Archive for the ‘trademark’ Category

Trademark Infringement in the Presidential Election?

Wednesday, October 17th, 2012

Romney Believe in America - Get the DetailsI don’t want to spoil anything, so click here if you want to find out about the details of the Romney tax plan, including how he will cut $5 trillion in spending without increasing the deficit.

Cute, huh? (At least if you are a Democrat.) Now that you’ve seen that, let’s think about the legal implications. The website, romneytaxplan.com, is a product of the Democratic National Committee. Yet the website conspicuously carries the Romney campaign logo and uses the Romney campaign’s slogan and adopted typestyle. So, is there a trademark problem?

Yes and no.

This is a good example of why it is so important in evaluating intellectual property problems to not only apply the blackletter law, but to also ask the practical question: Would this plaintiff sue?

Trademark law should generously protect parody uses of trademarks. Yet it doesn’t always. Consider this parody ad that appeared in a humor magazine called Snickers:

One taste and you'll drink it oily. Michelob Oily.

The case was Anheuser-Busch, Inc. v. Balducci Publications, 28 F. 3d 769 (8th Cir. 1994). Anheuser-Busch, brewers of Michelob, sued for trademark infringement and trademark dilution. The federal district court dismssed the case, but the Eighth Circuit Court of Appeals reversed, holding that the brewery could continue on with its action. I seriously disagree with that case. And there several cases upholding dismissals in the realm of trademark parody. But the Anheuser-Busch case is still, regrettably, good law.

There’s also the case the U.S. Chamber of Commerce pursued against a prankster group, The Yes Men, who produced a faked Chamber of Commerce press release and website to go along with a fake press conference they held about support for climate change legislation.

The fact is, the Romney campaign can sue the DNC and the case would have some legs.

But will they?

No way.

There’s no way the Romney campaign is going to draw attention to the website and look humorless and loser-y by filing suit. Or even threatening. So it’s a good call by the DNC to ignore precedent that points to a potential for legal liability. Calculated risk-taking is often the right prescription when advising clients about IP liability concerns.

Please Help Stop SOPA

Saturday, November 26th, 2011

STOP SOPA

Something very bad may be about to happen to the internet.

The United States Congress, which is currently slightly more popular than the rabies virus, may be on the brink of passing the Stop Online Piracy Act, an outrage that attempts to placate big Hollywood content industries by selling out freedom on the internet.

I’ll be writing about SOPA (and PIPA, as it’s known in the Senate) in upcoming posts. Please take the time to educate yourself and call your representatives.

Also, consider adding a STOP SOPA badge to your website. Feel free to swipe them off of this blog – I handmade these (entirely independently), so I can and hereby do license them to you. And then link them to one of the many explanations out there for why SOPA presents such extreme peril.

Bauble Bobble Estoppel: Why Kane’s Tack Against Forever 21 Worked

Wednesday, November 2nd, 2011

Questions
from
Readers

Blog Law Blog reader Amy e-mailed me with a good question about blogger Rachel Kane’s self-declared victory over Forever 21 in a legal dispute that never ended up in court.

Kane is the author of wtforever21.com, a blog devoted to poking fun at Forever 21, the fast-fashion retailer famous for its dogged pursuit of trendiness with a torrent of bangely baubles and shiny swathery.

While they would seem too busy chasing down fashion ephemera to notice a tongue-in-cheek blogger, the folks at Forever 21 eventually looked up from their lamé long enough to dash of a cease-and-desist letter charging Kane with trademark infringement and demanding she take down her blog.

Now, as I pointed out, Forever 21′s legal position was meritless. But they’re a big company, and Rachel Kane is a solo blogger. So it makes for a problem.

What did Kane do about it? Through legal counsel, she wrote to Forever 21 laying out her legal argument for why the company’s claim was baseless and imposing a deadline by which, if she did not hear back from Forever 21, she would assume that she was free to continue blogging.

Thus the question from reader Amy. She writes:

This is a great strategy for bloggers and an awesome victory. However, can’t she still face legal action from the company even though there was no response past her self-imposed deadline?

The answer is that Forever 21 is not absolutely foreclosed from suing Rachel Kane after her self-imposed deadline passes. But by failing to get back to Kane, Forever 21 has evidenced an intent to abandon its claim. That severely compromises F21′s legal position. At this point, if Forever 21 tried to sue, Kane is now in a position to raise the legal defense of “estoppel.”

The idea of estoppel is that if you don’t deal with things at the opportune time, you can’t bring it up later if doing so would end up screwing over someone else. (Courts, in issuing judicial opinions, usually have some slightly higher-brow language than the phrase “screwing over,” but they can’t explain it any better than I did.)

So, through the estoppel defense, a court could rule that Forever 21 lost whatever rights it may have had to sue Kane when it failed to reasonably pursue its claim.

The law generally favors upholding parties expectations when it is possible to do so. Kane can say that, after hearing nothing by silence from Forever 21, she reasonably expected that the dispute was over and that she was free to continue blogging.

Now, key to making this work is that Kane approached this dispute in a reasonable way. She sent a letter explaining why the law did not support Forever 21′s trademark claim, and she gave them a reasonable amount of time to respond. It also counts for something that Forever 21 was the party that brought this up. Since they started the argument by sending a cease-and-desist letter, it’s certainly reasonable to expect that they will respond to Kane’s arguments if they are going to maintain their claim.

There’s nothing magical about estoppel – it’s all based on reasonableness. So don’t get carried away thinking you can get the drop on someone with estoppel. If you’re being tricky, then a court won’t look favorably your estoppel defense. But if someone sends you a legal threat, Kane’s way of dealing with it is a good one. Send a letter patiently explaining why the threat is baseless, and set a reasonable deadline for their response. It can be a good way to put spurious claims behind you.

Qualitex Swatches for IP Teachers

Tuesday, September 6th, 2011

Qualitex press pad coverI know that there’s a contingent of Blog Law Blog readers out there who teach Intellectual Property in law school. If you do, I want to make sure you know about something I’m doing to celebrate the grand-reopening of my Museum of Intellectual Property.

I am offering to any bona fide teacher of Intellectual Property or Trademark Law a swatch of fabric from an actual Qualitex press pad cover, resplendent in its trademarked Qualitex green-gold color.

What is a Qualitex press-pad cover and why would I care? If you have to ask, I’m sorry to say, you won’t qualify for a swatch. It’s an IP-geek thing. In a landmark IP case, Qualitex successfully defended its color as a registered trademark. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995) (holding that color can be registered as a trademark, overruling the Ninth Circuit).

I say “landmark IP case” because, let’s be honest, even though it was at the U.S. Supreme Court, it doesn’t really qualify as a “landmark Supreme Court case.” Like I said, it’s an IP-geek thing.

Anyway, having a swatch of the fabric as a teacher is helpful, because you can’t really experience the trademarked Qualitex hue except in person. As Qualitex notes on its website:

The Unique Green Gold Color is a Registered Trademark of the Qualitex Company. (The color on your screen may NOT be an accurate display of the Qualitex Green Gold!)

To claim your swatch, please send me an e-mail (ejohnson@law.und.edu) with your physical mailing address by September 19. I need the cut-off date so that I can know how finely to divide up the material that I have on hand.

Of course, even after I divide up the sample of material I have, the Museum of Intellectual Property will retain a full, intact Qualitex press pad on display. So go ahead and plan that family vacation around a visit to North Dakota to see the Museum of Intellectual Property in person.

Kane Declares Victory Over Forever 21

Thursday, July 7th, 2011

Black feather cape with broochRachel Kane over at blog wtforever21.com has declared victory over Forever 21 in their nascent legal dispute. After Kane hired legal counsel and told the fast-fashion retailer their legal position was, in so many words, as silly as Feather Cape with Brooch ($39.00), there has been nothing but silence on the other end. So after Forever 21 failed to respond by Kane’s own imposed deadline, she interpreted silence as acquiescence and is now back calling out sartorial snafus on a daily basis.

In her words: “This is a dark defeat for MC Hammer pants, floral jumpsuits and blinged out mini hats, but a joyous triumph for those who like to make fun of them. Which is pretty much anyone with eyes.”

Note to bloggers who are on the receiving end of baseless legal threats: The way Kane handled this is instructive. Respond to the threatening letter with a patient explanation of how the claim is legally lacking, in a tone that is courteous but firm, and then say you’ll get back to doing whatever it is by such-and-such a date unless they give you a compelling response.

Congratulations, Rachel. Blog on!

New Dot-Anything Domain Name Policy Lousy for Most Bloggers

Tuesday, June 21st, 2011

.blog .painYesterday ICANN – the non-profit stewards of the internet domain name system – announced a long-anticipated decision to let anyone apply to become owners of new top level domains ( TLDs). The top level domains are the last characters in a web address or e-mail address; that is, the characters that go after the final period. The most famous, of course, is .com. Now, the floodgates will be opened.

That means, theoretically, I could own .bloglawblog, allowing me to make my web address bloglawblog.bloglawblog. But that’s very theoretical. Why? Because it’s expensive. Very expensive. An estimated $185,000 to register a TLD.

And I don’t want .bloglawblog that bad.

What this means for most bloggers and citizen journalists, is that they will not have the opportunity get a TLD for themselves. But, they will the exciting opportunity to be placed under siege by profiteers and cybersquatters.

For instance, when applications are accepted in January 2012, you can bet some company will apply to own .blog. Then, that company will soon write to you, saying,

Hello friend! We’ve noticed that you own a blog called Kentucky Trainspotters, and that your domain is kentuckytrainspottersblog.com. For just $500 per year, you can get the kentuckytrainspotters.blog domain!

And if you don’t, we’ll sell it to someone else.

You don’t want that to happen, do you?

For this and many other reasons I won’t go into, I think this stinks. And I’m certainly not alone as a critic.

ICANN is talking about how this will usher in a new era on the internet. That’s silly. The internet is about the content, not the addresses. But it certainly may usher in a new era of headaches. Thanks, ICANN.

More:

 

Rachel Kane Should Look to Princess Diana for Inspiration

Tuesday, June 14th, 2011

Here’s a tip for the lawyers of Rachel Kane, the California blogger who has vowed to fight back against Forever 21′s attempt to shut down her blog with a bogus trademark lawsuit:

Make sure you check out Franklin Mint Company v. Manatt, Phelps & Phillips, LLP, 184 Cal.App.4th 313 (2010). It’s a wonderful case which allowed the Franklin Mint to advance its malicious prosecution claim against the prestigious L.A. law firm of Manatt, Phelps & Phillips for filing a baseless trademark and right-of-publicity suit. That suit had been brought by Princess Diana’s estate against the Franklin Mint for, among other things, manufacturing the Princess Diana Vinyl Portrait Doll with blue beaded silk gown (which retailed for $245 – WTF?).

I blogged about the decision last year. As I said then, it’s a great case for bloggers, because it shows that there’s a downside for thugsters overreaching on trademark theories. In the Franklin Mint v. Manatt case, the California appeals court found that there was no “probable cause” to claim trademark dilution or right-of-publicity infringement, and, therefore, Manatt could be liable to the Franklin Mint for maliciously bringing a groundless lawsuit.

Manatt argued vigorously that trademark law was too fuzzy and unsettled for the California court to allow a malicious prosecution claim to go forward. But the court disagreed, saying that the “application of fundamental principles of trademark law to the facts of this case show there was no probable cause to prosecute the trademark dilution claim.”

The same exact thing could be said about Forever 21 v. Kane.

Forever 21 Threatens to Sue Critical Fashion Blogger Out of Existence

Tuesday, June 7th, 2011

Blue ruffled romperClothing retailer Forever 21 is threatening to sue blogger Rachel Kane if she does not take down her blog WTForever21.com.

Forever 21′s alleged cause of action is trademark infringement. Which is absolutely ridiculous. The test for trademark infringement is “likelihood of confusion.” The question for the court would be, “Are consumers likely to be confused as to the source of WTForever21.com, thinking they are really dealing with Forever 21?”

Of course they wouldn’t be. Especially when Kane deals out criticism like this, referring to the blue romper on the right:

Quick question. Just, super fast. One minute…

Ruffled Romper: $24.80

WTF IS this?

Seriously. Why does this romper exist? Is it the official uniform of some highly unfashionable flight attendants from the 50?s?

I wouldn’t wear this on a DARE, let alone pay $25 for it and be SEEN wearing it up and down the land during my daily life.

It looks like something in the collection of casual wear from “The Running Man.”

Forever 21,

WTF?

Apparently, Forever 21 doesn’t like criticism. (Even though Kane mixes in admiration for her favorite store, such as “pay[ing] earnest tribute to Forever 21′s cunning clothing style.” Most recently, Kane saluted Forever 21′s “flouncy, feminine features made to keep you feeling and looking cool for the fairest months of them all.”)

Forever 21′s thugster stance on intellectual property is especially ironic considering that they are constantly being attacked by whining designers who bristle at Forever 21′s perfectly legal copying of their designs. In fact, Forever 21′s fans are habitually fighting off attempts by elite fashion designers to push new legislation through Congress that would illegalize F21′s business model.

As Kane might say:

Forever 21,

WTF?

Trademark Bullying in the Blogosphere

Thursday, March 3rd, 2011

Mike Masnick:

Trademarking Your Blog

Friday, December 3rd, 2010

I talk a lot about copyright on Blog Law Blog. But another – completely different – form of intellectual property that bloggers ought to be aware of is trademark.

You can use trademark, potentially, to protect the name and brand-identity of your blog. Trademark is about reliable indications of the source of goods or services, enabling people and companies to develop and profit from their reputation. Trademark doesn’t protect content, it protects names, symbols, logos, slogans, and other forms of commercial identity that a business uses. (Non-profit enterprises can assert trademarks as well.)

The Citizen Media Law Project has published a new section of their legal guide that provides a lot of information on getting and maintaining trademark rights: Securing Trademark Rights: Ownership and Federal Registration.

A backgrounder on trademark law is available in a “nanotreatise” [pdf] I wrote, which is in my Compendium of Materials for Intellectual Property Law.

Lamebook v. Facebook

Tuesday, November 23rd, 2010

A blog called Lamebook that posts funny Facebook status updates has been threatened with a trademark infringement lawsuit by Facebook. Seeking to vindicate their rights, and probably trying to keep the lawsuit near home where it will be cheaper and easier to deal with, the folks at tiny Lamebook have sued megalithic Facebook for declaratory judgment in Texas. (TeleCrunch, Washington PostHuffington Post)

I haven’t read the pleadings, but this sounds like a strong case for Lamebook. That is, if they can survive a blizzard of high-paid lawyers and billable-hour-sucking motions.

Lamebook should have the right to pick an name and identity that calls to mind Facebook where, as is the case here, it is undertaking an activity that directly concerns Facebook, and it is producing content critical of Facebook.

In my view, that’s not actionable under trademark law, and, to boot, it’s protected First Amendment activity.

But let’s face it: Justice isn’t perfect and dollars matter. We’ll see if Lamebook can survive Facebook’s trademark bullying.

Go Lamebook!