Category Archives: Trademarks

A tale of two CITIs…

It seems that everyone who has a computer today has written about the lawsuit between Citicorp and All Citi Pawn, a New York pawn shop.  CNN Money may have been the first to write about it, with this story:

In the suit filed last week in Brooklyn federal court, Citigroup alleges that in using the same Citi abbreviation and red arc as its banking subsidiary, Citibank, All Citi Pawn has infringed on their trademark. Citigroup is seeking all of the business’ profits since it adopted the All Citi name.

“What can I tell you? Its crazy. They’re going wild for a little art that I put up. Theirs is a moon shape, mine is a V-shape, but I’ve already taken it down,” pawn shop manager Bob Kay told CNN.

[…]

“It is important for Citigroup to know that no one is trading off their name – they need to protect their intellectual property.” [said Trademark attorney Michael Feign].  Feigin went on to say, however, that removing the offending logo should resolve the case. According to Kay, it has not.

Marty Schwimmer has the full text of the complaint here.

What’s surprising is that most of the commentators–and even reporters—are complaining that this is somehow a frivolous exercise for Citi.  CNN lead off its article with “You would think that Citigroup had enough on its plate these days, but that hasn’t stopped the financial behemoth from filing a copyright [sic] infringement suit against a Brooklyn, New York, pawnshop over a similar logo….”   And even Mr. Schwimmer titled his blog post “Your tax dollars at work.”

In defense of Citi, this is not a bad case. According to the allegations in the complaint, the owner of All Citi Pawn started using the offending name, and registered its allcitipawn.com domain name well after CITIBANK became famous.  Second, Citibank attached some promotional materials showing the logo that All Citi Pawn used.  It included a logo that looked a lot like Citibank’s.  A quick trip to the Wayback Machine at the Internet Archive (http://www.archive.org) retrieved this logo at the http://www.allcitipawn.com website:

The logo of All Citi Pawn

The logo of All Citi Pawn

Compare that to Citi’s logo:

The registered logo from the big CITI.

The registered logo from the big CITI.

According to the Wayback Machine, the first appearance of anything on allcitipawn.com was in 2007.   So we have a small pawn shop in New York independently choosing to modify the word “City” to “Citi” in its business name, and coincidentally use a sans-serif font in blue, with a red roof instead of a red arch?  That screams bad intent to appropriate the goodwill of the senior user (and its mark, previously adjudged to be famous).  The word is the same; the logo is nearly identical; to the extent that a pawn shop and a bank both make loans on collateral, the services are quite similar.  This is not overzealous trademark prosecution; this is what a responsible trademark owner should do to police its mark and keep it distinctive.

The fact that Citi may be in dire financial straits right now doesn’t mean that it shouldn’t continue to protect its brand and logos, especially when the marks and goods are so similar.  It’s certainly worth a couple of thousand dollars to draft a complaint (it shouldn’t take more than that; my guess is that the associate charged with drafting the complaint already had plenty of examples from which to model) and a couple hundred dollars in filing and service fees.  It’s certainly no million dollar office renovation.

Here’s what happened (as alleged in the complaint):    All Citi Pawn, instead of consulting trademark counsel, adopted the name in 2007 (or thereabouts) not in an attempt for people to believe that Citibank was opening a pawn shop, but rather for customers to see the logo and think “cute,” and maybe to get customers to think that All Citi Pawn was as stable and honorable as Citi (*smirk*). Citi attorneys found the website. They sent a cease-and-desist letter. All Citi Pawn, instead of consulting trademark counsel, thought, it’s just the word “Citi,” and our inverted “v” is different from their semicircle, so screw ’em, they won’t do anything else. And–whoops!–they did something else.  Now all of the business community is in an uproar just because Citi wants to protect whatever goodwill remains in their brand.

And now to the infuriating part of the CNN report:

“…but that hasn’t stopped the financial behemoth from filing a copyright infringement suit against a Brooklyn, New York, pawnshop over a similar logo.

[…]

“Citigroup is seeking all of the business’ profits since it adopted the All Citi name.”

First, there is no allegation of copyright infringement in the complaint.  This is a matter of trademarks, CNN! And if a business reporter for CNN doesn’t know the difference between trademarks and copyrights….

Second, Citigroup isn’t seeking all of All Citi Pawn’s profits.  In the WHEREFORE clause of the Complaint, Citi seeks:

D (1) All of defendant’s profits, gains and advantages derived from the unauthorized appropriation of Citigroup’s good will in its service marks as part of defendant’s name, to identify defendant’s services and products…. (emphasis added).

This pleading is appropriate and correct for willful trademark infringement. Citi is not asking for all of the defendant’s profits, but all profits that flow from the use of Citigroup’s names and logos.  That’s a much, much smaller pool (and almost impossible to prove).

I’m not usually one to valiantly defend the big, bad bank from a bit of bad publicity, but I think in this instance, Citi’s gotten an unfair shake.

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Now the most valuable Beanie Babies ever…

According to the ABA Journal, Ty, the manufacturer of Beanie Babies, has decided to retire the “Sasha” and “Malia” dolls.  Hurry up collectors–this will be the ultimate political collectable!

And you thought that your old Beanie Babies were worth something...

And you thought that your old Beanie Babies were worth something...

I have previously blogged about the challenges the White House will have trying to take formal or informal action to protect the intellectual property rights (if there are any) of President Obama and his family.  Perhaps no legal action will be necessary if all it takes to cut off a product is a statement by the Obamas and some bad media coverage.

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Happy Groundhog Day

Phil, as shot by ShultzLabs, used pursuant to a CC 2.0 License

Phil, as shot by ShultzLabs in 2007, used pursuant to a CC 2.0 License

Six more weeks of winter. Which, for those of us who live in Texas, is welcomed news.

And at least a few more years of PUNXSUTAWNEY PHIL trademark protection.

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A cease and desist letter… from the White House?

A number of news articles and commentators have noted that the Obama Administration plans on enforcing the President’s trademark and/or publicity rights against shifty manufacturers who have put Obama’s face or “trademarks” on a variety of products.

Will this cafepress.com creator be getting a cease-and-desist letter from the White House?
Will this cafepress.com creator be getting a cease-and-desist letter from the White House?

As the commentators have noted, there are serious First Amendment issues when a government official tries to prohibit a citizen’s use of the most powerful person in the world on any product, whether T-shirt, doll, or thong.  Does the thong above just seek to capitalize on the President’s personal image (perhaps that’s protectable under state law rights to publicity), does it send a political message supporting the new administration, or does it send a political message that the new president should “kiss my *****”?  Does the speaker matter?  Does the profit motive (or lack thereof) matter? How in the heck does a newly minted president (and perhaps a newly minted IP-czar) figure out what to do?

Here’s my working list of standards that the Administration could consider:

  • Differentiate between the President and other members of his family. Images of the president by himself, probably not actionable.  There have been dolls of all sorts of presidents, and my guess is that Bush, Reagan, and Nixon (or their estate) didn’t get a license fee.  That’s the cost of being a president.  Likewise, use of the First Lady’s image can be used, so long as the company does not claim or imply that the product is specifically endorsed by Mrs. Obama.  Images and likeness of the kids are not to be used except in bona fide news stories.  (The TY Maila and Sasha dolls walk the line, but probably shouldn’t deserve a formal, legal response unless the dolls are made to appear like the First Children, or are marketed as the Obama children).
  • Differentiate between elements of the Obama 2008 “campaign brand” and actions, policies, and statements of the President. What was remarkable about the Obama campaign was the degree to which the campaign was successful at branding the candidate — as the best agent for “change,” “hope,” and progress.  Part of that campaign branding certainly was the Obama “O” logo.  It’s certainly possible that consumers would believe that a product with the O logo would be either put out by, sponsored by, or endorsed by the campaign.  And use of the campaign logos  (without any political commentary) should not implicate the “core” First Amendment “political speech” rights. (Of course, that begs the question of whether a government official should be policing IP rights of Obama as a candidate or the Obama campaign).

Perhaps this thong, made by "Herban 420 Wear" on cafepress.com, is more violative of the Obama rights than the one above?
Perhaps this thong, made by “Herban 420 Wear” on cafepress.com, is more violative of the Obama rights than the one above?
  • Differentiate between simple uses of the President’s image as a subject of the merchandise and attempts to state or imply that the president endorses a particular product. This is the trickiest standard to craft.  The basic standard is pretty easy.  If someone places Obama’s face on a package with a talking balloon saying “I endorse this product,” that’s probably actionable.  Likewise, using Obama’s face on a T-shirt sponsored by a non-profit with the words “OBAMA IS A BAD PRESIDENT,” definitely not actionable.  But at what point does a commercial entity (like, say, Pepsi) have the right to freeride on the Obama brand, imply that Pepsi is implicitly endorsed as the “soft drink of change,” or that President Obama is a Pepsi drinker?

Probably not this far:

(link courtesy of Marc Ambinder via Copyrights & Campaigns)

  • Finally, I’d suggest that anyone in the administration err on the side of not taking formal (or informal) legal action. The last thing this president needs is a whole bunch of whiny bloggers (like me) saying that publicity lawsuits by the president is counter to his policy agenda, unnecessarily money-grubbing, and downright hypocritical.

Anyone else have any good ideas for guidelines? (Oh, and Mr. President, if you need a contract attorney to write your cease-and-desist letters, I’m available.)

UPDATE: CNN has a great listing of the Top 10 pices of “Obama Merch” from the inauguration.

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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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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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