LIKELIHOOD OF CONFUSION®

Figure this one!  Michael Cohen — who, now that I think of it, does kind of slather his blog’s home page and name with SEO goodness (but unlike certain, say, Minnesota intellectual property attorneys, however, he is for real) — reports about a hotel named, it turns out, after the material packed into its braincase:

Among the already-raunchy assortment of reality TV shows, the new “Rehab: Party at the Hard Rock Hotel” is pushing the envelope. And the Hard Rock Cafe International, Inc. chain . . . doesn’t find the debauchery very entertaining. The Hard Rock Café recently filed a law suit for trademark infringement, trademark dilution, and a variety of other charges regarding the tarnishing of Hard Rock’s image. Hard Rock Hotel is a licensee of the Hard Rock brand. But Hard Rock Café now wants to revoke that license agreement.

The case is No. 1:10cv07244-UA, filed in the United States District Court for the Southern District of New York.

According to the suit, Hard Rock Café was founded as a celebration of Rock and Roll, good times, and fun. But sexual harassment, violence and crime are not part of its credo.

“A celebration of Rock and Roll” but not associated with “sexual harassment, violence and crime”?

Well, gosh.  Didn’t I read something recently about the role of the word “plausible” in federal practice?  Never mind that — heck, I’m before that same court all the day long, and last I heard Federal Rule of Procedure 11 (“Rule 11“) was still in effect there.  You know:

By presenting to the court a pleading, written motion, or other paper — whether by signing, filing, submitting, or later advocating it — an attorney or unrepresented party certifies that to the best of the person’s knowledge, information, and belief, formed after an inquiry reasonable under the circumstances:

. . .

(2) the claims, defenses, and other legal contentions are warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law;

(3) the factual contentions have evidentiary support or, if specifically so identified, will likely have evidentiary support after a reasonable opportunity for further investigation or discovery …

Well, I’m going to have to do some serious reflecting, considering how the firm that filed this suit is well known to me and eminently respectable, and then some.

Now, personally I always thought of rock and roll as just good clean fun! But I had the distinct impression that some others did not.

Still, it must be that, regarding what other people perhaps thought, I was wrong.  So it is:  I was very wrong.

But not as wrong as the Hard Rock Hotel.

Originally posted 2005-08-09 09:33:24. Republished by Old Post Promoter

Looking for the Geico v. Google decision? Here it is.

More to come….

UPDATE: I didn’t exactly mean more litigation — but I guess we shouldn’t be surprised.

UPDATE: I think of Professor Eric Goldman as the person in academia whose professional interests track mine most closely. He’s right on here, too — I don’t know what to make of this opinion. Here’s his take, which he shared both on his blog and, in brief form, on the INTA list (link is mine, however):

The opinion does very little to clarify or add to the court’s oral ruling from December. So we really don’t learn much from this opinion, and as a result, I can’t see why this opinion will affect the parties’ settlement negotiations. …

[T]he court does some arm-waving. It appears to endorse GEICO’s position (from Brookfield and other cases) that an “initial interest confusion” case moots the need to use the standard likelihood of confusion multi-factor test[, and the court] summarizes by saying: “To prove likelihood or absence of confusion, initial or otherwise, parties commonly introduce the results of customer or potential customer surveys.”

It’s true that surveys are a standard method of proving likelihood of consumer confusion, and I’m glad the court required some empirical proof rather than mere intuition-driven arguments that pervade most initial interest confusion cases. However, what legal standard is the court using? If it is bypassing the multi-factor likelihood of confusion test, what test is it using? The court doesn’t say.

One other odd thing about this statement. What’s this about proving the absence of confusion? The burden is on the plaintiff, not the defense. Why would anyone need to prove the absence of confusion?

. . .

The court … continues, “Despite the many flaws in its design, the survey’s results were sufficient to establish a likelihood of confusion regarding those Sponsored Links in which the trademark GEICO appears either in the heading or text of the ad.”

This is a non-sequitur. There’s nothing in the court’s opinion or the discussion of the survey that supports this finding. Unfortunately, the court does nothing to explain its thinking about this conclusion or how the survey supports it. The only thing that the court notes is “the extremely high percentages of respondents who experienced some degree of confusion when viewing [ads displaying GEICO in the text].” Further, Google did not introduce any rebutting evidence on that point.

As a result, the court rules for GEICO that “Google may be liable for trademark infringement for the time period before it began blocking such usage or for such ads that have slipped or continue to slip through Google’s system for blocking the appearance of GEICO’s mark in Sponsored Links.”

Not all that encouraging. That’s the mess judges are making of this area of law — and it’s not as if this one didn’t take her sweet, sweet time getting to this point…

John Welch treats us to another edition of “You Be the Judge” — well, he calls it something slightly else, but whatever — and asks the Potter-Stewart-esque question, “Do you know trademark mutilation when you see it?”

Could get ugly!

Originally posted 2006-11-29 21:47:40. Republished by Old Post Promoter

The arrogant New York Times loses again.

The Supreme Court agrees with the Second Circuit: If there were a reporters’ privilege under the First Amendment, it still wouldn’t give you a free ticket to do absolutely anything you want to undermine your country.

Fantasmagorical, Floyd! Hat tip to Instapundit on Beldar’s reemergence from that dungeon in Vulgaria. Sweet to have you back!

Originally posted 2007-08-14 23:07:15. Republished by Old Post Promoter

The Gray Blog reports that the Canadian Supreme Court has rejected an attempt — the sort made all day all over North America — to utilize IP law as a “guaranteed distribution network protection act.” It’s the “grey market” or “parallel market” issue: Does a company have the right to demand that its goods be sold only through “authorized dealers”?

The law is pretty clear that it can’t, but firms cook up all sorts of causes of action — tortious interference with contract, trademark infringement and dilution — to try to make get around the free market and to protect their distributors. This, in turn, protects their ability to control both retail prices and brand placement. These are completely legitimate business goals, but misusing the IP laws to achieve them is crooked. Unfortunately, the courts — typically dizzied by the assertion of the strong trademark rights that companies big enough to have this isue are likely to have — go along with this all too often.

Copyright, if you can make it work, is the best for this, because it has those famous teeth: Attorneys’ fees and statutory damages. The prospect of losing a copyright case is devastating for a small business. So big firms claim that all sorts of things, such as product descriptions, labels, the way the sun reflects off the bottle — are “protected works.”

Well, in Canada at least, that goose won’t fly.  In this case, the focus was on the applicability of the first-sale doctrine (which gives someone who owns stuff to sell it to whomever he wants once he himself bought it lawfully) to an overseas sale:

The Court explained that “[f]or KCI to succeed, it must show that Euro imported works that would have infringed copyright if they had been made in Canada by the persons who made them.” However, in the case of KCI, the products at issue were Toblerone bars bearing copyrighted works which where first manufactured and sold in Europe by the Licensors and owners of the copyrights. The Court reasoned that under section 27(2)(e) of the Copyright Act KCI as a licensee may not sue the owners of the copyrights for copyright infringement. Its only remedy is for breach of contract. Accordingly, no cause for copyright infringement exists against the legitimate purchaser.

“Toblerone bars bearing copyrighted works.”  It’s preposterous that the court even got this far.  The distortion of the IP regime seems irreversible.

UPDATE:  Related developments, and otherwise, in places closer to home (regular readers can skip those links!  you’ve seen them already).

I don’t like to call out other bloggers, but I do it sometimes.  People are gentle with my mistakes — Steve Feingold being the model of graciousness this week (as he always is, of course!) — usually.

But if you write a blog and you jack it all up full of SEO juice and it then gets picked up by my daily Google Alert for “trademark” and then I poke around on your oddly-written Minnesota Attorney Blog blog where you have a category called “Minnesota Intellectual Property” — and hey, I know as well as anyone that they do intellectual property in Minnesota, so I’m not going to snark you out on that — and then I find that each post has this canned-SEO preface to it that says, Minneapolis Intellectual Property Attorneys,”… you know, just in case someone’s, like, searching for the phrase MINNESOTA INTELLECTUAL PROPERTY ATTORNEYS or something… and I click one of the two posts in this category by these “attorneys…”

It had better be good, brother.

So:

Trademarks do not have to be registered in order to be valid. The person who uses a mark in commerce first obtains a trademark on that mark. This mark indicates where a good or service came from. It shows the source. The person who obtains a trademark on a mark also obtains the right to prevent others from using that mark in commerce.

No.  Not good.

Not, not, not, not good.

I feel like Scott Greenfield.  But sometimes, somebody’s got to do it.

Not.  Good.

Minnesota Intellectual Property.

Attorneys.

Bad.

Originally posted 2007-03-10 23:31:12. Republished by Old Post Promoter

The Australian reports that earlier news about a resolution of Starbucks’ trademark problems with the Ethiopian coffee thing was perhaps over-caffeinated.

UPDATE:  Have things perked up since then?  Or simmered down?  I simply don’t grounds to say.  But from the looks of it, these guys do.

Originally posted 2007-11-21 12:18:52. Republished by Old Post Promoter

That’s the punchline of an old Jewish joke about a blessing that is part of the traditional thrice-daily prayers, which begins, “On the saintly (i.e., the tzadikim), and on the pious (the hasidim) …,” asking for a special blessing in their merit. Why, the jape goes, doesn’t the blessing go in the opposite order — “on the hasidim, and on the tzadikim“? Answer: “Never start with a hasid!”

The New York Court of Appeals agrees, refusing to get involved in a succession fight among rival groups of one of the largest hasidic groups, the Satmar hasidim. What does that have to do with LIKELIHOOD OF CONFUSION®? Well, of course, it recalls our discussion of the still-active trademark dispute among rivals in the Bobov hasidic group. And it reinforces our argument: Secular courts, and other agencies such as the Patent and Trademark Office, will be well advised not let their good offices be part of this “fun.”

Originally posted 2008-10-10 12:04:13. Republished by Old Post Promoter

The Jews take a worldwide day off from eating, and what happens when they sit down and pick up their forks and knives to dig in?  Their enemies want to take their food away and get fees, too!

MBA Legal intern Andie Schwartz sends along this item from Mike Masnick at TechDirt about what happens when intellectual property rights are so abused by people who should know better, that those who know less — and whose intent is something less than benign — come to think of it as a way to just plain get your way when you don’t like how things are turning out for you:

Another day, another ridiculous intellectual property lawsuit. Along the same lines as various regions in France declaring that only they can sell “Champagne” or Greece being the only one allowed to offer “feta,” a group in Lebanon is claiming that various popular middle eastern foods such as hummus, falafel, tabouleh and baba gannouj are property of Lebanon and Lebanon alone. In fact, the group is planning to sue Israel for “stealing” its food. They’re actually claiming that this could be a violation of a “food copyright” (something that doesn’t actually exist). Specifically, the group says that since Israel sells such foods, it’s taking “tens of millions of dollars” away from Lebanon, where those foods should be bought. This, folks, is what happens when you build up a society around the idea of “owning” infinite goods.

We mostly agree with him, even if his last sentence is a little incoherent.  Masnick seems to be in love with the naive concept of “infinite goods,” and his misapprehensions are examined fruitfully here.  Besides, no one has ever tried to “build a society” around the ownership of abstract rights — even intellectual property rights, unless you count INTA or the RIAA as a “society.”  And if anyone ever did so, that society would not be the Republic of Lebanon.

If Masnick cut the hyperbole and just said, as he does at the beginning, that we are developing a worldwide culture that thanks of IP as a generic problem-solver for commercial, cultural or personal disappointment — why, he’d be right on.

And the fact is the Jews did “steal” falafel.  But they also stole pizza, too, which a million Israeli children think was invented by Ben Gurion.  (They also stole “Flatbush,” but that’s a topic for a different blog.)  Yet for some reason, Sicily has managed to attract its share of tourist dollars without inventing new tortes torts on which to slather its grievances against the you-know-whos.

Either way, pass the falafel — we’re still pretty hungry …

UPDATE:  Marty Schwimmer digs in a tad more analytically:

The Lebanese entity is likely thinking about appellations of origin (Champagne sparkling wine, Feta cheese, Parma ham) which are conventional methods of protecting a geographic name associated with a food but can’t be used to protect the generic name. “Lebanon” is (was?) potentially protectable for cedars of Lebanon.

Originally posted 2010-02-08 23:24:32. Republished by Old Post Promoter

They embody our passion, our vision and our values . . . They are descriptive of our products on many levels. Firefly is a business given life through ingenuity, hard work, the contributions of our employees and the trust of the many clients we serve. We’re prepared to protect that.

Wow, sounds awesome!  You go, Firefly guys!  All protectin’ things and stuff.

And what exactly is the “that” you’re protecting, and how?  Well, the “how” is a trademark infringement lawsuit.  Hey–that’s my passion too!!  And, and??  And the “what” is?

The “what” is the word “gadget” — or rather, the “trademark” GADGET. And the”infringement” of it.

Well, so?  Maybe it’s a mark for a kind of gum, huh?  Or a depilatory cream?  If you were to start a magazine called Gadget maybe that could be a good trademark, long as it wasn’t about, you know, gadgets.  I can think of lots and lots of things that go good with GADGET.  Lots of things, I should add, that embody our passion, our vision and our values.  I mean theirs. Of those things.

Okay, then, so do you give up yet?  Want to know what the trademark’s for?

The trademarks are for its “Website Gadget,” a content management system, and “Gadget,” a user-friendly application that works with its “Website Gadget.”

The company received a state trademark for “Website Gadget” in 2002 and federal trademarks for both in 2009.

Oh, you mean the registration covers a kind software… gadget?

Well, no.  No, no!  See, read right here:

They embody our passion, our vision and our values . . .   They are descriptive of our products on many levels. Firefly is a business given life through ingenuity, hard work, the contributions of our employees and the trust of the many clients we serve. We’re prepared to protect that.

Ohhh.  Software gadgets… and baloney!!

If it weren’t Google these Fireflies are suing I’d be depressed about this, almost.  Now I’m just going to enjoy it, I think!  What with the passion and the values.

In terms of suing Google, though, I wouldn’t put a lot of stock on the “vision” thing, so much.

(Hat tip to Paul Raynor Keating!)

The Merriam-Webster Online dictionary has a cute little feature:  The “Top Ten Words from Trademarks.”  You know, mainly the usual suspects:  Band-Aids, etc.  It’s a study in what can go wrong if you don’t “police” your trademark, yada-yada-yada.

A Webster, not a webster

Speaking of brand management and equity, when I saw this link — hat-tip to Jane Coleman! — it reminded me of how much the Merriam-Webster people need to do stuff like this to build back the primacy they ought to have online but which I have the impression has been ceded to Dictionary.com.

That, in turn, made me think of one very famous “word from a trademark” — the one damnable genericized mark — Merriam-Webster left out of the list!

Originally posted 2009-02-05 00:15:35. Republished by Old Post Promoter

Hope this is fair use!

Last week it was the O-Team preparing for lightning raids on Obama-brand-equity rustlers.  But maybe the Obama Administration needs to set its own  White House  house in order, as the AP reports that the AP is coming after President Obama for its piece of icon pie.  It turns out that The Image is based on, well, someone else’s image:

Designed by Shepard Fairey, a Los-Angeles based street artist, the image has led to sales of hundreds of thousands of posters and stickers, has become so much in demand that copies signed by Fairey have been purchased for thousands of dollars on eBay.

The image, Fairey has acknowledged, is based on an Associated Press photograph, taken in April 2006 by Manny Garcia on assignment for the AP at the National Press Club in Washington.

The AP says it owns the copyright, and wants credit and compensation. Fairey disagrees.

“The Associated Press has determined that the photograph used in the poster is an AP photo and that its use required permission,” the AP’s director of media relations, Paul Colford, said in a statement.

“AP safeguards its assets and looks at these events on a case-by-case basis. We have reached out to Mr. Fairey’s attorney and are in discussions. We hope for an amicable solution.”

“We believe fair use protects Shepard’s right to do what he did here,” says Fairey’s attorney, Anthony Falzone, executive director of the Fair Use Project at Stanford University and a lecturer at the Stanford Law School. “It wouldn’t be appropriate to comment beyond that at this time because we are in discussions about this with the AP.”

Yes, the question of photo-into-artwork is a longstanding and dicey one in copyright law.  There is the issue of fair use, and of whether the new work is “transformative.”  This particular application of the question is discussed thoughtfully here, here and here.

This should be settled, though.  The President really kind of has his hands full already, you know?

UPDATE from Randazza (via @gfiremark):

Apparently Shepard Fairey lied to his lawyers about which photo of Barack Obama formed the basis for his iconic HOPE poster. (source) The sad thing is, it shouldn’t matter. The poster is clearly fair use.