“Legal Weed” not allowed either…

April 29, 2008

The International Herald Tribune reports:

SACRAMENTO, Calif.: Vaune Dillmann thought the wording on his bottle caps was just a clever play on the name of the Northern California town where he brews his beer — Weed.

Federal alcohol regulators thought differently. They have ordered Dillmann to stop selling beer bottles with caps that say “Try Legal Weed.”

While reviewing the proposed label for Dillmann’s latest beer, Lemurian Lager, the Alcohol and Tobacco Tax and Trade Bureau said the message on the caps he has been using for his five current beers amounts to a drug reference.

In a letter explaining its decision, the agency, which regulates the brewing industry, said the wording could “mislead consumers about the characteristics of the alcoholic beverage.”

Mislead them? About what?

Would it surprise you to learn that this is all part of the ill-fated war on drugs? Any “drug references” on alcoholic beverages were banned in 1994 according to a spokesman for the Alcohol and Tobacco Tax and Trade Bureau.

“We protect consumers of alcohol beverages against misleading advertising and labeling,” he said.

The 2d Circuit ruled in favor of a brewer in Bad Frog Brewery, Inc. v. New York States Liquor Authority, 134 F.3d 87 (2d Cir. 1998). In that case, the appellant sought to use a trademark of a frog “giving the finger” to any and all passerby on bottles of liquor. New York state held that the brewery couldn’t do that since the mark was offensive in nature. The Second Circuit held that since trademarks are commercial speech, prohibition on use of so-called “offensive” trademarks did not advance the stated governmental purpose of protecting children from vulgarity or promoting temperance, nor was it narrowly tailored to serve that purpose.

This isn’t the same thing, naturally. A reviewing court should (at the least) place this application of the regulation up to rational basis scrutiny. Anyone who thinks that “Try Legal Weed” on a bottle cap is misleading is already high. But, since when does anything done in the name of the war on drugs need to be rational?

HT to Above the Law


Hi, I’m a Mac… and I’m NYC

April 9, 2008

If you can tell your ass from your elbow, perhaps you can also tell these logos apart!The New York Daily News reports on a trademark spat between Apple Computer and the City of New York (a.k.a. “The Big Apple” for those of you in Cupertino, California who don’t know that). New York recently launched its GreeNYC campaign (link), and filed an intent-to-use application for the green apple infinity symbol shown above. Apple Computer has taken offense and filed an opposition before the Trademark Trial and Appeal Board (TTAB) to try and prevent NYC from registering its symbol.

Apple’s Claims

Apple claims that the GreeNYC logo will cause confusion in the marketplace, and thus people will buy GreeNYC’s products thinking that they are associated with Apple; any defects in GreeNYC’s products will damage Apple’s reputation; and, that the GreeNYC logo will dilute Apple’s ability to distinguish its goods in the marketplace with an Apple logo. Complaint here.

With respect to the likelihood of consumer confusion claim, I’m not buying it. If you can tell your ass from your elbow, you can tell those logos apart. I would feel differently if GreeNYC were selling computers with that logo on them, but that is not one of GreeNYC’s goods. They intend to provide, for the most part, educational services and public relations materials. They will also provide schwag, such as t-shirts and hats, etc.

The dilution claim is a little more persuasive. It at least passes the “are you kidding me?” test. Apple has a very strong trademark, probably one of the most valuable brands in the world. Dilution law protects famous brands from encroachment by other brands on to their turf. While most trademark law is about protecting consumers from confusion, dilution law recognizes that brand owners have a property interest in their marks, and that property interest should not be diminished. (I have my issues with this, but this is not the post in which to discuss them).

Note that I said “a little more persuasive.” Not much…

I do respect the fact that they think that they have to protect their brand. In most cases, a company’s brand is the most important asset it owns. Apple’s current crop of computers, phones, and music players will be obsolete in 18 months. Their patents will expire. But, the brand can theoretically live forever — and consumers will continue to buy the next generation of Apple products due to Apple’s strong brand-identity efforts.

But this case stretches credibility a bit. Apple does “own” the marketplace when it comes to the familiar and famous silver apple logo pictured above. Apple also has a right to keep other companies from selling music players with a picture of an apple on them – in such a circumstance, consumers might get confused. Nevertheless, Apple does not “own” every single possible symbol that is based on that particular fruit. Look at it this way, the Boston Bruins use a stylized “B” for their logo, as do the Boston Red Sox. Life sure goes on for both teams, doesn’t it?

NYC Bites Back

Did you know that Apple is in the housewares business? Apple’s registration 73566772 is for mugs, drinking glasses, dishes, and wine glasses. Apple claims that it sells such goods in interstate commerce, but I’ve never seen nor heard of an Apple wine glass — and according to NYC’s counterclaim, Apple does not sell such goods. If NYC is correct, then at least one of Apple’s trademark registrations may be in jeopardy due to fraud.

“Fraud…” such an ugly word, isn’t it? But, that term takes on a special meaning at the trademark office. If you claim in a trademark application that you sell “dogs, cats, and hamsters,” but you never actually put any hamsters on the market, then your registration is void due to fraud and subject to cancellation. See Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003).

Conclusion

With respect to the counterclaim, that is relatively simple. Either Apple uses its logo on that junk or it doesn’t. If it doesn’t the registration is canceled. Naturally, that doesn’t mean that the opposition to NYC’s registration goes away, it just weakens it a bit and gives Apple’s intellectual property counsel a black eye.

With respect to the opposition itself, Apple shouldn’t prevail. I can’t even imagine George W. Bush, let alone an actual human, being stupid enough to be confused when looking at the two logos. As far as the dilution claim goes, it passes the smell test, but if the TTAB holds that Apple’s turf has expanded so far that it can stop the Big Apple from using a logo representing a stylized apple, then perhaps the judges on duty that day would be confused after all.


No, you can’t use Trademark Law to stifle critics!

March 23, 2008

It does not entirely turn my stomach when a corporation wants to stifle a critic. Most people and companies would want the same.

It does entirely turn my stomach when an attorney misuses his position as an officer of the court to try and support such efforts – this is the kind of behavior that gives our otherwise-honorable profession a dirty name.

On the other hand, when public interest lawyers like Public Citizen step in to defend First Amendment rights, that is the brightest star in the legal profession’s constellation.

WASHINGTON, DC – March 21 – A federal judge today upheld a Georgia man’s First Amendment right to criticize Wal-Mart’s business practices by using satire to compare its destructive effects on communities to both the Holocaust and al-Qaeda terrorists. Read the rest of this entry »


MLB Takes on Cape Cod League in Trademark Spat

March 19, 2008

The Cape Cod Baseball league is a 10 team amateur summer league that has produced approximately 200 players who went on to play in the major leagues.

Six of the ten Cape Cod League teams share names with MLB franchises. The Chatham A’s, Yarmouth-Dennis Red Sox, Harwich Mariners, Bourne Braves, Orleans Cardinals, and the Hyannis Mets are now the center of a trademark dispute.

According to Cape League sources, the six teams in the 10-team Cape League that share nicknames with major league franchises are facing a choice: Purchase all future uniforms and souvenir merchandise from more expensive MLB-licensed vendors or lose the annual grant.

MLB is also requesting an 11 percent royalty on sales next summer of existing inventory from the six affected Cape League teams. Non-clothing items such as coffee mugs and teddy bears that are not available through MLB vendors could no longer be sold. (source)

As lame as that is, from the Cape Cod Times report, it doesn’t seem to be quite as bad as some commentators are making it out to be. See, e.g., Techdirt. As far as I can see, MLB is not threatening a lawsuit, but merely threatening to revoke its $100,000 grant that it provides to the Cape Cod League’s $1.5 million annual budget.

I do sympathize with the Cape Cod League. However, it seems to break down to this: MLB gives the Cape Cod League $100,000 a year. In exchange, MLB wants the Cape Cod League to buy stuff from MLB’s friends. The Cape Cod League doesn’t need to accept the grant. In fact, I interviewed a high ranking Cape Cod League official who gave this comment:

Bro, you don’t even fahckin know guy, MLB was like fahckin cool about us usin’ the team names fah yeahs. Now, all outta nowheah, these fahckin pricks ah sayin’ we gotta buy ah shirts and hats from them?

So I says to Sully I says “Dood, should I fahck him up?” and Sully’s like “I dunno guy, you’re pretty hammahd. Then I called my Ma and tole her to leave the door unlocked cuz I’ll be home wicked late tonight.

Fahkin faghet it. I ain’t buyin’ shit from those bastids. Take ya hundred lahge and throw it in the habah.

Ok, maybe that is 100% fabricated, but that’s what I would say.

Of course, if MLB actually threatens a lawsuit against the Cape Cod League, my analysis might be different.


What is a Pay-Per-Click Page?

March 17, 2008

We have all bumped into pay-per-click sites while looking for actually useful information. You know these sites. You type in a domain name, fully expecting to find a useful website, and all you find is a sponsored link generic page.

The Periplaneta Americana of the Internet

Moto Guzzi PPC Site
What you find
at motoguzzi.us

Up until I was about 26, my primary form of transportation was always a motorcycle. However, I never owned a bike that cost more than $600. In high school and college, I drooled over the Moto Guzzis that I would see from time to time that were hopelessly out of my financial reach. As soon as my bonus came in this year, I resolved to spend it on a Moto Guzzi.

I figured that Moto Guzzi would be at http://www.motoguzzi.com. No such luck. Let’s try http://www.motoguzzi.us. As you can see by clicking the image above, you don’t exactly wind up at Moto Guzzi’s website. (www.motoguzzi.com used to resolve to a pay-per-click site too, but it has since gone down)

Canadian Moto Guzzi PPC Site
Canadians looking
for Moto Guzzi
Canada will be
similarly disappointed

These pay-per-click pages and their operators are the parasites of the internet. I love when they put some goddamned phrase at the top like “find something interesting” or “helping you find what you need.”

Far from “helping you find what you need,” these sites do nothing except divert traffic from its intended destination. Trying to wipe them out is like playing whack-a-mole. Go find your favorite website. Lets presume that it is “The Drudge Report.” Now type in http://wwwdrudgereport.com/ (note that I forgot the period). Click it and see where you wind up – certainly no where near the Drudge Report. You can do this all day long — and you’ll find these crappy and annoying pages everywhere. I suspect that they outnumber “legitimate” websites at this point.

Helping you find what you need?  What I needed was Moto Guzzi’s website you scum sucking cybersquatter!

These pay-per-click sites are truly the Periplaneta americana of the internet.

Under the UDRP – these kinds of pages are usually considered to be bad-faith use — even when the registrant claims that the page was automatically generated.

Under the ACPA (15 U.S.C. § 1125(d)), this kind of parasitic behavior can subject the pay-per-click domain owner to up to $100,000 in damages as well as forfeiture of the domain name, and possibly an attorneys’ fees award.


Is Godaddy a Mass Cybersquatter?

March 16, 2008

We have all bumped into pay-per-click sites while looking for actually useful information. You know these sites. You type in a domain name, fully expecting to find a useful website, and all you find is a sponsored link generic page.

The Periplaneta Americana of the Internet

Moto Guzzi PPC Site
What you find
at motoguzzi.us

Up until I was about 26, my primary form of transportation was always a motorcycle. However, I never owned a bike that cost more than $600. In high school and college, I drooled over the Moto Guzzis that I would see from time to time that were hopelessly out of my financial reach. As soon as my bonus came in this year, I resolved to spend it on a Moto Guzzi.

I figured that Moto Guzzi would be at http://www.motoguzzi.com. No such luck. Let’s try http://www.motoguzzi.us. As you can see by clicking the image above, you don’t exactly wind up at Moto Guzzi’s website. (www.motoguzzi.com used to resolve to a pay-per-click site too, but it has since gone down)

Canadian Moto Guzzi PPC Site
Canadians looking
for Moto Guzzi
Canada will be
similarly disappointed

These pay-per-click pages and their operators are the parasites of the internet. I love when they put some goddamned phrase at the top like “find something interesting” or “helping you find what you need.”

Far from “helping you find what you need,” these sites do nothing except divert traffic from its intended destination. Trying to wipe them out is like playing whack-a-mole. Go find your favorite website. Lets presume that it is “The Drudge Report.” Now type in http://wwwdrudgereport.com/ (note that I forgot the period). Click it and see where you wind up – certainly no where near the Drudge Report. You can do this all day long — and you’ll find these crappy and annoying pages everywhere. I suspect that they outnumber “legitimate” websites at this point.

Helping you find what you need?  What I needed was Moto Guzzi’s website you scum sucking cybersquatter!

These pay-per-click sites are truly the Periplaneta americana of the internet.

And not only that, when these pay-per-click sites operate by using another person’s trademark, like Moto Guzzi, they are breaking the law. Under the ACPA (15 U.S.C. § 1125(d)), this kind of parasitic behavior can subject the pay-per-click domain owner to up to $100,000 in damages as well as forfeiture of the domain name, and possibly an attorneys’ fees award.

Dude, Where’s Your Blog?

Now that you know how I feel about pay-per-click sites, and you know that establishing one on the back of someone else’s trademark rights is illegal, lets take a look at a little GoDaddy issue, which served as the inspiration for this post.

GoDaddy runs its own pay-per-click program that isn’t really all that parasitic. If you buy a domain from GoDaddy (or any other registrar for that matter), you can “park” the page, and the registrar will turn it into a pay-per-click site for you. This is not, generally speaking, the kind of practice that I rail against, nor is it a violation of the ACPA. It is kind of like putting a billboard on a building that is under construction.

Imagine my annoyance a few days ago when I was trying to visit one of my favorite IP blawgs and entered the address into my browser.

I left off the “www” as I often do, since it is usually superfluous. See, if you type in legalsatyricon.com, or http://www.legalsatyricon.com, or http://www.legalsatyricon.com, you wind up at the same place — the Legal Satyricon — your intended destination (I hope).

So here is what I typed in: http://vegastrademarkattorney.com.

vegas trademark attorney parked screen shot
Is this cybersquatting?

Imagine my surprise when the page that came up said “this domain is parked,” and I was provided with a generic GoDaddy pay-per-click domain parking page! Had a cybersquatter stolen Mr. Gile’s domain and turned it into yet another plague-of-the-web pay-per-click site? Did Gile just give up the whole blawg concept in favor of collecting a few bucks a month in click-thru fees?

Just for giggles, I looked at the address in my browser and I entered the “www” — http://www.vegastrademarkattorney.com. When the familiar logo and layout popped up, I breathed a sigh of relief and thought little of it.

A few days later, I tried to visit one of my other favorite blogs, Nobody’s Business:

I entered in the following: http://bakelblog.com. Yikes! It appeared that one of my favorite libertarian blogs was gone! (note, by the time you read this, the issue may be corrected)


Lese majeste
scofflaw
and proud of it!

I thought, “oh no, did Queen Beatrix send her secret police to drag Rogier van Bakel from his island hideout to answer for the crime of insulting Dutch royalty?” As I loaded my Glock and started wondering who to call to assist me in my rescue mission, I considered trying one less drastic solution… I typed in the “www.” http://www.bakelblog.com

Relief… Rogier is still safe from being cast into an Amsterdam dungeon, and I don’t have to take on any Dutch prison guards.

Now that we have established that neither censors nor domain thieves have conspired to deprive me of some of my favorite reading material, I still must ask the question — WTF? It looks like GoDaddy is playing the cybersquatting game by slightly different rules.

Is GoDaddy Violating the ACPA?

When GoDaddy provides these pay-per-click pages instead of its customers websites, is the world’s largest registrar violating the Anti Cybersquatting Act? Maybe. Lets look at some pertinent portions of15 U.S.C. § 1125(d).


(d) Cyberpiracy prevention

    (1) (A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person –

    (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and

    (ii) registers, traffics in, or uses a domain name that –

    (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;

Well, first of all we will need to decide whether Gile’s “Vegas Trademark Attorney” or van Bakel’s “Nobody’s Business” are trademarks. They are not registered marks, but registration is not required — trademark rights arise from use, not registration. I would say that “Nobody’s Business” certainly is a common law mark, and perhaps so is even “bakelblog”.

“Vegas Trademark Attorney” is super descriptive, and almost generic. However, that would only be the case if the services were “legal services.” For a blog, I’d say that the name qualifies for some degree of trademark protection. Add to that his secondary meaning, and I’m willing to say that both blogs’ names and domains are distinctive.

I realize that I am skipping a few details here, but this is a blog, not an appellate brief.

Next, lets see if Godaddy’s behavior fits within the ACPA’s prohibitions. There is no case law to guide us on this, since this particular kind of behavior hasn’t been dealt with in any reported case (at least none that I could find).

It sure looks to me like it fits.

Godaddy is “using” domain names that are supremely confusingly similar. In fact, Godaddy is actually using van Bakel and Gile’s domain names, absent the “www.” The “use” is for profit — the pages that Godaddy provided to me, instead of the pages I searched for, were chock full of sponsored links. GoDaddy makes advertising revenue off of them.

But is it Bad Faith?

15 U.S.C. §1125(d)(1)(B)(i)(I) thru (IX) provides nine nonexclusive factors to help us determine whether the use is in bad faith. None of them seem to fit neatly within this factual scenario. GoDaddy certainly is using these domains with an intent to profit — but in order to call this an ACPA violation, we need to say that it is a bad faith intent to profit.

At first blush, it sure seems like it is. Naturally, I alerted these two bloggers to the issue. Rogier van Bakel put on his journalist hat and went digging for the truth. His results suggest that GoDaddy gets a legal (but perhaps not moral) pass on this one.

GoDaddy gives its customers the option of having their site load without the visitor typing in the “www.” They do this by adjusting their “CNAME” settings. As I understand it, the CNAME is a kind of alias that, behind the scenes, automatically modifies a URL to go to a specified site. These websites’ CNAME’s were set adequately but not perfectly. Any GoDaddy user who fails to select the proper option will find some of their traffic re-directed to a sponsored link page, where coincidentally GoDaddy makes a few bucks on click-through fees.

However, ultimately, it does come down to the webmaster operating his account properly.

It seems that GoDaddy makes this needlessly complicated (or at least non-transparent), and that it should be a cinch for the company to autoforward, say, vegastrademarkattorney.com to the exact same place it takes you when you type http://www.vegastrademarkattorney.com. I fail to understand why any customer would prefer that a visitor who omits the “www” should be re-directed to a pay-per-click site — especially when such site gives the impression that the website the user sought has gone out of business (or worse).

But back to the legal question: Does GoDaddy’s conduct rise to the level of “bad faith?” At first, I was certain that it does. After Rogier’s research is taken into account, it appears that at least some (if not most) of the responsibility must fall on the shoulders of the user — who can control the issue at any time.

Does that make GoDaddy right? No. The default should be that internet users wind up where they intended to go. It is still parasitic and sleazy to draw traffic intended for someone else to your own money-making scheme. It is even sleazier when you do it to your own paying customers.

Rogier van Bakel contributed mightily to this post.

100_2192
And yes, I did eventually get my Guzzi!

The Great “Cockaholic” Battle – Ornamentation vs. Trademark Use

March 12, 2008

Niiice Cock

Urban Dictionary defines “cockaholic” as “someone with an insatiable lust for the shaft.”

With the term defined, you would think that you would have to enter an alternate universe to find two parties arguing over who is the true “cockaholic.” Welcome to that universe — You are now entering the Trademark Zone.

Sports-Aholic, Inc. filed an Intent to Use application for the trademark “COCKAHOLIC” in February of 2007 for Clothing, namely, t-shirts and sweat-shirts; Headgear, namely, caps. (source). Given the fact that someone at the USPTO has jerked the sensitivity lever to the far-right, I’m surprised that this wasn’t simply rejected as allegedly “immoral and scandalous.” (I don’t think that it is, but I’m surprised that the USPTO didn’t).

A party by the name of Benee Hudson alleges that prior to the date of Sports-Aholic’s application, she used the COCKAHOLIC mark on t-shirts and thus she has common law rights to the mark. She filed an opposition to Sports-Aholic’s registration. (opposition)


Movie titles are not
trademarks unless
they are for a series

Setting aside the inherent humor in two parties hiring expensive attorneys to argue over who is the real cockaholic, this whole mess could have been avoided if everyone paid better attention in their trademark law class.

In order for Ms. Hudson to claim that she has common law rights to the COCKAHOLIC mark, she is going to need to show that she uses it as an identifier of the source or origin of her goods. I did a few internet searches for the term, and I can’t seem to find any company that uses the term as such. That doesn’t mean that Ms. Hudson is lying — but her claim to common law rights is going to be a little more difficult to prove if she has no perceptible market footprint.

I was able to find a website, hawkaholic.com where “cockaholic” t-shirts are sold. Since Ms. Hudson lives in Kansas and that site is registered to someone in Kansas, there might be a connection — but it might just be a coincidence. Kansas is known as “the Cockaholic state” after all.

What I suspect is that Ms. Hudson, Sports-Aholic, and Hawkaholic.com all misunderstand the concept of “ornamentation.”

The mere fact that a term appears on a shirt, hat, or any other product does not necessarily make that term a trademark. See, e.g., In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993). However, “[m]atter which serves as part of the aesthetic ornamentation of goods, such as T-shirts and hats, may nevertheless be registered as a trademark for such goods if it also serves a source-indicating function.” In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988) (emphasis added).

In other words, an Abercrombie and Fitch T-Shirt that says ABERCROMBIE on it is ornamented by the term, but the term also serves as an indicator of the source or origin of the T-Shirt.

On the other hand, the T-Shirt design “COCKAHOLIC” as shown below, and as sold by hawkaholic.com is purely ornamental.


Ornamental, not a Trademark

In that example, “Hawkaholic” is a trademark, since the Hawkaholic online store sells a line of t-shirts with the “-aholic” suffix humorously attached to certain common words. On the other hand, “COCKAHOLIC” is mere ornamentation, despite the misuse of the “TM” symbol next to the term. See Ire Olin Corp., 181 USPQ 182, 182 (TTAB 1973) (“It is a matter of common knowledge that T-shirts are ‘ornamented’ with various insignia, including college insignias, or ‘ornamented’ with various sayings such as ‘Swallow Your Leader…’ ‘Swallow Your Leader’ probably would not be considered as an indication of source”).

Don’t even get me started with priority of use. It appears that there is a Suicide Girls Group called “Cockaholics” that has been active since 2004.

Got it? Good. Now lets sit back and watch how much money gets wasted on a trademark dispute over something that probably isn’t even a trademark in the first place.

HT: Bob Frank

Special thanks to Marty Schwimmer .


Old is New … Satire v. Parody

March 12, 2008

I’ve always been a bit uncomfortable with how the 9th Circuit dealt with the Cat in the Hat case. Dr. Seuss Enters., L.P., v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997).

I just came across a 1998 article by Santa Clara intellectual property professor, Tyler Ochoa. Ochoa criticizes the 9th’s decision in DR. SEUSS, THE JUICE AND FAIR USE: HOW THE GRINCH SILENCED A PARODY, 45 J. Copyright Soc’y USA 546 (1998)

[The book] it was a satirical account of the O.J. Simpson trial written in the style of Dr. Seuss. Entitled The Cat NOT in the Hat! and labeled “A Parody By Dr. Juice,” the book recounted the events of the trial in simple and repetitive rhyming phrases like those used in The Cat in the Hat and 46 other children’s books written by Theodor S. Geisel under the pseudonym Dr. Seuss. The Cat NOT in the Hat! was illustrated with thirteen depictions of a cartoon caricature of O.J. Simpson, also in the style of Dr. Seuss, wearing the Cat’s distinctive red-and-white stovepipe hat.

Based on a pre-publication advertisement, Dr. Seuss Enterprises filed suit against the authors and publishers of the parody, claiming that it violated the Copyright Act, the Lanham Act, the Federal Trademark Dilution Act, and California Unfair Competition law by using copyrighted expression and registered and unregistered trademarks belonging to the plaintiff. The District Court entered a preliminary injunction against the defendants, holding that the plaintiff had demonstrated a likelihood of success on the merits of its copyright claim, and that the trademark claim presented serious questions for review and the balance of hardships favored the plaintiff. On an interlocutory appeal, the District Court’s rulings were affirmed by the Ninth Circuit in a published opinion.

In this article, I will demonstrate that the Ninth Circuit’s opinion was incorrect, both as a matter of law and as a matter of public policy. In its opinion, the Ninth Circuit misapplied controlling U.S. Supreme Court precedent in holding that The Cat NOT in the Hat! was not a parody and was not a transformative use; in holding that the defendants were limited to that copying necessary to “conjure up” the original; and in presuming that the defendant’s commercial parody would cause harm to the potential market for the original and licensed derivatives.

Part II of this article will discuss the social importance of parody and the related forms of burlesque and satire. Part III will briefly review the development of the parody defense to copyright infringement, with particular attention to the U.S. Supreme Court’s 1994 opinion in Campbell v. Acuff-Rose Music, Inc. [FN5] Part IV will summarize the Ninth Circuit’s opinion in the Dr. Seuss case, while Part V will offer an alternative analysis explaining how the Ninth Circuit erred in enjoining publication of The Cat NOT in the Hat!

I definitely place Ochoa at the top of the hill when it comes to IP professors that have earned and maintained my respect. (He could a bit of tutoring in 1980s pop culture, but that is a private joke). I really wish that I had read this article a long time ago.


Anti-Hillary Hypocrisy?

February 29, 2008

One of my most stellar former students (and one who was never afraid to take me on in class), Mr. Jeffrey Fuller chimed in on the Clash of the Anti-Hillaristas posting with some very interesting research:

With that introduction, I yield the floor to Mr. Fuller:

I went over to the C.U website and was surprised when I saw C.U’s General Counsel and Vice President is Michael Boos. He was the plaintiff in Boos v. Barry, 485 U.S. 312 (1988). C.U.’s website explains it this way:

The case involved a successful constitutional challenge to a Washington, DC law that prohibited the carrying of signs or banners near foreign embassies, if those signs or banners were designed to bring the foreign government into “public odium” or “public disrepute.” The law had been selectively enforced to prohibit demonstrations near the Soviet Embassy.

If any one is worthy of the ass-hat award, it is Mr. Boos. His intellectual dishonesty amazes me. On one hand he argues, he has a first amendment right to protest foreign embassies in a way the embassies find offensive. Then twenty years later asks the court to ignore the first amendment and prevent someone else from exercising their first amendment right because it offends his organization.

For this hypocrisy Mr. Boos should be considered for the ass-hat of the year award.


Parmesan comes from Parma, not Germany

February 27, 2008

As one might guess, my ancestors came from Italy (Sicily to be precise). Accordingly, when I send someone to the store and say “come back with some parmesan,” I do not expect them to come back with this CRAP! That shake-canister full of satan’s dandruff is not parmesan!!!!

Michael Atkins reports on a European Court of Justice decision that supports my point (with a little less yelling than I would like).


Fox News Porn – Fair Use Orgy!

February 26, 2008

This is going to be a fun election for intellectual property wonks. We’ve already seen the Clash of the Anti-Hillaristas!

Now, Fox News finds itself in a fair use maelstrom.

In an effort to criticize the network that brought us eight years of darkness, an anonymous webmaster has created the Fox News Porn website. Apparently the webmaster has detected higher than normal levels of T&A on Fox News.

One of the links brings you to Fox Attacks, a blog that seems to be devoted to tearing down the Fox Network.

Disclaimer, I do occasional legal commentary on Fox. Nevertheless, I don’t allow that to bias my opinion of the network. I do think that Fox is open to plenty of honest criticism, but I find this kind of attack to be more than a little dishonest. Every network dishes up the skin. If these people have a beef with Fox’s content and political leanings, so be it. That is the arena in which they should take on Fox – not some faux morality crusade.

This kind of shrieking is far too reminiscent of the McCarthy-like tactics employed by the religious right.

Lets sit on the sidelines and see if Mr. Murdoch takes the criticism, or if this winds up being a really interesting intellectual property case. The site clearly uses the Fox News logo (trademark infringement) and clearly uses Fox’s copyrighted materials. However, I’m certain that if Fox attempted to bring a claim for either one, the fair use defense would obliterate the claims.


A David and Goliath Trademark Battle

February 17, 2008

I see it all the time. Well-funded trademark bully starts pounding on small business. Small business, if it resists at all, eventually breaks financially. Unethical lawyer on bully’s side goes home and tells his or her kids something about morality, yet fails to choke on the irony.

I’m not certain that this case falls into that category, but it might. If it does, the defendant might have something in store for the plaintiff.

Read the rest of this entry »


Clash of the Anti-Hillaristas

February 13, 2008

It is always funny when rival political factions get into trademark disputes instead of letting their ideas compete in the marketplace. That usually happens with opposing political factions. See, e.g., Hypocrites for Community Values Lose Round One.

In a new twist, we see two groups with a common interest in a trademark spat.

Apparently the world just ain’t big ’nuff for two anti-Hillary groups.

Read the rest of this entry »


Can Myspace account names trigger ACPA liability?

February 11, 2008

Marty Schwimmer over at the Trademark Blog reports on a recent trademark infringement case filed by Cleanflicks.

I noticed a rather interesting issue in the complaint. The plaintiff includes a count against the defendant under the Cybersquatting Act.

As a result of Defendant’s unauthorized registration and use of the confusingly similar http://www.myspace.com/cleanflicks Plaintiff Clean Flicks is damaged and will continue to be damaged. Therefore Plaintiff is entitled to injunctive relief, to an order transferring the domain name to Plaintiff, and to recover against Defendant statutory damages, plus interest and costs in an amount to be proven at trial, and to its attorney’s fees. (source)

I can not recall another cybersquatting case in which the defendant was found liable under the ACPA for bad faith registration or use of a web address or subdirectory path.

acpamyspace.jpg

The ACPA is triggered if a defendant registers, traffics in, or uses a domain name that is identical or confusingly similar to another’s mark. The plain language of the ACPA doesn’t seem to limit this to second level domains.

However, 15 U.S.C. § 1127 defines “domain name” as follows:

The term “domain name” means any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.

I could see a court agreeing that myspace fits into the term “other domain name registration authority,” without making completely bizarre legal contortions. Nevertheless, I don’t think that the name of a myspace account fits into this definition of “domain name” very neatly. It may very well come down to how tech-savvy the judge is. A judge who understands how the internet works will certainly be less inclined to agree with this expansive reading of the term “domain name.” A luddite judge will likely not see the distinction.

That being said, I’m not sure that the luddite point of view is necessarily wrong, but something just does not feel right about putting such restrictions on subdirectories.

This will be a good case to watch. If the court agrees that myspace account names are covered under the ACPA, this could open some major ACPA floodgates (with some possible First Amendment implications).


HSBC v. Clear Blue Sky – Common UDRP Defenses Debunked

February 4, 2008

A recent UDRP case, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, Case No. D2007-0062 provides a good collection of some typical losing UDRP defenses and shows where the line should be drawn around such defenses.

The Case

Read the rest of this entry »


Follow

Get every new post delivered to your Inbox.

Join 2,612 other followers