Thursday, February 23, 2012
The Washington Post has an interesting discussion of Apple’s trademark issues in China over its iPad. The story says Apple “illegally” bought the trademark from Proview in China in 2009 (the product appeared in 2010).
The story is by Sarah Halzack and Hayley Tsukayama.
The situation could be harmful to Apple’s ability to sell the iPad and other products in China. I don’t think it would affect anything outside China.
The link is here. The story appears on p A11.
Monday, February 13, 2012
Complainants often go for the "weakest link" to harass speakers -- that's the domain registration system
I need to continue the discussion from last week’s post.
At about the one hour mark on the video below (from 2009, at Case Western Reserve in Cleveland), Corynne McSherry from Electronic Frontier Foundation talks about the recent tendency for complaining parties now to go to domain name registrars and make up phony trademark complaints, even when they know they won’t work, to harass speakers.
She calls the domain name registration system the “weakest link” in the armor protecting speech. (Other writers have spoken of the way domain names are stolen about the time of renewal.)
She gives several examples. Someone created a parody site called “nytimes-se” (special edition), and one of the companies with spoof ads, De Beers, went to the site’s domain name registrar to get the site knocked down. (Here’s another account). There are some examples, such as one involving a developer around Union Square, NYC (near where I lived in the 1970s), and another involving the State of Kentucky trying to shut down what it called illegal gaming sites, some of which had no connection with the state.
The Lanham Act (source) would be the governing US Code for courts. Common defenses include non-commercial use. Legally, parody in mash-ups shouldn’t cause trademark infringement, because it’s not intended to confuse consumers with competitors. McSherry recommends using an ISP with a “backbone”, and preferably and ISP that is also your registrar, or has good relations with a major registrar. We’ll not the location for the UDRP, or Uniform Domain Name Resolution Policy at ICANN, here.
On Part 2 (the YouTube video in last week’s post), Boston University Law Professor Stacy Dogan talks about the liability claims against search engine providers, when domain names or wordmarks occur as keywords for searches, which then generate paid ads, which might be from competitors. This sounds more like a business model problem for search engine companies than usual “small fry” speakers, although any business model issue could eventually affect “barrier to entry”. Stacy talks about the unsettled controversy over whether the opportunity for legal use trumps infringement, or whether a business model could be predicated on infringement (as with copyright), and when there is cause for action. One problem is that a mark registered by one site would turn up competing entries, probably unrelated, from other sites using domain names with similar verbage.
Trademark, however, is still different from copyright. Calling attention to competition, or giving air to it, is not a violation unless it actually creates the likelihood of confusion. Informative use is permissible, and resellers can use marks to generate more sales (not the case with copyright).
No one discussed whether the 2006 law concerning prospective infringement has significantly affected litigation.
Tuesday, February 07, 2012
It just wanted to reiterate that I plan to continue using the “doaskdotell.com” domain name for the indefinite future, and that I am still working on the idea of a “do ask do tell” film. The domain is registered with Network Solutions through December 2012, and it is expected that it will be renewed for three years or so. I do not intend to register the core name with other tld’s (like .org, etc). At various times, parked domains have existed with these tld’s.
All of my blogs and other important materials (links for purchase of books from e-commerce sites) can be navigated from this domain.
I still believe that the best commercial use of the phrase would be a media production company or distribution company, emphasizing independent film related to the concept that the phrase expresses. Obviously, a film on the history of “don’t ask don’t tell” would fit. Or so would a film based on the legitimacy (or illegitimacy, according to Facebook) of living a double life online. (I’d hate to see the phrase used for something silly like “clothes”. Let Old Navy be what it is.)
USPTO has changed the link of its web site recently. A generic search for my domain still yields only the same dead mark from 1996.
An important question is whether companies in different lines of business can use the same mark. USPTO has generally said yes. Lawyers tend to argue that one has to be cautious if a consumer would be likely to believe that the a company selling one product or service could logically sell the other. Here’s one reference “Can I trademark a similar name in a different industry as a tradename?”, at Avvo, from 2008, here.
Also, the site “My Wife Quit Her Job” has a nice primer on trademark law and domain names, here.
Could a mark used by music groups or parties be confused with a series of movies or books? Since music is media, and in the media world, many companies both distribute music and movies (as we know from all the copyright law and piracy fights), there could be more risk of confusion. If a disco party was called that, would it be a problem for me? No, not if relatively local. But if Madonna used it as the name of her Super Bowl halftime party, there could be an issue. But if that happened, the media would be tracking me down and interviewing me anyway, right? Maybe I’d get free tickets and air travel to next year’s Lucas Oil. (Watch out, in 2014, the SB will be outside, in a wintry clime – New York – maybe not so good.)
I’ve read that names of individual films and books are not trademarkable, but franchises (“Transformers”, “Twilight”, “Harry Potter”, etc.) are. You have to watch if a keyword is buried in a phrase and not at the beginning (like IDG’s “for Dummies” books).
Even so, recently, as an indirect result of research into the piracy issue (generated by SOPA), I learned of a fight over two films called “Shut Up and Sing”, with the second film having a name change. But generally its common for more than one film to have the same name (for example, there are two important documentaries from different sources, both called “Collapse”, and both with a similar message).
I have two books on Amazon whose title starts with “Do Ask Do Tell” (link) It would be an interesting legal question as to whether that could automatically constitute a mark. I don’t know.
An interesting (and troubling) question could come up with a domain name based on “common words” with an understood meaning that had been used largely for speech purposes and only minimally for commerce (goods and services), at least based on financial numbers. Perhaps the site doesn’t sell anything or take credit cards or personal information directly but refers (“outsources”) the visitors to amazon or other “corporate” e-commerce for all financial transactions (so as to avoid the additional security liabilities that bigger companies can take on). Suddenly, a new company comes along, starts using the name, registers it as .tv, and says it has financial results and can hire people and give them benefits, maybe by selling something silly (even, say, sex toys). Could it knock the original “speech oriented” domain off? I don’t know. I have never seen this question debated.
But an important rejoinder might include the idea that in the modern world, every person needs to have a personal "brand" online, even if it is not "commercial" in the sense of classical trademark law. Advertising entrepreneur Donny Deutsch (and business chum of Donald Trump) just produced a major video on this for AOL-Huffington (my "BillBoushka" blog Sunday Feb. 5). People's names may be too common ("John Smith") or (from a foreign language) too hard to spell and remember (like mine), so the use of a catch phrase for a domain name can help establish publicity. Is this "right"?
Here is a YouTube video form Case Western Reserve in Cleveland, OH, 2009, “Signifiers in Cyberspace: Domain Names and Online Trademarks”.
This is part 2. There are several parts. Part 1 (over 100 minutes) doesn’t start until mark 11:45 in the video). Corynne McSherry from Electronic Frontier Foundation speaks in Part 1.
I see that I previously addressed this issue on Feb. 4, 2010.