Monthly Archives: January 2009

I don’t know how they do it.

Many legal blogs post at really odd hours, like 4:30 a.m. or now, 1:46 a.m.  I don’t know how these legal powerhouses are able to be cogent, intelligent, and inciteful at such odd hours.  Usually I’m just thinking about beer or my wife.  Or I’m asleep.

Indeed, I do love the law, and I do love my clients (when I have them) but, excepting the possibility that I misssed a filing deadline, or that my brief will be incomplete, very little keeps me awake at night, especially on weekends.  Legal bloggers, how do you continue throughout the weekend?  What drives you? Do you get random thoughts that you have to share with the world? Or does your mind so constantly focus on the law that nothing can distract you?

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“Dear Justice Scalia, please let us ban lap dances…”

Because local officials in Idaho know more about the First Amendment than the Supreme Court:

Officials in this small eastern Idaho town have written to the U.S. Supreme Court, asking justices to reconsider rulings town leaders say harm the nation’s moral health.

In particular, the letter sent Thursday by officials in the town of 1,500 cites a 1981 case in which justices ruled the First Amendment prevents towns from banning adult-oriented entertainment businesses.

“We disagree,” city leaders wrote. “One study of the First Amendment and of the ideology that created it convinces us that the Framers merely intended to protect political and religious speech.”

The letter is signed by Mayor Glenn Dalling, City Council President Harold Harris, and Planning and Zoning Commission Chairman Brian Hawkes.

I must say, I’ve never heard of a letter writing campaign to the Supreme Court before.   Good for the public officials of Sugar City, Ohio, I guess. Something tells me, though, that more people in their down like boobie-bars than they may expect.

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Virgin Airlines sues advertising blog for parody ad

This from the blogs of AdWeek magazine:

In a baffling act of litigious bullying, Virgin America has filed a lawsuit against the popular advertising blog Adrants for posting and commenting on a parody ad. The spoof ad showed a picture of that US Airways jet floating in the Hudson River, alongside the message “Fly Virgin America.” Adrants initially noted that the ad’s “origins are suspect,” and later updated the post to make it clear that the ad was a parody from someone outside Virgin. Then Adrants pulled the item entirely. But that apparently wasn’t enough for Virgin America, which on Monday filed a “complaint for trademark infringement, false designation of origin and false and deceptive advertising, trademark dilution, false and misleading statements, dilution in violation of California law, and defamation.”

What? You don't think I would actually upload the real image, do you?

What? You don't think I would actually upload the real image, do you?

Wow.  What a mistake. First, suing a fairly well established industry blog doesn’t help with the goodwill in your brand.  Second, now this ad (which you can see at the original blog post) is going to be seen by thousands more pople–not just the people who read the ad blog, but people like me (interested in the trademark law implications) and the millions of net critiques who get ahold of these stories and stretch them for all they’re worth (okay, maybe I fall into this category as well). Third, Virgin is wasting lots of money, and, unlike a “business-to-business” trademark dispute over the use of potentially competing marks, Virgin is not getting much in return (the post was taken down, there probably is no quantifiable damage, and attorneys’ fees are highly unlikely).

Don’t get me wrong; the mock ad was irresponsible (if a bit funny). And the original blog was irresponsible in even suggesting that it was anything but a joke.  And Virgin was probably right to contact the blog and say, “Hey, this is a satire, but it’s not appropriate that Virgin be the brunt of this joke.  We honor the achievement of the US Air crew and employees in the handling of this incident, and out of respect for the victims of the tragedy, we request that you remove this phony ad naming us.”  But by actually filing suit (and apparently maintaining it even after the takedown), the company becomes another faceless corporation that attempts to stifle social commentary and expression.

EDIT: The Citizens Media Law Project has comprehensive coverage of the case, including case filings and status.

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Up against bars, news stations, local merchants sure, but God? No.

There have been numerous posts around the blogosphere about the NFL’s annual witch hunt for IP infringers (LIKELIHOOD OF CONFUSION’s Ron Coleman has a particularly good ones) who either (a) use the words “Super Bowl” in connection with a good, service or promotion, or (b) attempt to display the Super Bowl game itself on a television larger than 55 inches, or charge for admission to a “Super Bowl” viewing.

The Big Game? (I swear I havent copied this logo, and I disclaim any perceived affiliation with the NFL!)

"The Big Game"? (I swear I haven't copied this logo, and I disclaim any perceived affiliation with the NFL!)

Well, the NFL may be able to sue bars for putting the game on too big of a screen, or threaten injunctions against retailers who want to say something like “your Super Bowl party snack headquarters”, but it gets stopped in its tracks when it goes after God.  From this report from OneNewsNow (a division of the “American Family News Network”):

Churches can show the Super Bowl on big-screen TVs without fear of violating copyright laws.

In 2007, many churches cancelled Super Bowl parties after the National Football League (NFL) warned an Indiana church that it would be illegal to show the game on anything larger than a 55-inch screen. But members of Congress threatened to change copyright laws, and the NFL dropped the restriction beginning with this year’s Super Bowl.

[…]

“These organizations may show the game on any monitor, and we only ask these organizations to not charge admission — the game’s on free TV — and to hold the party at a location they usually use for other large gatherings,” [an NFL spokesperson] explains. According to the guidelines agreed to, churches may take up a donation to defray the cost of the event, if they desire.

That’s right, at least according to this report, members of Congress threatened to change copyright law to allow churches to show the Super Bowl on big screen TVs.  Because nothing says America like football and God, together under one roof.

Now, I’m all for churches showing the Super Bowl.  In fact, I belonged to a church that had a “SOUPER Bowl” party (a soup and sandwich potluck before the game started), and even though the broadcasting of the game was not part of the itinerary, I’m sure some people stayed at the church, and maybe even brought out the projection TV to show the game on a wall in the fellowship hall.  But why can’t the Fraternal order of Eagles do it? If anyone says that our country is secular, just look at the decision the otherwise IP-stodgy NFL has made here.

Further, why can’t my wife’s evite for our party have the words “Super Bowl” on the graphic, or even the Super Bowl logo? It’s certainly a descriptive  fair use (most likely a “traditional” fair use, although the “nominative” fair use exceptions may also apply) to describe the purpose for our events.    Perhaps Ron Coleman put it best:

It’s the overselling that’s offensive, because of course the NFL has a trademark right to SUPER  BOWL.  But like all IP owners, the league has set up a campaign not only to protect its legitimate rights but a buffer of illegimate intimidation-based quasi-rights around the real thing.

This buffer zone not only establishes a zone of litigation-based (not legal-based, litigation-based) early warning triggers around the real rights, such that any would-be infringer on the trademark would have to traverse the hopelessly expensive no-man’s land of illegitimate litigation threats.  It also has an even more insidious effect of actually causing an expansion of the original right itself.  It does this by actually enhancing the perceived “untouchability” of the real trademark, i.e., its isolation in the market, cinching the future results of consumer surveys and other indices (including, of course, the claim that mark holder “vigorously enforces” its rights) that could be used in a future trademark infringement or dilution claim. This is a privilege Congress, but far more so the judiciary, the latter of which almost never enforces the extant, if weak, fee-shifting provisions of the Lanham Act, have reserved exclusively to wealthy trademark owners.

So when you go to watch The Big Game this Sunday, at your church, at your home or at a purveyor of libations, please, take a moment, and enjoy the spectacle of intellectual property rights that abound.

… Oh, and call it the Super Bowl, just once. But maybe think twice before watching it on Frank’s 2000-inch TV.

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Filed under First Amendment, Law, Society, Trademarks

All Apple, all the time

From Gizmodo, this excellent post summarizing all of Apple Computer’s major legal IP battles (including the trademark battle with Apple Records, the Beatles’ record label and the resulting “sosumi” alert sound, the patent battle with Creative over the iPod’s nesting menus system, the devastating copyright battle with Microsoft, and the current IP battle with Psystar over Psystar’s Mac clones and the installation of Mac OS X on non-Apple hardware) and their outcomes.

A company never afraid of a good IP fight, either as a plaintiff or defendant

A company never afraid of a good IP fight, either as a plaintiff or defendant

As a (former?) Mac Addict, I do bask in the glow of the amazing creativity that Apple, particularly when led by Mr. Jobs, has managed to emit.  As an IP attorney, I would have loved to have been involved with many of these disputes (particularly the trademark battles–APPLE itself is a somewhat tough brand, and they’ve done a good job protecting it but not going over the top by suing, say, Applebees because Apple Computer serves food in its employee dining room), but I have to recognize that it is still like any other business, and sometimes it may go a bit too far to protect its awesome ideas (at generally-above-market-prices).

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Copyright/First Amendment Blog (from the Dark Side)?

Today, I stumbled across a (fairly) new First Amendment, copyright, and elections blog called Copyrights & Campaigns. Its author, Ben Sheffner, describes himself as “a copyright/First Amendment/media/entertainment attorney with a journalism background and a strong interest in politics” and the blog as providing “news and analysis of copyright, First Amendment, and related issues from a pro-copyright-owner perspective, with emphasis on the interaction of these issues with campaigns and the political process.”

It’s not too often that you see a blogger in the soft-IP, First Amendment platform specifically blogging from the “pro-copyright owner perspective,” and his prolific postings will certainly be interesting reads for me.  He has a number of recent postings of interest, such as:

  • An update on the Tenenbaum case, finding a request for amicus signatories from Tenenbaum as well as a discussion of amicus filings by the Courtroom View Network (the “network” that was originally charged with narrowcasting the oral argument), a group of news organizations, and the EFF’s amicus brief, which Scheffner himself has signed on;
  • A post comparing the Obama logo to the Pepsi Logo; and
  • A fisk refuting an article in the ABA Journal called “Copyright in the Age of YouTube.”

The blog is updated regularly, has insightful commentary you can’t find other places in the blogosphere, and is a just plain good read.  It’s on my blogroll, in my RSS aggregator, and I hope it finds its way to yours as well.  Even if Sheffner may be, at times, the copyright equivalent of Grand Moff Tarkin.

Nah... hes just a good copyright blogger.

Nah... he's just a good copyright blogger.

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Filed under Copyrights, Law, Society

A Doninger legislative fix?

This report comes from the Journal Inquirer, a Connecticut newspaper:

A legislative committee chairman who for decades was a high school teacher in East Hartford is proposing to prohibit school systems in Connecticut from punishing students for their off-campus electronic correspondence.

Sen. Gary D. LeBeau, the Democrat from East Hartford who co-chairs the General Assembly’s Commerce Committee, said today that he was spurred to introduce his bill by the nationally publicized case of Avery Doninger, a former Burlington high school student disciplined for a 2007 Internet posting she wrote from her home.

“I strongly believe in the First Amendment,” the lawmaker said. “And after what school administrators did in the Doninger case, what’s needed is a bright line of where the state — since the school was acting on behalf of the state — can impinge on the rights of individuals. I think they overstepped in this case.
“As long as a message like hers is not sent directly to a school, or if she is not using school equipment, this young person and everyone else has a right to say what they think,” he added. “Unfortunately, the way she said it was pretty offensive, but that happens — and that’s sometimes the very speech that needs to be protected.

LeBeau’s single-paragraph measure would specifically amend the law “to prohibit school authorities from punishing students for the content of electronic correspondence transmitted outside of school facilities or with school equipment, provided that such content is not a threat to students, personnel, or the school.”

[…]

“The reasons the schools have the right to impinge on students’ free speech are because, No. 1, they’re minors, and No. 2, the idea is to not disrupt the smooth functioning of the school,” he said. “I can certainly understand that, but I don’t see how expressing an opinion in a private e-mail or something disrupts the school. It’s not being sent to the school or to a member of the teaching staff.

I’ve previously blogged about the Doninger case here.  The legislative fix mentioned by the state representative seems intriguing, and it certainly would provide the “bright line” (at least in Connecticut) that so many commentators have found to be missing. Of course, there are also serious problems with this legislation.  If the legislation is simply a prohibition “don’t punish for off campus on-line speech,” how is this “prohibition” enforced?  Can a kid sue for injunctive relief (like Ms. Doninger)? Can a creative attorney use a “private attorney general” law to sue for damages?The other thing that concerns me is that this legislator, no matter how well intentioned he is, doesn’t quite understand the nuances of the Doninger case.  And his legislation may not even cover the Doninger situation.  The legislation prohibits punishment for “correspondence.”  Certainly, an IM or an e-mail is a “private” correspondence (as he noted in his quote). But is a blog post a “correspondence”? To me, a “correspondence” requires a sender, an intended recipient, and an intended message.  The post provided by Ms. Doninger was not a “private e-mail or something,”  it was a blog post.  While I agree that it was not “directed” at the school (a verb that doesn’t really work for on-line, pull technologies of today), her comments about the cancellation of the event were meant to communicate a message about the school that may or may not have caused confusion or disruption of the school.

Update: Professor Katheen Bergin posts about the legislative fix here.

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Fewer posts today

I am participating in a 50 hour trivia marathon sponsored by Lawrence University.

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Google AdWords fight in Germany moves to EU court

According to this article, Germany’s Federal Court of Justice has “sent” a case to the European Court of Justice to seek clarification [query: Is this like a federal court certifying a question to a state supreme court in the U.S.?] of whether the purchase of a competitor’s trademark as a Google AdWord constitutes “use” of a trademark under “EU trademark rules.”

Google's AdWords program is under fire in Europe

Google's AdWords program is under fire in Europe

This issue has been hotly contested in the United States, because if the purchase of another’s trademark as a Google AdWord is not a “use in commerce,” (at least as long as the competitor’s trademark did not appear in the text of the Google ad), then that effectively forecloses trademark liability for the action.  Cases can be dismissed early on in the proceedings.  Google’s revenue stream is left intact.  One circuit court has bought that argument.  In the Second Circuit (which includes New York) courts have found that the mere purchase of the competitor’s trademark as a Google AdWord does not constitute a “use in commerce.” Courts in the rest of the country, however, have not been so gracious, and at least allow the cases to continue.  For example at least one federal district court in Minnesota (pdf) indicated that, based upon all of the circumstances, purchase of a competitor’s trademark as an AdWord could be an infringing use.

Google, perhaps to avoid personal liability, as implemented a DMCA-like “notice and takedown” procedure. Its US, UK, Ireland, and Canada policy states that if the competitor’s trademark appears in the header or body text of a competitor’s ad, the competitor may contact Google and the trademark term will be removed from the ad.  This policy tracks with a decision by a Court in the Eastern District of Virginia that determined that trademark “use in commerce” could exist if a competitor used a trademark in body text or headers of advertisements seen by consumers, but that “use in commerce” could not exist if the trademark merely triggered the ad to be shown.  In Europe, if a trademark owner discovers that a competitor has purchased Google AdWords containing the trademark, Google will disable those keywords.  Perhaps this suit tests whether Google can implement a US-style takedown.

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What to do with those pesky ™ and ® symbols, and when to use them

Ilene Stritzver at CreativePro.com offers handy tips for creative professionals in typesetting the trademark (™) and registered trademark ® symbols. Her article discusses what fonts to use, how to place the trademark symbols, what sizes should be used, and how to adjust the fonts for ugly trademark indicators.

Ms. Stritzvers example of a registration symbol too big, just right, and too small

Ms. Stritzver's example of a registration symbol too big, just right, and too small

But in addition to placement of the symbols, here’s a quick primer on their use and application, if you’re new to the trademark world.

Many creative professionals–and even many attorneys–do not know the difference between the ™ and the ® symbols, or when they should be used.

In the United States, the ™ symbol is used in connection with trademarks that have not been registered with the U.S. Patent & Trademark Office. It can mean that an application is on file, or it can mean that, even though no registration has been sought, the trademark owner claims “common law” or state trademark rights.  Adding the ™ notice is very important, because it is the only way to communicate to the public and to competitors that you’re claiming this word as a trademark. Should a competitor come along later and use a similar trademark on similar goods and services, and you try to make them stop, it is easier for them to argue that (a) they believed you were not using the term “in a trademark sense” but were using it “descriptively” or just as part of plain language, or (b) that, at a minimum, they were not “willfully infringing” on your trademark (which gives the mark holder additional remedies) because you had not provided the notice to the world that you were claiming exclusive rights to use the mark.

In the U.S., “®” is the designation for trademarks that have been registered with the USPTO. Not with your secretary of state, not with any state trademark authority, not with any third-party “registration service,” but with the federal government.  In the United States, trademark rights are acquired upon use rather than registration; however, there are legal advantages to registering a trademark federally.  These include a presumption of validity, a clear date of first use, and nationwide priority at least as early as the date of registration.  Therefore, there is a (slim) possibility that if a person uses an ® symbol improperly, the rights holder could forfeit some of her rights in the trademark (because the trademark owner falsely asserts federal trademark rights in a mark for which they have not received a federal registration).

Technically, there is one more trademark designation missing — “sm” for “service mark.” A service mark is a mark that is used in connection with services rather than goods. Thus, COCA-COLA for “soft drinks” is a trademark, and COCA-COLA DAY (if it existed) for “charitable fundraising services” would be a service mark.  Section 3 of the Lanham Trademark Act recognizes that service marks are “registrable, in the same manner and with the same effect as are trademarks,” and the law does not otherwise substantially distinguish between a trademark and a service mark.  (There are a few minute differences; for example, the USPTO will accept advertisements as “specimens,” or proof of use of the service mark, whereas it will not accept pure “advertisements” for trademarks.) The ® symbol is applied both to registered tradmarks and service marks, but technically “sm” should be applied to unregistered service marks, while ™ should be applied to unregistered trademarks.  The problem, of course, is that there is no ASCII “sm” character, which means that adding an “sm” character, especially in body text, can be cumersome and annoying.  I am not aware of any case that holds that ™ is improper notice for a service mark, but then again, I’ve not looked for such a case.  In other words, if you’re really nervous about giving notice about a particular tradmark, err on the side of caution and use “sm”.

(Please note that ™, “sm,” and ® refer only to trademarks, and not copyrights or patents.)

A thorough trademark attorney, in house counsel, or even a design professional adding the trademark symbols to logos, should be aware of the differences and might want to confirm the status of any trademark periodically when new logos or publications are designed.

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