With .xxx imminent, people finally notice it

September 8, 2011

By J. DeVoy

At Likelihood of Confusion, guest blogger Matthew David Brozik provides an overview of the .xxx roll-out, which is happening in phases beginning now.  For those unfamiliar with the domain name, there are two types of initial availability: Sunrise A, where existing adult companies can get .xxx domains to correspond with their .com domains, and Sunrise B, where non-adult companies can permanently de-reigster their hypothetical .xxx domain names (e.g., ToysRUs.xxx), and ensure they will never exist.  After that, there will be a “landrush” period for adult companies to get new .xxx domains to develop new brands and services, and then a perpetual period of general availability so that adult companies can get new domain names on a first-come, first-serve basis; trademarks outside of adult can also be de-registered during this time.  To understand the importance of this open registration period, bear in mind that 10 years ago the acronym CFNM was meaningless, whereas now it’s a popular porn genre, and “twitter” was similarly a nearly meaningless (and antiquated) intransitive verb. Or noun. Anyway…

Some groups, such as the Free Speech Coalition, are against the .xxx sTLD.  Others are agnostic, or open-minded regarding the extension.  Informal research reveals that many companies are indeed buying the domains, optimistic that they will generate more traffic and search engine recognition, and at a minimum protect the brands they have created.  Still, others eschew it.

Some non-adult entities are embracing .xxx to make a splash for themselves.  PETA, for example, is getting a .xxx domain name.  But, this likely is more of a publicity stunt than a lasting foray into adult.  After all, this is the same PETA that had some sycophant legally change his name to KentuckyFriedCruelty.com.

Brozik’s post is informative, but I do have one bone to pick with it.  Brozik contends:

So we’re almost certainly not going to see lawsuits over the likes of pepsi.xxx, kleenex.xxx, or xerox.xxx.

Don’t be so sure.  Perhaps there won’t be disputes over those domains and peer brands, but there is an interesting question brewing as to whether paying for de-registration of a .xxx domain name is essential to keeping it from being registered.  Within the adult space, Manwin Licensing International – owner of many prominent brands and valuable domain names, including Brazzers.com and YouPorn.com – has demanded that the .xxx registry’s operators prevent “exploitation” of those domains (or those that are confusingly similar) even without paid de-registration, or turn them over to Manwin, free of charge.  Making matters more interesting, the .xxx registry has preemptively de-registered domain names that constitute famous names, for both celebrities and politicians.  This step was apparently taken free of charge.  There may not be lawsuits brought by Pepsi and Xerox against cyber-squatters, but there may be more attempts by owners of established brands to get something for nothing.

If the .xxx registry’s operators commit trademark infringement for failure to provide de-registration where no registration has yet occurred, it would be a novel theory of liability.  Can one be liable for potential infringements that have not yet occurred?  If nobody registers the domain names, there seems to be a problem of standing, (and a lack of imminent harm, if the registry’s procedures prevent the domain names from being registered).  Other countries, however, may have different standing requirements.  Also, some infringement of the trademarks has to occur (or be sufficiently imminent for standing to exist) for there to be a cause of action for infringement.  Ron Coleman’s interest in secondary trademark infringement notwithstanding, infringement has to occur for primary or secondary liability to attach – just as with copyright infringement.

Given the novelty of the .xxx space and the brands at stake, it is unlikely that this issue is dead, or that it will be for some time to come.

Devaluing your competitor’s brand

May 15, 2011

By J. DeVoy

Trademark law provides brand holders protection from competitors or third parties infringing upon, diluting or tarnishing their business marks, but what happens when the damage comes from the actual market for the brand and the people who consume it?  Every brand has negative connotations; Chevrolet is associated with poor quality and a dysfunctional company that couldn’t exist but for massive government bailouts, Brooks Brothers is perceived to be for old, boring white people, and Ed Hardy is accused to cater to obnoxious douchebags.

Using market forces, these associations can be used to attack and devalue a competitor’s brand without necessarily running afoul of trademark law.  Legally, there is a concept of “tarnishment” within trademark law, which makes it unlawful for a party to cast a trademark in an unflattering light – normally by associating the trademark with unflattering, inferior or unseemly products or services. One example of this is Toys “R” Us v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836 (N.D. Cal. Oct. 29, 1996), where the Northern District of California held that the defendant’s use of “Adults ‘R’ Us” as an adult website tarnished Toys “R” Us’ trademark by associating it with adult materials inconsistent with the Toys “R” Us brand.  But plenty of harm can be done without direct use of a competitor’s trademark.  Imagine the fallout if Charles Manson were spotted in a Nike tracksuit, or if the Unabomber talked about how cool and refreshing bottled Perrier was when he was living in a woodland shanty.  That kind of damage does not seem to be considered within the ambit of title 15 of the U.S. Code, which governs trademarks.

One recent example involves Snooki, the Jersey Shore cast member who has been arrested, punched in the face, fought with her housemates, and has cried on television more times than I can bother to count.  About a year ago, she stopped toting Coach handbags, largely in favor of Gucci and other purses – because Coach allegedly started sending Snooki the handbags of competitors. (Source.)  Following the adage that your enemy’s enemy is your friend, someone with such a toxic media persona is the enemy of everyone, and can be used to inflict harm upon competitors by associating them – even unwittingly – with competing brands.

The legal academy has also noted and commented on this trend.  Professor Jeremy N. Sheff’s forthcoming article in the Fordham Intellectual Property, Media & Entertainment Law Journal, “The Ethics of Unbranding,” addresses this very issue.  In addition to weighing which ethical system is most appropriate for assessing the ethics of using sabotage to disassociate one’s brand with a controversial figure (e.g., Snooki, Lindsay Lohan) and associate another’s brand with that individual, Sheff offers analysis of this conduct under several ethical systems.  The conclusion: While the practice may be questionable depending on one’s perspective, it is not clearly unethical.

Beyond the scope of federal trademark law, there is the specter of state-promulgated unfair competition statutes.  Even then, though, this kind of conduct should not be problematic.  After all, the brands are not deceiving the public through false claims or unsupportable promises: Brand owners are simply providing a prominent individual with products – though not necessarily their own – that the target can use, or choose not to use, in public.  While there is a calculated effect in this tactic, namely making the competitor’s brand look trashy or too widely accessible to truly be a luxury good, it is ultimately the individual who does the damage by incident of his or her status as a trend-setter, rather than the brand owner engaging in this action and feeding a prominent person a competitor’s goods.

This conduct has some historical precedent.  Substantively, it is no different from Ed Bernays paying attractive young women to walk the streets of Manhattan while smoking in order to implant the idea of women smoking into people’s heads – something unthinkable when Bernays did this in the 1920’s and 1930’s. (Source.)  This worked, in part, to break people’s prior conceptions about women and smoking, and worked to open the tobacco market to women, doubling the potential universe of customers.

Similarly, if I’m a black hat public relations manager for Land Rover, two of my main objectives will be to 1) maintain Land Rover as a luxury brand, and 2) make the competition appear non-elite.  Thus, if someone who will diminish my product’s cachet is using it – and especially if they are using it in a particularly derogatory way, such as driving a 15-year-old Range Rover simply to claim they have one  – it’s my job to shift the blame to someone else.  For example, if Amber from MTV’s Teen Mom, who is awaiting trial for beating her ex-fiance in front of their daughter and on national television, started driving a Land Rover, I’d give her a free Escalade to defuse the potential negative connotations.  Or even if she wasn’t driving a Land Rover, the attention surrounding her and her trial in various magazines and tabloids would justify giving her an Escalade just to take Cadillac down a notch. (A Porsche Cayenne would be too obvious.)  As it’s her choice to drive the Cadillac, the damage done to GM’s luxury brand would be at her hands – even if facilitated by a competitor.

State-by-state analysis of unfair competition laws would be important before running into such a plan at full sprint, but there’s nothing intrinsically unfair or dishonest about giving someone the opportunity to devalue a brand – even if unwittingly.  Moreover, there are no readily apparent problems within the realm of trademark law so long as its the controversial spokesperson’s agency – as opposed to the competitor’s manipulation – that causes the damaging brand association to be made.

H/T: The Last Psychiatrist.

9th Circuit: Consumer Sophistication is an important determinant for AdWord bidding cases

March 10, 2011

by Jason Fischer

For some time now, it has been a legal gray area whether bidding on a competitor’s trademarks as Google AdWords constituted infringement.  Google has taken a neutral stance on the matter, only removing ads that actually make use of the mark in ad copy and directing unhappy trademark owners to take their dispute to a court of law for resolution.  Finally, some of these cases are bubbling up through the federal court system and providing some precedent and guidance.

The latest such decision comes out of the 9th Circuit and involves two software developers who sell licenses to high-end task management applications for businesses.  Software Company A decided that it would be a good marketing strategy to bid on Software Company B’s trademark as an AdWord with Google and Bing, providing a “Sponsored Link” to Company A’s product for users who entered the trademark as a search term.  Obviously, Company B was none too happy about the practice and sued Company A claiming trademark infringement and successfully obtained a preliminary injunction.

On appeal, Company A argued that presenting a “Sponsored Link” for its product to potential purchasers who searched for Company B’s product name would not cause any consumer confusion.  As you can imagine, a link to Company B’s product would appear in the very same search results, alongside the link to Company A’s product, but Company A contended that potential purchasers were savvy enough that no one would be confused or tricked into thinking that Company A’s product was sold by Company B, or vice versa.

In agreeing with Company A’s position, the appeals court noted that licenses for the software at issue were sold for up to $10,000 and more — indicating that the searching parties were more likely to be careful in their purchasing decision, doing research which would eliminate or significantly reduce the likelihood of confusion.  The court also noted that the type of purchasers for these software products are more likely to be expert users of the Internet, who understand how keyword marketing works with search engines, which would also reduce the likelihood of confusion.

You can read the Judge Wardlaw’s full opinion here, if you’re interested in a more thorough discussion.

This decision, in IMHO, serves as a helpful reminder that there are more than a few factors that attorneys either ignore or tend to dismiss in determining likelihood of confusion, and as a result end up trying to enforce their clients’ marks beyond the rights actually afforded.  Comparative advertising is not only legal in the U.S., but preferred, and use of your competitors trademark is not always an actionable event.

The hazards of citing to Wikipedia

January 5, 2011

By J. DeVoy

This should be obvious, but the TTAB has commented on the matter in a surprisingly important case.  The Trademark Trial and Appeal Board’s decision in General Motors LLC v. Sweeney, gave GM a dangerous warning that the Corvette brand is not to be taken for granted.  GM’s counsel submitted a sparse evidentiary record in opposing the registration of Sweeney’s proposed mark, Corvoltte, under International Class 12 (for “electric vehicles, namely, automobiles”).  One of those sources, comprising a non-trivial percentage of the evidentiary record, was the Wikipedia entry for Corvette – presumably the Chevrolet Corvette, as there is more than one.

As the colloquialism goes – and the TTAB concurs – talk is cheap:

There is no evidence of sales, advertising or the extent of the mark’s renown. To the extent that opposer has relied on the Wikipedia evidence to establish the fame of the CORVETTE mark, an Internet entry is admissible for the limited purpose of demonstrating what has been printed, not for the truth of what has been printed. […] Suffice it to say, opposer’s evidence falls far short of establishing the fame or renown of its CORVETTE mark. (p 4.)

The TTAB cites Safer Incorporated v. OMS Investments Incorporated, 94 USPQ2d 1031, 1040 (TTAB 2010) for the proposition that such entries are admissible to show only what is written, and not the statements’ veracity.  That case is not the first time the TTAB has considered Wikipedia and wiki-type sites cited as evidence, though.  In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032 (TTAB 2007) cut to the heart of the matter, as the TTAB wrote “There are inherent problems regarding the reliability of Wikipedia entries because Wikipedia is a collaborative website that permits anyone to edit the entries” in its opinion.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1475-76 (TTAB 1999)  also dealt with these issues, questioning the weight to give internet sources of unknown origin.  Good news, though: Unlike the Corvette decision, these are all citable precedent.

Citations to Wikipedia are not outright inadmissible.  In In re Bayer Aktiengesellschaft, the Federal Circuit held that articles accessed on the Internet are admissible as evidence available to the general public, but must be carefully evaluated because of reliability concerns. 488 F.3d 960 (Fed. Cir. 2007).  Similarly, the Southern District of New York has provided some guidance in how to approach Wikipedia articles used as evidence.  Because of the adversary system inherent in legal disputed, the information in a Wikipedia entry “is not so inherently unreliable” to make it inadmissible per se. Alfa Corp. v. OAO Alfa Bank, 475 F. Supp. 2d 357, 362 (S.D.N.Y. 2007).

The federal judiciary isn’t as curmudgeonly as a sociology professor insisting that you can never cite to wikipedia as authority.  Generally speaking, you shouldn’t.  User-generated sources can be very helpful, though, in showing common understandings and uses of words, terms and other phrases, which are particularly important in trademark disputes.  To that extent, it’s a net positive that Wikipedia entries aren’t inadmissible.  But, given the ease of subterfuge, it should be an evidentiary last resort.

As for the beloved Corvette, the TTAB found a likelihood of confusion under Section 2(d), and the applicant’s mark was denied registration (to nobody’s great surprise).  The DuPont factors ultimately weighed in Corvette’s favor, as the goods, channels of trade, targeted purchasers and marks themselves were virtually – if not actually – identical. See In re E. I. du Pont De Nemours & Co., 177 USPQ at 567 (CCPA 1973).  A brand of less renown, however, may not have fared as well as GM’s historically relevant Corvette if faced with a similar challenge – especially if relying on Wikipedia as evidence.

H/T: TTAB Blog

Abercrombie & Fitch brings guns to bear on cybersquatters

December 14, 2010

Lets say you go to the website “abercrombieandfitchstore.com.” What would you expect to find there? Probably not what you see below.

That’s cybersquatting, and it is illegal.

Abercrombie & Fitch have had enough, and they’ve brought suit against the as yet unidentified owners of more than 150 infringing domain names. Most of them are Pay Per Click sites, and it is pretty clear that the plaintiff should prevail.

As many readers might know, when a plaintiff takes aim at a cybersquatter, there are two avenues of attack — bring suit in federal court (which is generally more expensive) or file a nice, quick, and cheap UDRP complaint. In this case, Abercrombie opted for the former, but this seems to be a tactically (and financially) sound decision. Under the UDRP, you need to pay filing fees according to how many domain names you are going after, and the complaint can only be against a single cybersquatter. In this case, there may be dozens of defendants. Even if there happened to be only a single defendant, the UDRP filing fees would likely be in the range of $20,000, given the sheer number of domain names.

Despite the fact that most of the domain names are clearly infringing, there are some puzzling additions. In addition to the clearly infringing “bercrombie.com,” and “wwwhollister.com,” the complaint says that “ant.com,” “asnf.com,” “hcos.org,” and “fierce.org” are also in violation of Abercrombie’s famous trademarks. I’m just not seeing the infringement there. While some go to pay per click pages (yuck) and others are dead links, ant.com seems to be a search engine.

Which makes you wonder, why would such great attorneys make such a seeming blunder?

I suspect that Abercrombie’s lawyers know that these non-infringing domain names are owned by the same people who own some of the clearly infringing domains. Cybersquatters usually default in these cases, leaving the plaintiff with little financial satisfaction for all of its trouble. Ant.com is worth somewhere in the neighborhood of $300,000 or more. With that kind of domain at stake, someone is certain to come forward rather than risk losing that kind of online property in a default.

I have mixed feelings about that kind of tactic. On one hand, I have serious misgivings about a clearly non-infringing domain name being added into a complaint.

Abercrombie & Fitch was going about its business, selling clothes modeled by white people and beloved by Asians. Then, some unscrupulous cybersquatters started infringing on A&F’s intellectual property rights. A&F then had to hire expensive lawyers to clean up the problem. I believe that the cybersquatters should, at least, pay A&F’s attorneys fees. But, if they are hiding and simply default, then A&F will be out a serious chunk of money, while the wrongdoers run off scot free, with their pay per click fees in their pockets. If A&F is trying hold something hostage in order to smoke them out, I respect that tactical decision.

Ultimately, if the cybersquatters do default and they don’t pay the judgment, then A&F can likely foreclose on their entire domain portfolio. If the only thing of value in that portfolio is ant.com or some other non-infringing domain names, then A&F may have done well to at least lock the domain name down while the litigation is pending.

H/T: Mike Atkins

Bias alert: I am proud to say that the lawyers for A&F are friends of mine.

Jenzabar tries to suppress critical website through bogus trademark claim – fails

December 14, 2010

Public Citizen reports:

In a ruling this week, a Massachusetts trial judge upheld the free speech rights of a documentary filmmaking company against an effort by a Massachusetts software company to use trademark litigation to punish the filmmakers for the portrayal of one of the student leaders in the Tiananmen square protests. (source)

Sadly, this kind of thing happens all the time – companies (and individuals) frequently try to use trademark infringement to try and suppress what they perceive as negative attention.

Massachusetts Superior Court Judge John Cratsley granted summary judgment to the defendants because there was no support for the claim that a reasonable person might be confused as to whether Jenzabar sponsored the documentary filmmaker’s website. Decision here (courtesy of Public Citizen).

What is truly ironic about this case is that one of the chief perpetrators of the suit was Ling Chai, one of the student leaders at the Tiannanmen Square protests. After seeing this attempt to suppress free speech crushed, Chai shot over to Norway to attend the Nobel Peace prize ceremony, where fellow Tiannanmen Square leader Liu Xiaobo is being honored in absentia. Shame on Chai and Jenzabar.

H/T: The Great Ron

Lamebook, We Support You!

November 12, 2010

by Jason Fischer

lamebookI know this story is already a couple of days old, but we think it’s still worth reporting on.  For anyone who doesn’t know what’s going on, Facebook has been on a tear recently trying to flex its trademark muscles, suing and threatening to sue pretty much anyone who uses the word “book” in their name.  Well Lamebook, a site dedicated to poking fun at the oft times unintentional hilarity that appears on Facebook, has decided that its not going to be bullied.  On November 4, after receiving threats of litigation from the social networking giant, Lamebook filed a declaratory judgement action in Texas, asserting the collective First Amendment rights of its creators and users… and for that, we thank you (and donated a few bucks to your legal fund).

Keep fighting the good fight, Lamebook, so you can continue to remind us how funny ignorance can be.


The TARDIS Trademark

August 22, 2010

The drawing from the TARDIS trademark file

This might be old news, but I can’t resist an interesting case about Trademarks – when the TARDIS is involved, I’m hooked.

In 1996, the BBC applied to register the TARDIS as a trademark with the UK Intellectual Property Office. (source) The London Metropolitan Police District (LMPD) opposed the registration on the grounds that they owned the mark and despite giving their consent to the BBC to use the iconic Police Phone Box as the TARDIS, they did not give any further permission. (source). The LMPD took the position that if the BBC was granted the mark, it would confuse and deceive the public into thinking that the MPD endorsed the products and services.

The UK IPO held that the police did not own a mark to the iconic phone box, but if they did, it would only be in the narrow category of law enforcement services – not time travel.* Furthermore, since the LMPD was not the only police force to use the Phone Box, it was not something to which the LMPD could claim exclusive rights. Accordingly, the BBC prevailed. (Decision)

*The BBC didn’t actually apply for the mark for time travel. It was for entertainment services and assorted schwag and merchandise associated with the Dr. Who TV show.

The New Dave Thomas

August 20, 2010


H/T The Kone

Rapidshare Cries about Intellectual Property Rights

July 28, 2010

Now this is sorta funny. Rapidshare whining about someone violating its intellectual property rights. See RapidShare AG , Christian Schmid v. N/A Maxim Tvortsov WIPO Case No. D2010-0696 (June 22, 2010). Rapidshare lost. When you lose a trademark infringement case to an unrepresented Russian who doesn’t even respond to the complaint, that’s a sign that you have shit-ass karma or shit-ass lawyers.

H/T: Defend My Domain Blog

Attention Trademark Professors: I Found Next Year’s Trademark Exam Question

May 19, 2010

You’re welcome in advance.

Williams-Sonoma Brownie Pan

Delicious Hershey Bar

NFL Harshes on 420 Football League’s Trademark Mellow

May 13, 2010

Do you need to be high in order to be confused?

The 420 Football League is an interesting concept. A bunch of stoners got together and made a sport out of smoking dope. You snap the ball by taking a toke, and you advance the ball one yard for each second that you can hold the hit. (source)

The NFL is not amused, and they sent a cease and desist letter to the 420 League. I’d say that the NFL probably has a decent dilution argument. On the other hand, the 420 league has a good parody defense. Of course, it would be a lot cheaper and easier to just change the logo.

H/T: Wimberly

Same old story

May 11, 2010

Sleazy company hires scumbag attorney to file SLAPP suit. Moron judge gives an unconstitutional injunction.

Okay, not the entire same old story… because Public Citizen jumped in and did a Chuck Norris roundhouse kick to the sleaze and the scumbag.

Marijuana Legalization and Intellectual Property

April 22, 2010

Reuters reports on the initiative to legalize marijuana in California. (source) The story claims that a lot of people in heavy growing areas are unsure of whether they want the initiative to pass, since it may mean that big business will move into the weed industry, and local workers who make their money off of pot will be unemployed.

That is because legalizing marijuana could turn a cottage industry into Pot Inc. Locals fear big tobacco will swoop in and drive down prices, supplying millions of new, legal pot smokers with “Marlboro Green.”

And with that discussion we add in the obligatory ignorance-of-intellectual-property-concepts-quote.

Rumors abound in Arcata that the tobacco giants have already snatched up land and copyrights to the most popular names of weed strains, whether Purple Kush, Big Bud, Headband, Trainwreck or L.A. Confidential.

For starters, can you find the most obvious screw up in that sentence? “Copyrights.” What the writer is talking about are “trademarks.” Copyright protects your right to your original creations of creative work. Trademarks protect brand names.

As trademarks are a natural symptom of commerce, it would be likely that marijuana will eventually have brand names. Heroin does in New York City. (source) And, of course, when you have commerce you also have scam artists. Now that you can file for a trademark registration online, trademark squatting is all the rage. For example, some joker filed an intent-to-use application for PURPLEKUSH for flavored tobacco. Purple Kush is a variety of marijuana.

Accordingly, while Philip Morris has not “snatched up” the trademark to Purple Kush, an opportunist in Arizona lays in wait … most likely thinking that he “owns” the words. However, if the day comes that the USPTO allows trademark registrations for marijuana brands, you can rest assured that “Purple Kush” will no sooner be granted a registration than “tulip” will be granted a registration for flowers.

NOT an Enforceable Trademark

March 17, 2010

How many times do I have to remind everyone — trademarks are not “word patents.”

The adult movie studio, X-Play, has published a series of porno parodies where it throws the word “NOT” before the name of an otherwise well-known title. For example, X-Play published titles like “Not the Bradys XXX,” “Not Bewitched XXX,” “Not the Cosbys XXX,” “Not Married with Children XXX,” “Not Airplane XXX: Flight Attendants.”

After a two year struggle to get a registration for the word “NOT,” X-Play finally wore down its examining attorney, and procured a registration. Now it thinks, all giddy like, that it can stop other studios from using the word “not” in their movie titles.

with the proliferation and popularity of the porn parody by so many companies it became more important than ever to protect our Not…XXX brand and we now have legal rights to keep others from using the word ‘not’ especially at the beginning of their movie title,” Mullen added. (source)

Boy is he in for a rude awakening.

X-Play reportedly has taken the position that other companies that might have released porn parodies like “Not Really the Dukes of Hazard” and “Not Another Porn Movie” will be precluded from releasing sequels now.

Yeah, good luck with that.

That “trademark” is completely unenforceable – at least the way that they think it will be enforced. It might be one thing if they wanted to launch NOT brand porn, but in this case, if they think that a judge will tell another company that they can’t call a parody of the Simpsons “Not the Simpsons,” then they need better trademark advice.

This mark should never have been approved in the first place, and it is no wonder that Mullen was quiet about it when he was waiting for the mark to finally ooze its way past a clearly lazy trademark examiner.  Had it been opposed, it never would have been granted.  

“Trademark trolling” is becoming a problem for the adult entertainment industry.  Some adult businesses are being advised by their attorneys that “trademark” is a verb — and thus, the first to get their application in “owns the word.”  That isn’t how it works.  

The first time that this studio tries to enforce this so-called trademark (at least in the manner that they seem to think they can), they are going to get hit with a counterclaim for cancellation – and that cancellation will be successful.