Hungry Like the Wolf

by Jay Marshall Wolman

In the wake of Super Bowl XLIV, Katy Pery’s backup dancer “Left Shark”, disputes among intellectual property lawyers arose as to what kind, if any, protection was available to the owners/designers of the costume.  Recently, our friend, the Boozy Barrister, over at Lawyers and Liquor, became embroiled with the world of furries, which got me thinking again about the copyrightability of costumes or fursuits, as the case may be.

Much of the precedent involving the copyrightability of fursuits came out of the Second Circuit.  See Chosun Int’l v. Chrisha Creations, Ltd., 413 F.3d 324 (2d Cir. 2005).  In Chosun, competing animal-themed Halloween costume makers fought over whether Chosun Int’l had a valid copyright to enforce.  The district court dismissed, finding the costumes to be non-copyrightable useful articles.  The Second Circuit reversed, remanding for a determination of whether there were elements that could be physically or conceptually separated from the costume itself.  By way of example, the Second Circuit suggested the head or hands could be removed physically or conceptually from the useful, clothing aspect of the costume.

Last month, the Supreme Court in Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017) rejected the physical-conceptual distinction utilized in Chosun.  In Star Athletica, a copyright dispute arose regarding cheerleading uniforms.  Varsity Brands claimed its costumes were infringed upon and Star Athletica argued that the costumes were useful articles and could not be copyrightable.  Star Athletica won at the District Court, but suffered a reversal in the Sixth Circuit.  The Supreme Court affirmed the Sixth Circuit decision–the graphic designs were separately identifiable and could be protected.  It found that the designs could, essentially, be drawn as art and, therefore, were protected (the shape, cut, and dimensions of the uniform were not protectable).  The specific test announced was:

We hold that an artistic feature of the design of a useful article is eligible for copyright protection if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article.

So, turning back to Left Shark and furries, either could be perceived as a separate work of art that is protectable.  Separability might be harder to determine, as the dimensions of the shark shape or a Boozy Barrister Badger fursuit are integral to the costume itself, but this is probably not fatal.  This is especially where fursonas (an actual term, though I prefer “fursonae”) may include the avatar, which can be a depiction of the fursuit in two dimensional form–a separate work of art.

Thus, a fursuit is likely eligible for copyright protection.  (The Left Shark trademark dispute is really not about the costume and the trademark is really unnecessary if it is copyrightable anyhow.)

Super Bowling for Dollars

by Jay Marshall Wolman

Yesterday, on Twitter (yes, I’m on Twitter @wolmanj), I shared an article by Mike Masnick from 2012 regarding the myth of the Big Game/Super Bowl nomenclature.  It seems the issue is still a popular one on Techdirt.

Here’s the thing–the 9th Circuit laid out a nice test for nominative fair use:

First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 306 (9th Cir. 1992).  “The Big Game” can mean any other championship.  Thus, the first test is met.  The second test is also met–it only uses two words.  Finally, so long as you are not suggesting sponsorship, it is okay to say “Come to Gary’s Olde Towne Tavern to watch the Super Bowl.”

Everybody pretty much knows using “Super Bowl” is nominative fair use in the above context.  Yet, the NFL seems to knowingly flout this right and send improper cease-and-desist letters.  A suit by the NFL would not likely be successful and probably frivolous.  Thus, it could be fair to say that by claiming Gary’s is infringing, despite nominative fair use, the NFL would be making a blatant misrepresentation.   Gary’s could then potentially sue the NFL for violation of state mini-FTC acts which prohibit unfair and deceptive trade practices.  These acts typically provide for attorney fees upon success, sending a message beyond just a declaratory judgment.  Further, if the FTC wanted, it could probably pursue the NFL for these overreaching practices.

Just as copyright holders must consider fair use before sending a DMCA takedown notice, so too should trademark owners.  [I haven’t researched whether anyone has ever brought a state mini-FTC act claim over an improper cease-and-desist letter, so feel free to share.]

Spics Not Welcome

by Jay Marshall Wolman

By now, you have probably heard that Simon Tam won his case before the Federal Circuit regarding his attempt to register a trademark for his band “The Slants”.  (Disclosure: Randazza Legal Group represented the First Amendment Lawyers’ Association as amicus curiae in that case and was recently co-counsel with Mr. Tam’s lawyers, Ron Coleman and Joel MacMull, on another matter.)  In short, the Federal Circuit Court of Appeals found that the denial of registration under the Lanham Act’s prohibition of the registration of “disparaging” marks did not survive strict or intermediate scrutiny under First Amendment analysis.  I leave it to others to provide an analysis of the holding.

I’m more interested in something that appears on page 9 (page 107 of the PDF) of the dissent of Circuit Judge Reyna.  In it, Judge Reyna (who happens to have been a former president of the Hispanic National Bar Association) offers up the following as a permissive government regulation of disparaging speech:  a restaurant named “SPICS NOT WELCOME”.  Judge Reyna notes that Title VIII of the Civil Rights Act of 1964 bans advertising with a discriminatory preference and discusses how (the better known) Title VII bans harassing speech in the workplace.  He then writes that the government interest in avoiding disparagement, such as that with demographically discriminatory content, outweighs the burdens on speech.

With Judge Reyna in the dissent, something to consider is what would be the implications of a restaurant named “SPICS NOT WELCOME”.  Prof. Eugene Volokh has explored the conflict between First Amendment law and harassment law.  Judge Reyna’s example sets it up nicely.  Let’s assume an entrepreneur named a restaurant “Spics Not Welcome” and registered that trademark.  Let’s also assume that the restaurant does not actually discriminate against persons of Hispanic origin (for the hypothetical, let’s presume the restauranteur hates spices, but has a spelling problem and forgot the “e”).

Presumably, the name would dissuade both potential consumers and job applicants of Hispanic origin and would be deemed to violate the Civil Rights Act under present jurisprudence.  So, on the one hand, you can register and use a disparaging mark under the First Amendment, but on the other, it is prohibited as being discriminatory.  Which one stands?  And, even though the trademark matter was decided on constitutional grounds, that does not mean that the government interest analysis is the same.  Of course, it may be argued that it is the same analysis and down goes harassment law.

If not, can you have a registered trademark you are not allowed to use?  Does trademark law trump civil rights law or vice versa?  Since the Lanham Act predates the Civil Rights Act, perhaps the latter trumps.  I’ll have to look into instances where an offensive mark was deemed unlawful harassment and update this post.

Now, I don’t recommend naming a restaurant “Spics Not Welcome”.  But what if The Slants needs a new drummer–can a non-asian apply?  Would they feel harassed or precluded by the name?  It’ll be interesting to see how the law develops.

 

 

 

A Slanted View of Trademarks and Free Speech

by Jay Marshall Wolman

Free speech and the Lanham Act (the federal law dealing with trademarks) has been a hot topic of late.  There are two high profile matters in separate courts of appeals challenging the constitutionality of Section 2(a), which prohibits the registration of disparaging marks.

In the Federal Circuit is the matter In re: Tam, in which the band, The Slants, is challenging the refusal of the registration of the mark in its name.  Their brief can be found here.  Marc previously commented on that case here. (Disclaimer: Marc wrote a brief for the First Amendment Lawyers’ Association. That brief is here. You may also want to read Marc’s infamous “Fuck” brief here. The viewpoints expressed herein are my own and should not be construed as those of Marc Randazza, Randazza Legal Group, or the First Amendment Lawyers’ Association.)

And, in the Fourth Circuit, is the matter of Pro-Football, Inc. v. Blackhorse, in which the Washington Redskins are challenging the cancellation of their mark.  Their brief can be found here.

The Slants and the Redskins are both arguing, among other things, that the ban on registration of disparaging marks is an unconstitutional restriction of speech.  It is not a content-neutral regulation and they claim that the denial or cancellation burdens their commercial speech, when compared to others, since they cannot enforce the marks to the same extent.  They claim it is not government sanctioned speech, per se, simply by registering the mark.  The Redskins brief specifically  highlights other offensive (it believes) marks that have passed muster and no one believes that the registration=government speech.  It specifically distinguishes the Texas License Plate case, Walker v. Texas Division, Sons of Confederate Veterans, Inc.,135 S. Ct. 2239 (2015), noting that trademark registrations, unlike license plates, are not generally known to be vehicles for government speech.

Because these are pending before different circuits, it is well possible for there to be a circuit split that might ultimately warrant Supreme Court review.

Omitted from discussion, and worth noting, is that, in essence, trademarks actually limit free speech.  Prof. Lisa Ramsey argues as much here.  Conceptually, a trademark registration means that my right to speak your mark is limited.  Hypothetically, it means that in my sporting goods store that caters to British clients, I cannot probably label American baseballs as Yankee balls; it means that I cannot probably market a device that lets a Microsoft and Apple computer talk to each other as a “Surface to Air Missile”.  And descriptive marks are even more limiting–only Fox News is allowed to call itself “Fair and Balanced”.

When thinking about these together, the Slants and Redskins are arguing that their speech rights are being limited because they don’t have the same right to limit the speech of others as others might have.  Normally, the argument is that registration of the mark limits speech.  Here, they argue that denial of registration limits speech.  They may well be right in the end, but this is definitely one of those interesting competing rights cases.

And Then a Sensible Dinner

by Jay Marshall Wolman, CIPP/US

I was driving home from Philadelphia this past Sunday after a wedding, when I learned about the dietary habits of Attorney Rand Spear.

(Something like the Rand Corporation, only smarter.)

The story is nothing new. And, apparently, Mr. Spear holds a trademark in that phrase.  This serves as a reminder that phrases can be trademarked.

Other well-known phrases have been trademarked, e.g., Coke is it! (cancelled).  Some are completely random:  I love what you’ve done with the trash!

A phrase that is trademarked, like a logo, may also enjoy copyright protection.  And the misuse of a trademarked phrase could wind up subjecting a defendant to both copyright and trademark liability.  The defenses might not necessarily be identical and even if one count is thrown out, the other might survive.

For those wondering:  Lawyers may or may not be permitted under state ethics rules and the First Amendment to advertise their gustatory predilections, though the 2nd Circuit’s decision in Alexander v Cahill (cert. denied) is persuasive (Heavy Hitter attorneys prevailed).

It is unclear if Mr. Spear literally or figuratively eats insurances companies for breakfast or any other meal.  Personally, if my last name were “Spear”, I’d be using imagery invoking my name rather than my gut.  Something a bit more fun.

Forgetting, for a second, the outcome of that fight (spoiler alert!!) isn’t that a better lawyer vs insurer image?

Unbowed, Unbent, Unbroken.

Federal Circuit’s COCKSUCKER Decision Sucks

As many long-time readers know, Section 2(a) of the Trademark Act is one of my pet peeves. This is the section of the Trademark Act that gives pretty much unfettered discretion to a trademark examiner to deny a trademark registration on the basis that the mark itself is “immoral” or “scandalous.” The Federal Circuit just decided In Re Fox, in which it reaffirmed some very bad law, and in which it lacked the integrity to address some Constitutional fictions upon which most 2(a) denials are based.

“[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it[] (a) [c]onsists of or comprises immoral, deceptive, or scandalous matter.” 15 U.S.C. § 1052.

One of the most absurd elements of a 2(a) denial is that the evidentiary standard is so open to abuse. An examiner may prove “immorality” or “scandalousness” by simply establishing that the mark is “vulgar.” In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1340 (Fed. Cir. 2003). Essentially, if the examiner finds a single online dictionary or chat board where someone says “that’s vulgar,” then that is usually enough for the examiner, the TTAB, and the Federal Circuit.

So, another 2(a) denial is just a “ho hum” event. But, this portion of the opinion shows just how little respect the Federal Circuit has for Constitutional issues. I mean, come on guys, at least try and make it look like you didn’t just mail it in.

The prohibition on “immoral . . . or scandalous” trademarks was first codified in the 1905 revision of the trademark laws, see Act of Feb. 20, 1905, Pub. L. No. 58- 84, § 5(a), 33 Stat. 724, 725. This court and its predeces- sor have long assumed that the prohibition “is not an attempt to legislate morality, but, rather, a judgment by the Congress that [scandalous] marks not occupy the time, services, and use of funds of the federal government.” In re Mavety Media Grp. Ltd., 33 F.3d 1367, 1374 (Fed. Cir. 1994) (quotation marks omitted). Because a refusal to register a mark has no bearing on the applicant’s ability to use the mark, we have held that § 1052(a) does not implicate the First Amendment rights of trade- mark applicants. See id. (Op. at 2)

I find it outrageous not just because the court is wrong, but because the court was so glib and dismissive of the First Amendment.

Trademarks propose a commercial transaction; speech that proposes a commercial transaction is “commercial speech” and thus subject to First Amendment protection. Virginia State Bd. Of Pharmacy v. Virginia Citizens Consumer Council, 425 U.S. 748, 762 (1976). Trademarks convey messages about the type, cost and quality of the product or service associated with the mark. See Friedman v. Rogers, 440 U. S. 1, 11 (1979). The trademark is a tightly targeted bit of expressive activity that seeks to persuade a potential customer to choose one product over another, either due to the identification of goods or to the communicative element of the trademark itself.

Thus far, all USPTO decisions regarding the constitutionality of Section 2(A) rely upon the improperly decided case In re Robert L. McGinley, 660 F.2d 41 (Fed Cir. 1981).

McGinley is where we get the idea that since trademark applicants are still free to use the trademarks, then there is no abridgment of speech if your trademark is denied registration due to its content. However, this reasoning is simply shoddy and contrary to a body of First Amendment jurisprudence. For example, in striking down New York’s “Son of Sam” law, which prohibited criminals from profiting from writing books about their crimes, the Supreme Court held “[a] statute is presumptively inconsistent with the First Amendment if it imposes a financial burden on speakers because of the content of their speech.” Simon & Schuster v. New York State Crime Victims Bd., 502 U.S. 105, 115 (1991). In the Son of Sam case, the authors were still free to write, but were denied the financial benefits of their labors. That was the end of that law. This appears to completely dispense with the McGinley reasoning.

Bad Frog Brewery, Inc. v. New York States Liquor Authority, 134 F.3d 87 (2d Cir. 1998) analyzed a similar issue. In that case, the appellant sought to use a trademark of a frog giving the finger. 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. Not binding on the Fed. Cir., but I think that the Fed. Cir. is the wrong place to challenge McGinley. There is no indication that the Fed. Cir. will ever admit that it was wrong in McGinley, and every time it gets a chance, it doubles down.

Finally, there can be no clearer authority for the death of Section 2(a) than Lawrence v. Texas. (“The fact a State’s governing majority has traditionally viewed a particular practice as immoral is not a sufficient reason for upholding a law prohibiting the practice.”)

“Morality” is not a valid reason to confer or deny a governmental benefit – instead the government must articulate a reason why registration of a mark might be harmful, and then apply that reason to the particular circumstances at hand, in a narrow manner. The government has done none of this in this case, nor in any other 2(a) denial.

2(a) Delendum Est!

Sticking up for the big guy: United v. Untied.com

I got this story in my inbox — that United Airlines was trying to bully a website that is dedicated to complaining about United Airlines – Untied.com.

United Continental Holdings has sued a Canadian professor who maintains the 15-year-old complaint website Untied.com, which airs complaints from disgruntled United Airlines passengers and employees.

Two suits filed in Canadian courts allege the complaint site violates the airline’s copyright and trademarks. It also alleges the site violates the privacy of senior airline employees by posting contact information for those employees.

Reading that, I got all ready to write a post about what assholes United and its lawyers must be. Imagine my disappointment when I didn’t really get to do that.

The article continues:

United said it is not trying to prevent the site’s owner, Jeremy Cooperstock, from operating a website where people can express their views about United, but instead is trying to protect its intellectual property, such as its logo, and trying to alleviate confusion by United customers who might think they are filing a complaint with the airline on Untied.com.

“We are not requesting the website be shut down,” said United spokeswoman Megan McCarthy.

It was only after an April redesign of Cooperstock’s site, which made it look more like the new United.com, that the airline asked him to modify his site so customers would not be confused, she said, adding that the move was to protect customers and that the airline tried to resolve the matter without going to court.

It looks like United is not concerned about the content on the site, but how it is delivered. The site does look a lot like United’s. There are disclaimers everywhere, but I still don’t see United’s position being all that unreasonable. Yes, almost any idiot should be able to figure out that they are not really at United’s website. On the other hand, the fact that “untied” is a pretty common typo for “united,” coupled with the similarity in look-and-feel, makes United Airlines’ position a lot more reasonable.

If all they are asking is that the gripe site change some site design elements, this does not raise my hackles.

UPDATE: Since the site untied.com seems to have been taken down, here is a side-by-side comparison of the Untied.com and United.com websites.

Some out there, who don’t really understand trademark law, seem to believe that disclaimers on the Untied.com site mean that nobody would be confused by the mock United site. Others say that only a “moron in a hurry” could be confused by the two. I think that such opinions are ill-informed, and the product of the same instincts that I have — a knee-jerk reaction to start off on the side of the little guy against the big corporation; to immediately (without analysis) think that any attack on a critic’s site is an attack on free speech.

I look at these kinds of cases with a rebuttable presumption that the big bad corporation is the bad guy. That presumption, in this case, seems to be rebutted.

The first rebuttal comes from the information that United let the site go for 15 years, and only complained when the gripe site changed its site design. Historical screen captures show that the site didn’t used to look like that.

The second rebuttal comes from this: “Cooperstock offered to work for United as a paid consultant advising the airline on how to improve customer service. United declined.” If that is true, it is not entirely dispositive. Nevertheless, it does skew the optics of the situation a little. I would be interested to see Cooperstock’s response to that.

The third one comes from Canadian trademark law. Cooperstock is Canadian, and the case was filed in Canada. Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22, [2006] 1 SCR 772 gives us some instruction. In that case, the Canadian Supreme Court held that a court should measure the “likelihood of a mistaken inference” from the perspective of the “ordinary hurried purchaser.” The court considered the “ordinary hurried purchaser” to lie somewhere between the “moron in a hurry,” and the “careful and diligent purchaser.” The court relied upon Delisle Foods Ltd. v. Anna Beth Holdings Ltd. reflex, (1992), 45 C.P.R. (3d) 535 (T.M.O.B.), whic stated at pp. 538-39:

When assessing the issue of confusion, the trade marks at issue must be considered from the point of view of the average hurried consumer having an imperfect recollection of the opponent’s mark who might encounter the trade mark of the applicant in association with the applicant’s wares in the market-place.

As Cattanach J. explained in Canadian Schenley Distilleries, at p. 5:

That does not mean a rash, careless or unobservant purchaser on the one hand, nor on the other does it mean a person of higher education, one possessed of expert qualifications. It is the probability of the average person endowed with average intelligence acting with ordinary caution being deceived that is the criterion and to measure that probability of confusion the Registrar of Trade Marks or the Judge must assess the normal attitudes and reactions of such persons.

When we consider the issue of “initial interest confusion,” I think that Mr. Cooperstock has some problems. In fact, it seems to be a testament to United’s patience that they did not go after the Untied.com domain name a long time ago.

When looking at this, it is important to understand that there are two types of people who will be dissuaded from doing business with United: The first group are people who read the message on Untied.com, which boils down to “United sucks.” If Cooperstock convinces you of that fact, then that is the marketplace of ideas in action. That is Mr. Cooperstock providing a valuable service, and properly exercising his right to free expression.

On the other hand, there is a second group — a group that comes to the website through mistake, who lingers just a little bit, and by the numbers, a portion of them move on to other websites.

You see, the issue of consumer confusion is not resolved with the simpleton analysis of “nobody would buy a plane ticket from untied.com.” The issue is that more than a few consumers will type “untied” instead of “united” every day — just through the likelihood of that common typographical error occurring. If you are an “ordinary hurried purchaser,” you may get to that site, even with a popup disclaimer, and spend a few minutes there before you realize that you are not, in fact, at United.com.

What do you do then?

Most people would then do what they could to find the right website. But, it wouldn’t take a genius to realize that a certain percentage of people, who might otherwise have bought a ticket, will put it off, or not buy at all, just because the impulse passes. Another percentage may have sought out United.com, just for information, who then lose interest. Remember, a business’ website is not merely a place to purchase tickets. It is a valuable segment in its branding strategy. The pop-up and disclaimers are of little value, given that the average consumer isn’t likely to read the pop up or the disclaimers. When it comes to initial interest confusion on the Internet, even a few seconds’ long detour will cause some harm to the mark owner.

The fact is, a certain number of United’s consumers suffer inconvenience due to the site, and independent of the message on the site, they are driven away from doing business with the airline.

Were I judging this case, I’d say that Cooperstock has every right to say every last thing he says on his website. But, I think his choice of domain, and his attempt to make the site look and feel like United.com, both crossed the line. I think it went even further if United asked him, pre-suit, to simply make some design changes, and he refused. It goes over the cliff if United’s claim that Cooperstock offered to provide his “customer relations services” for a fee.

Sorry guys, I love the little guy as much as anyone else. I never fly United either, mostly because their website is a nightmare to navigate, and I haven’t thought too highly of their customer service either. But, sometimes the little guy is out of bounds.

Wanna own the Righthaven trademark?

By J. DeVoy

Hey, you! Give your failed life some meaning by purchasing Righthaven’s registered servicemark!  Available now on eBay!

OWN RIGHTHAVEN’S  “COMMERCIAL GOODWILL” LOLOLOLOLZ!

From the “I’m So Clever” File

Federal Judge Slaps Back Dino M. Zaffina in Darts Trademark Battle – Los Angeles News – The Informer

Odd story.  Basically, some dart fan joins the Southern California Darts Association.  They snub him by not using his middle initial, unlike, say, the SAG forcing Michael Fox and Jim Bullock to add middle initials.  So, he finds out that there is no corporation with that name (as the former corporate entity lapsed).  He registers a corporation with that name and tries to stop the association from using that name.  After some surprising initial success, he met with a big ole Fail.

Not sure why he met with initial success (and no, I’m not making a pun regarding the snub), since this is a pretty straight forward issue.  These folks were using the name.  You can’t bounce them out simply by incorporating with that name.  That would be like discovering that “The Beatles” never formed a corporate entity, so you register “The Beatles, Inc.” and try to keep Sir Paul and Ringo from making appearances together as a “Beatles Reunion”.  Prior use, for the win.

Bieber Bang Bus Presents

Navajo Nation Sues Urban Outfitters for Trademark Infringement

Last week, the Navajo nation sued Urban Outfitters for trademark infringement, trademark dilution, unfair competition, and a violation of the Indian Arts and Crafts Act for selling products branded as “Navajo” at its stores. The products? “Hipster Panties,” socks, and of all things, a flask. Yes, a flask. Complaint here.

The incredible un-coolness of that just stuns me. Urban Outfitters should know better than to use a Native American tribe’s name on its products without permission. But, to not only misappropriate the Navajo nation’s name, but to put it on a flask? Really? Really?

I’m certainly not the most politically correct guy, and I won’t be winning any sensitivity awards this year. But, you don’t need to be an anthropologist to have a clue about what a toll alcoholism has had on the Native American population. Urban Outfitters are a bunch of dicks. I hope the Navajos kick their ass.

Judge rules court has no personal jurisdiction over Faceporn.com

U.S. District Court Judge Nathanael Cousins recently denied Facebook’s motion for default judgment against Faceporn.com, a website operating out of Norway, for trademark infringement. Judge Cousins said the court lacked personal jurisdiction over the defendants and recommended that the case be dismissed.

Facebook originally brought suit against Thomas Pedersen and Retro Invent citing ten causes of action, including trademark dilution, violating the Facebook mark and wall mark, among others. The court concluded that Facebook failed to show that the defendants had purposefully directed their activities at California, pursuant to the three-pronged Calder test. In order to show that a defendant expressly aimed the intentional conduct at a forum state, the Ninth Circuit requires that the plaintiff show “something more.” The court determined that Facebook failed to show “something more” because “they did not establish that “Faceporn’s users in California were an integral component of Faceporn’s business model and profitability.”

Instead, Facebook attempted to argue that jurisdiction was proper because the defendants intended to target Facebook by “offering a pornographic version.” Facebook further claimed that the plaintiff can establish that nonresident defendant aimed its conduct at the forum by showing that the defendant illegally copied elements of a plaintiff’s mark for the purpose of competing with the plaintiff.

The court reasoned that this argument failed because Facebook and Faceporn are not in direct competition with each other, and therefore Facebook could not prove that the defendants’ conduct was directed at California. Additionally, the court said that Facebook failed to show how Faceporn “garnered revenue from their operation of Faceporn at Facebook’s expense or that Faceporn has diverted any of Facebook’s potential customers.”

Had Faceporn more directly targeted Facebook’s audience, Facebook might have been able to establish personal jurisdiction. But Judge Cousins correctly assessed that the audience for pornography is much more narrow than the audience for a general social networking site.

Read the full order below.

Facebook v. Pedersen

Don’t you “Krave” an interesting cybersquatting case?

By J. DeVoy

Vegas Inc., which provides excellent coverage of Las Vegas’ legal developments (such as its remarkable dedication to the Righthaven saga), reports on a lawsuit filed by the operator of Piranha Night Club and 8 1/2 Ultra Lounge against Krave over the domain name <piranhalv.com>.  Historical note: from 2004 to 2008, Krave was home to the theatrical adaptation of John Stagliano’s / Evil Angel Video’s Fashionistas.

The Complaint is available here.  It alleges a fairly common cybersquatting claim: The <piranhalv.com> domain name was registered by Krave’s operators and its agents in derogation of Piranha’s trademark rights, as it was supposedly done to mislead and confuse the consuming public.  The Complaint also alleges trademark infringement under 15 U.S.C. § 1125(a) and at common law; it goes on to seek an injunction, and a declaration that the Piranha Night Club’s operator is the proper owner of the domain name.

In the Complaint’s other causes of action, though, it invokes some claims one doesn’t always (or even often) see in trademark matters: Unfair, Deceptive and Fraudulent Business Practices under NRS 598A; Intentional Interference with Prospective Economic Advantage; Tortious Interference with Contractual Relations, and; Piercing the Corporate Veil under NRS 74.787 (since the domain name registrant is a party other than Krave’s owners/operators).

The case is Manhattan West LLC v. Century Partners Ltd. et al., 2:11-cv-01898 in the District of Nevada, and may be worth a PACER notification for those interested in trademark and domain name disputes.

Christian Louboutin Shoes and “Aesthetic Functionality”

Christian Louboutin tried to distinguish its shoes from others by giving them a shiny red lacquered sole. The company takes the position that the red sole functions as a trademark — that it helps consumers know the source or origin of the shoes.

In general, colors can be trademarks. See Qualitex v. Jacobson Products, 514 U.S. 159 (1995). Think of the Owens Corning fiberglass insulation’s iconic pink color, or the blue Tiffany boxes. Those colors are protected as trademarks, and no competitors may use them without running afoul of the Lanham Act.

However, trademarks are about promoting competition – not stifling it. Therefore, if something is “functional,” then it can not be the subject of trademark protection.

“The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. §§ 154 173, after which competitors are free to use the innovation. If a product’s functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).”

Under the doctrine of “aesthetic functionality,” something can be solely aesthetic, but it would be anti-competitive to permit one company to monopolize the feature. For example, in Brunswick Corp v. British Seagull, Ltd., 35 F.3d 1527 (Fed. Cir. 1994), the Federal Circuit considered the case of Mercury outboard engines. Mercury sought trademark protection for its black engines, but the Federal Circuit upheld the TTAB’s decision that black was “dejure functional because of competitive need.” The Court compared the black engines to Owens-Corning’s pink fiberglass. While the pink in the fiberglass serves no real purpose except to tell you who made the stuff, a black engine will appear smaller than other colored engines (black is slimming, after all) and black goes with a greater variety of hull colors. Therefore, trademark protection for pink fiberglass is ok, but every engine manufacturer has a right to make black engines.

So how does this apply to the Christian Louboutin Shoes?

Manhattan federal judge Victor Marrero found that the red was aesthetically functional. Christian Louboutin S.A. v. Yves St. Laurent Am., Inc., 778 F. Supp. 2d 445 (S.D.N.Y. 2011).

Christian Louboutin himself has acknowledged significant, nontrademark functions for choosing red for his outsoles… he stated that he chose the color to give his shoe styles “energy” and because it is “engaging.” He has also said that red is “sexy” and “attracts men to the women who wear my shoes.” … The outsole of a shoe is, almost literally, a pedestrian thing. Yet, coated in a bright and unexpected color, the outsole becomes decorative, an object of beauty. To attract, to reference, to stand out, to blend in, to beautify, to endow with sex appeal — all comprise nontrademark functions of color in fashion.

The red outsole also affects the cost of the shoe, although perhaps not in the way Qualitex envisioned. Arguably, adding the red lacquered finish to a plain raw leather sole is more expensive, not less, than producing shoes otherwise identical but without that extra ornamental finish. Yet, for high fashion designers such as Louboutin and YSL, the higher cost of production is desirable because it makes the final creation that much more exclusive, and costly.

Because the use of red outsoles serves nontrademark functions other than as a source identifier, and affects the cost and quality of the shoe, the Court must examine whether granting trademark rights for Louboutin’s use of the color red as a brand would “significantly hinder competition,” that is, “permit one competitor (or a group) to interfere with legitimate (nontrademark-related) competition through actual or potential exclusive use of an important product ingredient.”

The court found that it would hinder competition.

Fashion is dependent on colors. It is subject to temporal change. It is susceptible to taste, to idiosyncrasies and whims and moods, both of designers and consumers. Thus, at any moment when the market and the deities of design, by whatever fancy they decide those things, proclaim that “passion” is in for a given season and must be expressed in reds in the year’s various collections, Louboutin’s claim would cast a red cloud over the whole industry, cramping what other designers could do, while allowing Louboutin to paint with a full palette. [*455] Louboutin would thus be able to market a total outfit in his red, while other designers would not. And this impediment would apply not just with respect to Louboutin’s registered “the color red,” but, on its theory as pressed in this litigation, to a broader band of various other shades of red which would be available to Louboutin but which it could bar others from using.

Louboutin has now filed an appeal with the Second Circuit. See Christian Louboutin wants his red soles back. If I’m the bookie for this case, I’d give 20:1 odds that he loses. First of all, he’s appealing the denial of a preliminary injunction. That requires him to show that the lower court abused its discretion when issuing the denial. Second, the record seems quite clear that giving a fashion designer a monopoly over one color in a design would be as anticompetitive as letting one boat manufacturer have a monopoly on black engines.

Hey Lacoste: I hear Hollister is inexpensive

By J. DeVoy

I previously wrote about protecting your brand and crapping all over a competitor’s by giving a rival’s products to infamous celebrities and public figures, thus lowering its social cachet.

Ignoring this sage advice, Lacoste has asked police in Norway to keep mass murderer Anders Brievik from wearing its clothes.  Lacoste’s desire to end this potential association is understandable.  But since Hollister’s clothes advertise themselves by spelling out the logo in large, chunky letters (a classic low-class tell from Paul Fussell’s Class) it would be remarkably easy for Lacoste to spend a few hundred dollars on clothes from that provider and its ilk in order to irreparably damage them, rather than draw attention to its fierce protection of the iconic crocodile.