment) and still another offers a different kind of service. The phrase “Do Ask Do Tell” forms the higher level title of two of my books published by iUniverse in 2000 and 2002 (the first was originally self-published with a book manufactuer’s printing and self-registration of the ISBN in 1997). I think it is possible that the phrase would make a good title of a movie, and that it will be used as such. I cannot be more specific right now on the idea of a film called "Do Ask Do Tell...", but I think it is possible that I might even be able to bootstrap interest in such a project and have some ownership or participation in it.

Personally, I also think that the phrase would make a good name for a motion picture production company committed to making “political” or “social” or “historical” films. I think that the name would be appropriate for a news reporting service following the new “Internet age” model for journalism, recognizing that something new has to come after the “creative destruction” of the old newspaper industry.

What I hope does not happen is that it winds up as a trademark for something “silly”.

“Do Ask Do Tell” is a phrase of common words that in the United States has a social and political meaning derived out of the political debate over “openness” about sexual orientation and personal identity, which occurred when President Clinton tried to lift the ban on gays in the military in 1993, and we wound up with the flawed compromise of “Don’t Ask Don’t Tell”, which is likely to be eventually repealed. Perhaps I helped give it that meaning with my books and website. Perhaps it would have that meaning anyway. The media, both “establishment” and “newbie”, quickly give meaning to common words and phrases, often outside of normal commercial or branding usage. One should note that the poster for the new film (from Magnolia Pictures) about closeted gay politicians “Outrage” has the phrase on its poster, but it is not part of the movie title.

There is nothing legally wrong with companies wanting to use it for other purposes (for example. “Do Tell” has been used in the telecommunications business in the US). But I wonder if it is a good idea for businessmen, particularly overseas, to try to use it that way. They may find that use of a “common English idiomatic phrase” that has taken on a political meaning could hinder sales and financial success of a business. Overseas especially, they may not fully understand the meaning that the phrase has in the United States. So I think that other businesses should use caution when considering using the phrase with other tld’s.

I certainly intend to keep using it as I have outlined.

I can imagine how other words could quickly get a new meaning in the future, such as Joshua Cooper Ramo’s use of the word “sandpile” as a part-title in his book ("The Age of the Unthinkable", already noted by our president indiectly in at least one speech.

Sunday, May 03, 2009

More on movies with duplicate titles (this time it's "Outrage") -- but still no problem


As I noted on my movies blog (entry May 2, toward the end of the entry) there are two independent movies coming out soon with the name of “Outrage” and they are totally different. The one getting all the attention right now (starting March 8) is about closeted gays in politics, directed by Kirby Dick. But there is a totally unrelated thriller by Ace Cruz with the same name coming out (pun unintended) soon.

Any casual look at imdb shows that this happens a lot. Often there is a feature film, and various obscure short films by the same name. Sometimes a TV film will duplicate the name of a theatrical release distantly related in subject matter. For example the TV “Swing Vote” is about a jury trying an abortion-related case, whereas the Touchstone feature is about a presidential election. There is a site that catalogues all duplicate movie titles on Netflix and here is that applicable link.

As far as I know, there is nothing instrinsically wrong with two films having the same name, or two books having the same name. With books, usually there is a secondary subtitle to distinguish them. (There’s plenty of duplication on Amazon; look at “Honor Bound”).

Where you get into issues usually is with a franchise of multiple movies (or books) around a name or a character (like “Superman” or “Harry Potter”). Usually the name becomes a trademark for associated toys or clothes, or (often) has an existing mark for comic books; often the franchise is set up as a “brand” (of stylized movies in a series) so that it becomes a trademark.

Duplication of names in movies is much more likely with independent films, which tend to be made for niche audiences. The English language, with its multiple sources, and heavy use of idioms and irony on words, invites the likelihood of the multiple use of the same word or phrase. Niche audiences are not likely to become confused since most independent film buffs know what they want to see in advance, although a theater chain like Landmark would have an issue if it happened to show both “Outrage” movies at the same time in the same theater in different auditoriums.

Suburban mall blockbusters intended to satisfy the bean counters of major studios might be a different matter, however. I have a feeling you might run into trouble it you called another movie “Kung Fu Panda” (which probably became a “brand” when AMC used it for its cell phone silence pre-feature video).

I notice that the (Kirby Dick) “Outrage” movie poster has the phrase “Do Ask Do Tell” underneath the title – of course, that’s the primary title of two of my books and my main website. But the “common English” phrase obviously has a political or moral meaning that applies in all cases. It may become the idiom that survives “don’t ask don’t tell”.

Friday, May 01, 2009

"Android Data" goes after many companies for infringing on its brand: a bizarre "Star Trek" story


Erich Specht has sued a large number of companies over prospective trademark dilution or infringement for the brand “Android” related to his trademark for “Android Data” which he says was set up “to communicate the seamless, almost robotic-like, bi-directional communication of data between a client and a data center in a remote location,” in 2000. The USPTO granted the mark in 2002. It would appear that the changes in the 2006 law (regarding prospective dilution) could matter.

The complete list of companies is in a story by Mike MaGee in TGDaily, here. The registration number is 2639556 and reads “G & S: Computer e-commerce software to allow users to perform electronic business transactions via a global computer network.” The USPTO record also says “no claim is made for the exclusive right to use “data” apart from the mark as shown.”

Forbes has a story here and maintains that Specht might have lost his claim because of “inactivity.”

I could not find a website for “Android Data” but I did find an “android phones blog” with an entry about this matter here.

This all sounds like something out of a History Channel episode about UFO’s and grays. It’s a bizarre case. I guess I won’t use “android” for a domain name right now.

Thursday, April 23, 2009

Wikipedia challenges (noncom) artists group using a domain name to parody theirs


Corynne McSherry of Electronic Frontier Foundation has an important discussion on a "trademark parody" case.

It seems that the Wikipedia Foundation is going after the domain name of a noncommercial site that discusses “Wikipedia Art” after some parties had an entity with such art removed from Wikipedia because it was not sufficiently “encyclopediac”.

Wikipedia is trying to stop the group from using the name. But it would not violate trademark law, because it is non-commercial, amounts to commentary or parody, and does not use a Wikipedia trade dress or logo. It is possible that Wikipedia could enter a dispute with ICANN and force administrative resolution with ICANN’s Uniform Dispute Resolution Policy (UDRP). They might prevail, but that would not be binding in US courts. Even the "prospective" nature of the 2006 Trademark law would not make a difference here.

The EFF story is here.

The Wikipedia art site is http://wikipediaart.org/, “a collaborative performance and public intervention.”

Wednesday, April 15, 2009

Company, organizations, people, and domain names can "mashup" all too easily


The world is such a small place (compared to Jupiter, anyway), that it’s getting harder and harder for companies, organizations, movie and book titles, and domain names to stay out of each other’s way.

Perhaps this is just part of the inevitable “mashup” talked about in Joshua Cooper Ramo’s new book “The Age of the Unthinkable” (Little Brown, 2009), but I tried to find out a little about “Kissinger Associates.” A site called “Biblio Tec Play” has a long discussion of the cabal (they include Geithner and support the idea that there are more Democrats in high finance on Wall Street than Republicans), link here.

Wikipedia gives some discussion of the past period as Kissinger McClarty, and Biblio gives a domain name reflecting that (kmaglobal.com) that gives a 403 Forbidden error – very strange. The descendants of Frost / Nixon and Henry Kissinger really don’t want to be too transparent. But “Domain Tools” says they own about 24 other domains.

And then there is another company, in Pennsylvania, called Kissinger Associates, that appears to be totally separate. It’s domain is this and appears to be a more “conventional” consulting firm for corporations. It claims to have trademarked several phrases, which I could not confirm at uspto.gov – although, as a matter of law, it’s possible to create a trademark right without registering it, although registration is generally necessary to make it stand up in court. (There is a nice PDF from West Virginia University by William W. Aylor, Trademark Attorney, that explains the basics, here.

Of course, this sort of situation will occur when people start their own businesses using their own names, as names tend to appear with a great deal of multiplicity in our society.

Even non-profits run into this. There is an “Environmental Leadership Program” site which has nothing to do with the paid “Environmental Leadership” section in The Washington Post today (April 15).

Saturday, April 04, 2009

2nd Circuit rules that plaintiff's can sue over "misleading" Internet ads for trademark infringement; overall impact very unclear


Electronic Frontier Foundation is reporting a potentially damaging ruling from the Second Circuit in trademark law on April 3.

Friday, The Second Circuit reversed a lower court ruling and maintained that a lawsuit against Google by Rescuecom can go forward. EFF’s copy of the Opinion is here. The complaint alleges tradermark infringement, dilution under the Lanham Act, and false presentation of origin.

At issue were programs called Adwords and Keyword Suggestion. The court opinion (here), around page 6, describes how this process works. Rescuecom alleges that the appearance of an ad purchased by a competitor may cause the visitor to believe “trademark confusion as to affiliation, origin, sponsorhip, or approval of service.”

The Second Circuit had previously ruled, in 2002, in the case of “1-800-Contacts v. When-U” that “he use of trademarks to launch ads does not, by itself, trigger trademark liability” (EFF) and that led many observers to believe that the Second Circuit would throw this new case out, following its own precedent. It would seem to me that the passage of the Trademark Dilution Revision Act late in 2006 may have contributed to its partial reversal, because the Revision Act allows for the idea of "prospective" dilution.

However, there at least seems to be a question now as to the practice of letting a company buy and ad based on a keyword based on a competitor. Does this cause “confusion”? To me, no, as long as I understand that I have to actually read the advertisement in context. But ads are not “literary” they way web content like this posting purports to be. The are designed to sell things. Trademark law has to deal with one of the sharpest divides in our free market culture: the practical need to manipulate people to buy things from you, versus the need to educate them to think for themselves. Trademark is designed to make the former efficient enough that people can make a living selling. Copyright law is the tool much more related to the latter social aim.

The ruling does not mean that Rusecom will win at trial. It still has to prove that consumers are really confused. But there is a problem with the “average consumer”. And there are real problems in that consumer mentality varies so much as you go from one area to another. Non-profit organizations (like SLDN, with which I network) have to “sell” an idea, but to an audience that is generally much more educated than one which is out to buy cheeseburgers. What I wonder is how courts can establish any concrete tests for likelihood of confusion in so many contexts. I wonder if the Second Circuit really understood this – a surprise given its 2002 ruling.

Corynne McSherry wrote the legal analysis on Electronic Frontier Foundation’s website yesterday, “Second Circuit Expands Trademark Rights, Restricts Consumer Search Options”, link here. Her analysis indicates the practical effect on sellers of ad space: they cannot easily dismiss litigation on legal grounds, and potential “plaintiff’s bars” can find them easy targets. Again, to me, this sounds like an area where we ought to have a “loser pays” system (an idea advocated by ABC’s John Stossel) to discourage frivolous litigation in volatile areas where it is difficult to articulate clear legal divides, like this one.

On the surface, the litigation doesn’t seem to threaten holders of domain names, or publishers or distributors of book or movie titles with frivolous infringement claims. But the whole infrastructure for Internet self-publishing depends on an effective advertising mechanism, even for publishers who don’t use it, and even for writers or publishers who don’t themselves purchase adwords, because they depend on the mechanism funded by others who do. This is a good example of collective legal “karma”

There is still a trial on merits to follow. I hope that this case, however, will first be appealed to the Supreme Court. This ruling makes for an alarming development.

(Please see also an earlier posting about this case June 10, 2008 on this blog.)

Friday, March 20, 2009

AOL offers quiz on recognizing correctly branded product labels


AOL today offered its subscribers a twenty-question trademark quiz called “Which One’s the Real Label”. Twenty common household products, including Crest toothpaste, Band.aids, Vlasic and Heineken Beer were presented with slightly different versions of their products in a “Product Label Quiz”. I got only six of 20 right. The Walletpop link for the quiz is here.

The exercise shows how picky the USPTO may be with trade dress, where every color and every visual figure matters. Many of the questions involved colors of print and backgrounds. With “Band.Aid” the question involved hyphenation of the corporate brand name.

The practical significance is that it’s too easy for imitators to fool the public with fake products, creating dilution and infringement. With financial institutions, slightly incorrect labels on an email could be a tip-off to a phishing attack.

Tuesday, March 03, 2009

A small business describes the USPTO registration process


“The Official Blog” on a site called “Jealous Brother” describes in detail the process that a small Internet business is likely to go through with a trademark registration with the USPTO. The blog entry appears to have been written in the fall of 2008.

The overview is called “Registering a Trademark from Start to Finish” with link here.

The author describes the cost involved (typically between $350 to $1500) and the USPTO’s unforgiving attitude toward “mistakes” which requires starting over and repaying the entire fee.

He also discusses “standard character” or workmark registration, “stylized” registration, related to trade dress, which he apparently used here.

Picture: Internet Outlook 2009 conference at Tysons Corner VA.

Saturday, February 21, 2009

Blockshopper settles deep linking case with Jones Day; could "trademark dilution" imperil deep linking on the Web?


The “Blockshopper” case discussed here in November 2008 has been settled out of court, and some observers feel that the defendant was bullied into settlement and that the judge failed to follow the law in refusing to consider amicus briefs or even in not ruling on the points of law before issuing the injunction.

Ars Technica has an article by Jacqui Cheng, “BlockShopper bullied into settling over Web links, link here. Apparently the agreement allows BlockShopper to link to “Jones Day” only if it spells out the name of the site in the URL. It’s hard to grasp how doing otherwise is “trademark dilution,” and the agreement threatens to set up a precedent where deeplinking is based on “permissions”. However, since it did not go to trial (the defendant did not have the money), it doesn’t set a precedent, and it sounds likely that an appeals court would have accepted this sort of trademark “argument.”

Slate has an even more detailed article that rings the warning bells, by Wendy Davis, “Linked Out: A case that threatens the right of Web sites to link freely,” link here. Davis points out the “trademark dilution argument”, which might be augmented by the 2006 revision law, could cause undoing of the previous cases that maintained that deep linking is all right in copyright law because it is essentially bibliographic (the 2000 Ticketmaster case).

And here is a PDF copy of the Settlement Agreement.

Once in a great while, I find a situation myself where I refer, with a hyperlink, to something someone wrote or did "personally" where it might be convenient to mention their professional connections with the link. This certainly happens with lawyers or insurance agents, for example. On a few occasions, I have avoided giving the "professional" link if I knew that the person's activity was "personal." This gets related to the whole "online reputation" issue. It sounds like it is stretching things, however, to claim that this is "(prospective) trademark dilution." Some legal observers warned in 2006, which President Bush signed the revised law, that there would be some "bullying".

Given all our financial turmoil, we seem to be heading toward a world in which “the strong” want to establish their power over the “weak” for power’s sake. A lot of people, unfortunately, believe that might makes right. I thought that it was up to the law to stop this kind of powergrabbing.

Update: Feb. 24, 2009

Nevertheless, Todd Bishop, on his Microsoft Blog (on Techflash) offers this humorous account of the value of what Blockshopper does, with his "Stop the presses! Some guy from Microsoft just bought a house!" link here.

Tuesday, February 03, 2009

Union Square (NYC) domain name and parody case settled


A website that parodied a Union Square development group (relative to ancient Union Square on 14th St in New York City, not the glitzy Union Square in San Francisco) is back up after an expensive out-of-court settlement. The original domain had been called “unionsqaurepartnership.org” and apparently the business development group did not bother to set up a domain in time before the parody site was set up. However, this domain name will be relinquished.

The new domain name cannot be safely repeated here because of a “bad word” in it, but here is the link. The satire on center left column “The Results Are In: USP Victory Over Activist Savitri Durkee and the First Amendment” explains what happened pretty well. The actual Union Square Partnership development group’s site is here.

The legal case also involved copyright law, and the arguments maintaining that parody is fair use. But it seems that the main dispute was really over the domain name itself. It sounds, in practice, more like a trademark or trademark dilution case.

I lived three blocks from Union Square, at 11th and Broadway, in the Cast Iron Building from 1974 to 1978. In those days, Union Square looked dismal, and I would note the contrast with a similarly named public space in San Francisco. The BMT and IRT (Lexington Ave. line) subways both stop there. I last saw the area in 2004, but expect a visit again some time during the first half of the year.

In a number of communities around the country, real estate developers have tended to threaten protesters with SLAPP suits. This is one of the areas where tort law abuse seems to be the most troubling. It’s unclear how the national real estate economic meltdown and financial crisis will affect the legal climate or its abuse.

Friday, January 30, 2009

Gatehouse and Boston settle news scraping case


Michael Kwun has an important story dated Jan. 26, 2009, indicating that GateHouse and Boston.com (owned by the New York Times) settled before going to trial Monday morning.

The link for the story is here.

The EFF story has a link to a PDF document copy of an email communicating a “binding level agreement.”

As the story says, this is a kind of rewind or an undoredo of history. Boston will stop literal newsscraping in this fashion, and Gatehouse will impose some technical impediments to prevent it. But both sites agreed that they can continue to deep link. EFF says that the details of the agreement could be counterproductive, turning away free traffic.

As I noted yesterday, “competition” in the Internet traffic business is a deceptive concept. It is not a zero-sum game.

EFF whimsically calls one of its home page features its “Deeplinks Blog.”

Thursday, January 29, 2009

In the the intellectual property world, trademark (and copyright) don't play zero-sum games; look at the "Picturehouse" story


In the Internet and media world, do multiple brands dealing with the same or similar material confuse costumers and limit profits?

The conventional wisdom holds that, and trademark law reflects that belief, but it’s probably not really true. A recent book by law professor James Boyle, “The Public Domain” (reviewed on my books blog Jan. 14) challenges conventional beliefs in all intellectual property areas when it comes to the Internet.

I’m reminded of this issue by coming across stories that Time Warner, last May, put to sleep three of its movie brands: New Line, Picturehouse (which was part of New Line) and Warner Independent Pictures. Legally, it closed down some separate companies as a business decision. But why not keep using the trademarks? It looks like “New Line Cinema” is back as a brand again, and Picturehouse (originally a venture between New Line and HBO) is too neat a concept (and a great musical-video logo) to give up. Warner Brothers ought to start reusing it as a brand for eclectic, grownup independent films even if it is no longer a separate company. (The website is still there.) The brand would tell the moviegoer what “culture” of film to expect. That is how the concept of brand is supposed to be used. There is no reason one studio can’t have multiple brands (look at Sony with Columbia, TriStar, and Screen Gems). And studios could make up brands to identify collaborations, and can reuse them later when circumstances change. It just takes paying lawyers for some paperwork. (By the way, “Warner Independent Pictures” seemed less distinguished; why not use Picturehouse for all the indie release?)

In the Internet area, we know that advertisers look at analytics for page requests, bounce rates, pass-throughs and the like. In some quarters, domain names have become a sensitive area and there is a fear that misleading names of even content “paradigms” will take business away from someone else in some kind of legally unfair competition. This has gotten to be more sensitive during the economic downturn.

But this viewpoint assumes ignorant users. Perhaps it matters for product sales, but when it comes to actual content (social and political) the issue is much more complicated. Educated users typically look for things in search engines, and well-constructed and substantial essays and blog entries usually get ranked high for free without any need to pay for placement. “Valued” visitors (those likely to be interested and open to new kinds of thinking) normally will make the effort to locate most of the relevant content, so sites do not “compete” for social content attention the way they compete to sell things.

There is perhaps an issue with free content. Many authors set up websites to sell their books and make conventional sales pitches (along with e-commerce) and find them somewhat ineffective, unless the content is really novel. Sales through Amazon and Barnes and Noble are much more convenient. Should authors offer some of their content free so that it gets read anyway? Some of the discussions by Boyle suggest that the practice does not prevent sales, and might even encourage it. Unlike most products, intellectual property (in both the trademark and copyright areas) is far from a zero-sum game; it tends to become cumulative quickly.

Friday, January 23, 2009

Another lawsuit (against NY Times and Boston.com) deals with deeplinks for both copyright and trademark dilution concerns


There is an important case brewing about “deep linking”, and Electronic Frontier Foundation has a major story posted today Jan. 23 by Michael Kwun, “GateHouse v. New York Times: Lawsuit Attacks Bostom.com News Aggregation Site”, link here. The action is taken against the New York Times, which owns Boston.com. The specific target for the complaint is a subdomain for Newton, MA, link here.

The full complaint is here (PDF) and deserves a reading.

The complaint claims copyright infringement in the use of banners and verbatim content, rather than links. The complain also claims trademark dilution (it seems it is using the prospective provisions of the 2006 Trademark Dilution Revision Act) suggesting that readers will believe that the Boston.com had a license to display GateHouse marks in such a manner (that is, visitor “confusion”). The brands involved include Newton Tab, Daily News Tribune, and Wicked Local.

Originally, the complaint was also concerned about ad-bypassing with deep links, but that portion seems to have been dropped. In a letter (linked in the EFF story) Goodwin/Proctor says “GateHouse does not claim that the act of ‘linking’ or ‘deep-linking’ by Defendant New York Times (or any other entity) constitutes unlawful activity of any kind.”, But the letter goes on to mention “trademark dilution.”

The federal judge (Young) has scheduled a trial to start Jan. 26 and promises a timely verdict after the arguments and evidence. It’s unusual for a case like this to go to trial.

There is real concern here for publishers, and possibly downstream liability if Section 230 gets weakened, and also for blogger insurance. Although the plaintiffs seem to be claiming that the Boston site is doing unreasonable copying beyond Fair Use, it may be difficult to draw the line in the future, particularly on the trademark questions. Remember the 2006 Trademark Dilution law was criticized on the idea that there were many gray areas that could invite abuse, although there are supposed to be defenses based on non-commercial use and a quasi “fair use” that I discussed on this blog June 28, 2007.

Stay tuned. This case is important. It does seem to remind us of the Associated Press case, which I discussed on my main blog June 2008 here.

There have been other cases, such as Google’s use of thumbnails, and many other companies use similar models for scraping news, such as Techme.

Boston.com’s own account of the litigation is by Robert Weisman, dated Jan. 23, “Lawsuit over website links in spotlight: Copyright violation or fair use to be decided”, link here.

I want to ad that in my own practice, I generally do not reproduce images or content (other than article titles) in links in my blog postings. I try to put as much of my own spin on the content as possible, sometimes referring to personal incidents, even though that practice has its own potential weaknesses for criticism.

There are other potential questions, I suppose, in my approach to blogs. Do television show and movie reviews create a problem if they provide spoilers or simply reproduce as a rewrite the program? (Paraphrasing itself presents interesting questions sometimes.) But again, I usually try to indicate why the media even is important. For example, some of Dr. Phil's programs are important because they tackle gender identity issues, or Internet "online reputation" issues and lead to further discussion of the underlying issues online. Even movies (like "A Broken Life") present ethical quandaries themselves worthy of add-on discussions, as does even opera, for example, as "Pagliacci" also covers the problem of "reputation" in "fiction." My take, in either trademark or copyright, "fair use rocks."

Update:

EFF has a story on Jan. 26 to the effect that the parties have settled. More details are forthcoming here.

Monday, January 05, 2009

Restaurant case illustrates many trademark issues; Business Week has slideshow on "David v. Goliath" cases


Stacy Perman reported (in Business Week) a complicated restaurant trademark case in Business Week back on May 30, 2008, “Wolfgang Puck v. Wolfgang Zwiener: two restaurant chains with similar names are about to square-off in a trademark infringement showdown,” link here.

The fact pattern is quite complicated, and involves questions such as geographical concentrations (in this case, New York and Los Angeles) and the use of personal names as marks. The article goes on to discuss the underlying philosophical and ethical issues in trademark law: the fact that businesses feel fiduciary pressure to protect their brands, but the tendency is to crowd out small businesses, often who do not have the resources to fight what seem like morally legitimate positions, even with respect to the newer problem of prospective infringement or dilution in view of the 2006 law.

The article leads to a “slide show” of “David v. Goliath” trademark cases, here. These include Vuitton, AOL and NavQuest, Starbucks and Conga, and the Lance Armstrong Foundation.