“Rethinking Trademark Fair Use” Now Posted:

My full-length article about the practical problems with trademark fair use (and possible reforms) is now available on SSRN. It will appear in the Iowa Law Review at the end of 2008. A shorter “prequel” was published earlier this year.

This is the abstract of the new paper, entitled Rethinking Trademark Fair Use:

The ever-expanding scope and strength of trademark rights has caused justifiable fears of a threat to free expression. Until now, however, concerned scholars generally focused on perfecting the substance of legal rules that balance free speech against other goals. This effort is misplaced because most cases raising these issues in recent years ended in judicial decisions that favored speech. The real danger arises from the procedural structure of trademark law’s various “fair use” doctrines, which generate excessive ambiguity and prolong litigation before ever reaching such positive outcomes. Resulting administrative costs discourage speakers from using trademarks expressively in the first place, creating a classic chilling effect. This Article is the first to analyze these problems with trademark fair use comprehensively and recommend pragmatic reform to address the problems. Instead of adding more bells and whistles to already complex law, we should craft simpler affirmative defenses that reduce uncertainty and allow for quick adjudication.

I’d welcome any and all comments, either here or off line!

Posted by mikki at 04:04 PM | Permalink

EFF forces Lockheed to withdraw trademark claim on B-24 bomber:


Great news: The Electronic Frontier Foundation's Corynne McSherry arm-twisted Lockheed Martin into giving up on their crazy attempt to stop people from posting 3D models of the WWII bombers that they built at government expense, claiming a trademark in the design:

Last month we told you about Lockheed Martin's effort to use trademark infringement claims to cause the removal of digital images of classic military aircraft from TurboSquid, a stock images site. The central mark at issue was the term “B-24,” which Lockheed managed to register as a trademark for use in connection with scale models of airplanes. We sent an open letter to Lockheed’s licensing agency, demanding that they withdraw their improper objections. We're pleased to report that Lockheed has decided to withdraw its claim, and TurboSquid is putting the images back up forthwith.

This is a good outcome, but the problem remains. Because online communication and commerce often depends on intermediaries like TurboSquid, who may not have the resources or the inclination to investigate trademark infringement claims, it is much too easy for trademark owners like Lockheed to ignore fair use and shut down legitimate content. And not every target of improper claims is going to have the resources to push back.

(Thanks, John!)

See also: WWII Bomber: "Trademark Infringement"

Posted by mikki at 09:32 AM | Permalink

Craigslist Fires Back at eBay With Trademark and Unfair Competition Claims:


What began as a boardroom tiff between two leading Internet companies has erupted into a spirited litigation battle. Two weeks after eBay sued Craigslist for diluting its stake in the privately held company, Craigslist has fired back with a suit of its own. The dispute centers around eBay's Kijiji, an online classified site that competes with Craigslist. The complaint claims that, inside eBay, Kijiji was called "craigslist killer" and that eBay put a Kijiji insider on Craigslist's board as a spy.

Posted by mikki at 12:06 PM | Permalink

Second Circuit rejects foreign famous marks doctrine federally, certifies state question:



ITC Ltd. v. Punchgini, Inc., --- F.3d ----, 2007 WL 914742 (2nd Cir.)

The Second Circuit, after a long wait, has finally ruled on the validity of the famous marks exception to the territorial scope of trademark protection – and found no such exception in federal law. Thus, it affirmed the district court’s finding that the plaintiff had abandoned its mark BUKHARA for restaurants in the US, and could not maintain a federal unfair competition claim under §43(a). Significantly, however, it certified to the New York Court of Appeals the questions whether New York recognized the famous marks exception under state law, and if so what standard of fame was required (listing several possibilities, from mere secondary meaning to federal dilution fame). The case isn’t over, but we are well on our way to a clear answer about the validity of the rule in New York, whose decades-old trial court decisions provide the foundation for the claim that the US occasionally does protect famous foreign marks that aren’t in use within its borders.

Turning to less significant matters, the court affirmed the dismissal of plaintiff’s false advertising claim, since plaintiff lacked standing in the absence of evidence that defendant ever made statements comparing its Bukhara Grill to plaintiff’s Bukhara food products sold in the US. Defendant did compare the Bukhara Grill to plaintiff’s New Delhi Bukhara restaurant. Even though a significant percentage of defendant’s customers are of Indian descent, and even if such people are more likely to visit India, the court found any risk to plaintiff’s reputation too attenuated to support standing. Moreover, even if the court accepted plaintiff’s legal claim that well-developed plans to enter a market can support a finding of competitor standing, a question on which it reserved judgment, plaintiff had shown no such well-developed plans.

Posted by mikki at 10:30 PM | Permalink

Is This Use Of The Mark In Commerce?:

MIT Ad Lab: The advent of Internet-based flight tracking technology enables an entirely new kind of skywriting. Gulfstream Aerospace sent up one of their $50M business jets today on an 8.5-hour test flight spanning 11 states for the sole purpose of leaving their mark on the Net in the form of a flight track that spells out 'GV' (the nickname of the Gulfstream V aircraft being flown) when viewed online."

Posted by mikki at 10:53 AM | Permalink

Google's Top-10 Search Terms Dominated By Trademarks:


According to Google's 2006 Year-End Review, dubbed Zeitgeist, or the cultural climate of an era, a majority of the top-ten search terms for 2006 were trademarks. Topping the list is the registered BEBO mark which is held by Bebo.com LLC, a California company that runs a social networking website. Second on the list was MYSPACE, the registered mark associated with Newscorp's $580 million social-networking giant. Next, as a result of a majority of the world catching soccer fever over the summer, "world cup" ranked as the third most searched term... more...

Posted by mikki at 12:03 PM | Permalink

Alexander V. Mühlendahl on dilution law:


Alexander V. Mühlendahl, Vice-President (retired) of the Office for Harmonization in the Internal Market (OHIM); Bardehle, Pagenberg, Munich, Germany: German and Benelux cases are the most prominent examples of non-confusion-based TM protection.

The types of cases: (1) use or registration of a protected mark for dissimilar goods or services in the absence of confusion: ODOL (the German Listerine) [the example used by Schechter in 1927 where use was rejected as a mark for metal goods], DIMPLE, KODAK (refused protection for bathtubs). (2) Detriment to reputation – tarnishment-type cases, MAC Dog/MAC Cat for pet food; Claeryn v. Klarein (gin v. washing detergent, and the similar sound is going to harm the gin on the “rat poison” theory that you don’t want the name to sound like a bad-tasting/dangerous substance). (3) Use of a protected mark as a vehicle for the promotion of goods or services, as when you show a Rolls Royce in an ad for your own products to give them luxury cachet. (4) Use in nontraditional circumstances, such as on the Internet – metatags, etc. (5) Comparative advertising. (6) Noncommercial settings such as criticism.

The first legislation in Europe was confusion based and initially protected only against use on identical or similar goods. Early German case law began in the 1920s, and applied unfair competition law in cases of noncompeting goods (which is conceptually difficult!) and also applied the tort concept of intentionally causing harm to someone else. Eventually people recognized that unfair competition was not the right theory and used theories of interference with names (a right granted by the Civil Code) and interference with existing business (likewise). In recent times, the courts have come back to unfair competition. Even though the goods don’t compete, the user of a famous mark is putting itself in a competitive relationship with the owner and is thus unfairly competing. These rights initially required uniqueness/singularity of the mark – no longer true under the new theory, as long as the mark is well-known to the public.

Benelux law: 1970 law created general tort claim for using the TM in a way which damages the interests of the TM proprietor; no confusion required. Courts held that fame/high reputation was not required either.

The Paris Convention provides for relief when there is a “connection” between goods and services that is detrimental to the TM owner, which has been read as a dilution provision even though connection implies confusion.

EU: The 1988 TM directive and 1993 Community TM Regulation: rights are granted to marks with a “reputation” against use of an identical/similar mark where the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character of the the TM. This is a property theory, and quite a broad one.

Elements of the offense: (1) the earlier mark must have a reputation; (2) the later mark must be identical/similar; (3) the use must be unfair and without due cause; (4) the use must be detrimental to the earlier mark’s reputation, detrimental to its distinctiveness, take advantage of its reputation, or take advantage of its distinctiveness.

ECJ cases: Chevy for detergents – what is the definition of “reputation” and its territorial scope? Answer: some sort of quantitative requirement, but we can’t say how much – a significant proportion of the public to whom the mark is addressed. Geographically: It’s enough if the reputation exists in one part of Benelux, even less than the whole country.

Davidoff and Adidas cases: Can dilution protection be applied to competing goods? Yes, you can still apply a reputation theory even in the absence of confusion. Otherwise TM owner would get broader protection against noncompeting goods than against competing goods, which is senseless. The similarity much be such that the public creates in its mind a link between one mark and the other. He would have thought that the test should be more objective.

The issues still to be decided: What is protected: These days, registered TMs and all other business identifiers. What are “detriment” and “taking advantage”? What is “due cause”?

Posted by mikki at 08:30 PM | Permalink

43(B)log: New federal dilution law applied in "dog of a case":


Friday, November 10, 2006
New federal dilution law applied in "dog of a case"
Beginning the opinion with a barrage of puns, a federal district court has engaged in the first interpretation of the FTDA as amended. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 2006 WL 3182468 (E.D. Va. 2006). Defendant sells, inter alia, dog beds and toys with the "Chewy Vuiton" mark and colored interlocking-letters design, an obvious reference to the similar Louis Vuitton mark and trade dress.

Plaintiff's trademark infringement, dilution, and counterfeiting (!) claims failed, as did its copyright infringement claims. Notably, the district court adopted past precedent that parodies are unlikely to cause dilution, even though the new law doesn't include that in its factors for a court to consider. This is not a criticism; the idea that parody is likely to maintain the distinctive image of the parodied mark, so that the usual weight of factors like similarity doesn't apply, has a long pedigree (if I may indulge my own pun) in interpreting state dilution laws that also don't mention parody. In addition, because the parody was "gentle," it was not tarnishing.

Other tidbits: The court found a small overlap in product lines, since Louis Vuitton makes some high end pet products, but it wasn't significant, given that LV's cheapest product was still roughly twice the price of Haute Diggity Dog's most expensive. As one of HDD's customers pointed out, "if I really thought that a $10 dog toy made out of fluff and stuff was an actual Louis Vuitton product, [then] I would be stupid."

The copyright claim reached the right result on fair use, but without any serious analysis of what it is that LV has copyrighted -- the court treated the name "Louis Vuitton" as part of LV's copyright, which it isn't.

Posted by mikki at 06:29 PM | Permalink

Railroad Alleges Dilution By Law Firm's Commissioned Painting:

A law firm representing railroad workers commissioned, among others, the image above, which depicts a Burlington Northern Santa Fe train. BNSF protested the usage alleging dilution. Demand letters and response linked to in this article from Public Citizen Litigation Group (which is representing the law firm).

Posted by mikki at 07:29 PM | Permalink

Google ducks a legal bullet | Perspectives | CNET News.com:


In the mostly uncharted territory of Internet jurisprudence, Google's policy of selling keywords has won a legal reprieve--at least for now.

A recent court ruling says Google is within its rights to include Internet links from competitors to a trademark holder when people search on the corporate name.

In a trademark lawsuit, computer franchiser Rescuecom had complained that when people typed its name into the Google search engine, the results would include URLs from competing Web sites. While U.S. District Court Judge Norman Mordue accepted the allegations in the trademark lawsuit Rescuecom filed against Google as true, he still dismissed the case.

Posted by mikki at 11:44 AM | Permalink

The Columbus Dispatch - Business:


For decades, the yellow happy-face symbol has encouraged millions to smile.

But now a bitter legal battle over smiley could be enough to make the happy little symbol frown.

Wal-Mart Stores Inc., which uses a yellow happy face as a signature image, is saying that it has exclusive rights to the familiar image, at least among department stores.

It is fighting a French native who has earned millions in licensing fees on smiley’s back since the early 1970s, when he began securing trademarks for the happy face around the world.

The two sides are expected to wrap up their cases before the U.S. Patent and Trademark Office in the summer, with a ruling sure to bring a smile to one side or another.

If Wal-Mart prevails, it could keep its competitors from festooning the symbol on plastic bags, name badges, balloons, handbags and just about anything else sold in stores, or the ads used to promote them.

Posted by mikki at 01:47 PM | Permalink

Beatles lose Apple court battle:


The Beatles lose their High Court battle with Apple Computer over its iTunes download store.

Posted by mikki at 01:17 PM | Permalink

Trademarks Are A Means To Extend Leverage Beyond Patent Expiration:

Posted by mikki at 03:29 PM | Permalink

DesMoinesRegister.com:


Two Des Moines companies have found themselves in the middle of separate trademark disputes, with one also being accused of patent infringement by one of the nation's largest makers of health care products.

Johnson & Johnson and a subsidiary, McNeil-PPC Inc., sued Qualis Inc. last week in U.S. District Court in Des Moines. They alleged that Qualis has spent the past two years selling "warming liquid personal lubricants" to three major pharmacy chains in packages that look remarkably like those produced by McNeil's K-Y brand.

Johnson & Johnson also alleged that since February, Qualis has violated its patent on the composition and methods of use for the K-Y Warming Liquid. The plaintiffs said their product is used, among other things, to "enhance the intimacy of the sexual experience."

Posted by mikki at 06:50 PM | Permalink

Could Holograms Be The Next Generation Of Trademarks?:

Posted by mikki at 05:20 PM | Permalink

ag-ip-news.com (Intellectual Property News Agency)AGIPNEWS2816:


GENEVA - The World Intellectual Property Organization (WIPO) announced in a Tuesday press release that the Director General Dr. Kamil Idris, in the presence of Singapore’s Deputy Prime Minister, Professor S. Jayakumar, opened on March 13, 2006, a diplomatic conference on intellectual property (IP) for a new treaty in the field of trademarks.

It is the first time that a diplomatic conference organized by WIPO is held in Asia. On March 14, 2006, Dr. Idris attended the first plenary session, which resulted in the election of Singapore’s Permanent Representative to the United Nations in Geneva Ambassador Burhan Gafoor, as President of the Diplomatic Conference for the Adoption of a Revised Trademark Law Treaty (TLT).

Posted by mikki at 01:09 PM | Permalink

ag-ip-news.com (Intellectual Property News Agency)AGIPNEWS2807:


GENEVA - A major conference to revise a key international treaty in the field of trademarks, convened by the World Intellectual Property Organization (WIPO), opens on Monday in Singapore in the presence of top officials.

According to a press release by the Organization, the three-week conference will be formally launched by WIPO Director General, Dr. Kamil Idris, in the presence of Singapore’s Deputy Prime Minister and Minister for Law, Professor S. Jayakumar. High-ranking diplomatic delegations from the 183 WIPO member states, many led by senior officials, as well as observer delegations representing the branded goods industry and the trademark profession, will be attending the conference.

Posted by mikki at 08:32 AM | Permalink

Yahoo To Ban Bidding On Competitor Trademarks To Stop Comparison Advertising:


Yahoo No Longer Allow Bidding On Trademarked Terms on our SEW Forums has news that Yahoo will no longer be allowing companies to purchase ads linked to the trademarks of their competitors. From what's being sent to advertisers:

On March 1, 2006, Yahoo! Search Marketing will modify its editorial guidelines regarding the use of keywords containing trademarks. Previously, we allowed competitive advertising by allowing advertisers to bid on third-party trademarks if those advertisers offered detailed comparative information about the trademark owner's products or services in comparison to the competitive products and services that were offered or promoted on the advertiser's site.

In order to more easily deliver quality user experiences when users search on terms that are trademarks, Yahoo! Search Marketing has determined that we will no longer allow bidding on keywords containing competitor trademarks.

Posted by mikki at 03:16 PM | Permalink

Company Files Trademark Suit Against Google Over...:


Company Files Trademark Suit Against Google Over Ads

Posted by mikki at 12:52 PM | Permalink

Logo Not Copyright Management Information Under DMCA:

Removal of a trademark logo and link is not 'removal of copyright management information' as barred by the DMCA. The District Court for New Jersey dimissed a copyright claim, interpretating 'copyright management information' as being part of an automated system, not part of a manual system (such as affixation of a copyright notice).

IQ Group v. Weisner Publishing, 03-5221 (D NJ Jan. 10, 2006) (via Rutgers, via BNA).

Posted by mikki at 12:22 PM | Permalink

Domain Name Containing Trademark Translation is Determined Confusingly Similar:


Interesting WIPO case (D2005-1085): Complainant (Saint-Exupery estate) owns "Le Petit Prince" in EU, US, and other countries. The translation of "Le Petit Prince" is "The little prince". Respondent registered 'thelittleprince.com'. Is such a domain name confusingly similar to the trademark?

Posted by mikki at 12:20 PM | Permalink

The Million TM-infringement homepage? (Wendy Seltzer):

How many trademark infringements can you spot in the The Million Dollar Homepage? Among all the ads for free porn, free domain names, and free gambling (only the first click is free), I spot least eBay and Yahoo! logos that don't go to those companies' websites. I can't tell whether they're associated listing services, click-through affiliate links, or phishing expeditions, but I imagine the companies would have a decent trademark claim against someone who used the logos for unrelated commercial gain. Even those offering companion services, such as eBay listing facilitators, might not win with a TM fair use defense.

See this Washington Post story for more on the site and its bubble-story.

Posted by mikki at 06:46 PM | Permalink

Jury Rules for Polo Group in Logo Suit: "NEW YORK-A jury found Thursday that the United States Polo Association and Jordache Limited can use horse logos that Polo Ralph Lauren said infringed on the trademarks of its famous horsemen logos."

(Via FindLaw: Top Legal Headlines.)

Posted by mikki at 02:33 PM | Permalink

JBoss denies running a trademark monopoly | CNET News.com: "BARCELONA, Spain--JBoss has been accused of using its trademark to create a monopoly, but the company insists that it is merely protecting its brand. Rickard Oberg, who claims to be a co-founder of JBoss, said in a blog last week that JBoss' trademark policy contradicts the open-source ideology. 'The use of trademarks, which, in the case of 'JBoss,' covers both the product and any related services, to stifle competition is a practice which very much defeats the purpose of open source and FOSS (free and open-source software), and is designed to create a monopoly situation whereby only JBoss Inc. and partners can offer such services, coupled with a pricing strategy that is quite aggressive and far from 'free,'' Oberg wrote. But Marc Fleury, co-founder and chief executive of JBoss, denied that its trademark policy prevents companies from offering support around open-source products covered by the JBoss trademark."

(Via Cnet.)

Posted by mikki at 05:27 PM | Permalink