A Moron In A Hurry

January 29, 2007

Levi’s Suing Everyone Over Jeans Designs

Filed under: trademark — nick @ 1:30 am

NYT has a great look at Levi’s recent deluge into the trademark protection abyss.  From the article:

Executives at Levi’s concede they missed important fashion trends as the denim industry ballooned over the last several years, but they deny the lawsuits are connected to any downturn in their business.

Instead, they say they are simply trying to preserve their intellectual property. Like pharmaceutical companies that sue generic drug makers over their patents or technology companies that duke it out over who owns the right to microchip designs, Levi’s says it is trying to protect its most valuable asset, its trademarks.

Really?  Would old Mr. Strauss not have continued making jeans if he couldn’t prevent others from mimicking his back pocket design?  Silly me, I thought it was all about the product.  But still, does imitating Levi’s back pocket create confusion?

“It was an original design,” [Steven Shaul, the founder and chief executive of Jelessy Jeans] said. “Why would I use Levi’s stitching? If my jeans sell for $200, I would not knock off $40 jeans from Levi’s.”

Very true.  Does anyone paying $200 for jeans think they’re buying Levi’s?

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November 6, 2006

Perfect Pod Coffee

Filed under: Pods, trademark — nick @ 6:31 pm

There people go again using “pod” as some sort of generic term for personal portability enabling device.  This time it’s Perfect Pod, which “lets you create self-contained, single-use pods for use in virtually any coffee machine.”  Another Apple “pod” suit in the works?  Funny enough, this product seems to be the anti-Apple:

Sure there are many machines out there that use the single-use pods, but they’re all one-cup systems and vary the pods enough so you can only use the manufacturer’s own pods in the machine. And what if you are attached to a favorite brand of java, like Starbuck’s or Dunkin’ Donuts? Make it easy by making it in advance. Make it disposable. Make it in the perfect strength. Make as many cups as you want with one pod. Make it your favorite blend. Make it Perfect Pod.

Apple’s FairPlay certainly does make their pod less than perfect and I’m not sure who’s going to confuse coffee with digital music.

Via BB.

October 25, 2006

Polluter Intimidates Environmental Group with TM Threat

Filed under: trademark — nick @ 6:27 pm

TXU, accused of being a major Texas polluter, has threatened suit for trademark infringement against Downwinders at Risk, a small Texas environmental group, over the group’s eight foot tall effigy depicting Texas Governor Rick Perry kissing a smokestack covered with the logos of several other Texas polluters.


The TXU mark is the blue one at the top.  It’s so tiny.

Public Citizen is involved in the case and decries TXU’s abuse of trademark law to stifle protected speech (the link also leads to copies of the correspondence between PC, DAR, and TXU).

Since not even a moron in a hurry would think TXU is the source of this protest piece, DAR’s use of the TXU logo should clearly not  be trademark infringement.  From Mattel, Inc. v. MCA Records, 296 F.3d 894, 900 (9th Cir. 2002) (at bottom of page 10488):

The First Amendment may offer little protection for a competitor who labels its commercial good with a confusingly similar mark, but “trademark rights do not entitle the owner to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view.” L.L. Bean, Inc. v. Drake Publishers, Inc. 811 F.2d 26, 29 (1st Cir. 1987). Were we to ignore the expressive value that some marks assume, trademark rights would grow to encroach upon the zone protected by the First Amendment. See Yankee Publ’g, Inc. v. News Am. Publ’g, Inc., 809 F.Supp 267, 276 (SDNY 1992).  When unauthorized use of another’s mark is part of a communicative message and not a source identifier, the First Amendment is implicated in opposition to the trademark right.”). Simply put, the trademark owner does not have the right to control public discourse whenever the public imbues his mark with a meaning beyond its source-identifying function. See Anti-Monopoly, Inc. v. Gen Mills Fun Group, 611 F.2d 296, 301 (9th Cir. 1979).  (“It is the source-denoting function which trademark laws protect, and nothing more.”).

Dilution works differently and is concerned with free riding on the fame or good will of a well known mark.  However, the Federal Trademark Dilution Act section (A)(4)(B) creates an exemption for “noncommercial use of a mark,” even if dilution exists.  DAR is “diluting” TXU’s mark (ie. using TXU’s trademark to “mischaracterize” it as a polluter), but is doing so in a noncommercial way.  Since DAR’s use is political speech and not commercial, it should fall under the FTDA’s safe harbor.

Via Techdirt.

August 15, 2006

What’s the Opposite of a Knock Off?

Filed under: trademark — nick @ 1:51 pm

A knock up, which may not be as legally troublesome as the knock off.  From Counterfeit Chic.  Seems to me that an upscale luxury version of a popular item is still trading on the good will of the original product, a central argument that luxury brands use against thier imitators, which raises the question of at what point does a fashion homage cross the line?

August 9, 2006

Raiding Poor Countries for Trademarks

Filed under: trademark — nick @ 1:56 pm

Though I don’t know much about plants or medicine, there is a great post on BoingBoing about Brazil’s efforts to prevent foreign corporations from grabbing patents and trademarks from naturally occurring third-world fauna.  Brazil has apparently filed a list of more than 5,000 names of plants with the WIPO and the WTO in an attempt to show that these names are already in use and thus can’t be trademarked by foreign corporations.  It’s not all bad news, however, as BoingBoing points out that UC-Berkeley signed an agreement with the Samoan government to share any royalties from an anti-AIDS drug developed from the use of a native Samoan tree.  While it might be troubling that a nation can claim “national sovereignty over the gene sequence” of an indigenous plant, such an agreement is a better solution than having a foreign corporation assert similar rights through IP law.  Afterall, if Alaskan residents get a $1,000 check each year from the state’s oil revenues, why shouldn’t Brazil or Samoa be entitled to reward their citizens similarly for a native plant being a cure for a terrible disease?  Sounds like the beginning of a territorial moral right.

August 1, 2006

Dooby Dooby Dew

Filed under: trademark — nick @ 5:30 pm

Usually I’m a Pepsi drinker, something about the flatter and more sugary taste than Coke does it for me, but today I decided to live dangerously and bought a can of Mountain Dew. A futile attempt to liven up my life by switching brands, which is a flawed strategy that is also a waste of money.

I haven’t had a Dew in years – my fellow intern Prasanna says it’s so “premillenium” – so I was startled by the new look of the can. The new design has caused some concern for being pro-communist, but even more troubling is what appears to be blatant IP infringement going on right there in front of us.

Dew. Be Dew. Be Dew.

Upon noticing that little slogan at the bottom I had trouble figuring it out. Then it hit me. Dew. Be. Dew. Be. Dew is also easily written as Dooby Dooby Do. And we all remember that as the jingle from the Bud Ice Penguin ads of years back.

So being an aspiring IP attorney, I have to ask if this means anything. Is Dooby Dooby Do trademarked? According to the USPTO ‘Dooby Dooby Do’ was an Anheuser-Busch mark from 1997 to 2004, when the mark was cancelled. All I know is that I am in the awkward position of staring at a can of Mountain Dew while singing the Bud Ice Penguin song to myself. If that isn’t a prime example of being confused (in probably multiple senses) then I’m not sure what is.

Perhaps copyright then, since Dooby Dooby Do comes from a song (have to protect those musicians) and is also from a commercial; someone has to have some claim over it, right? Perhaps not, since short phrases and slogans are not covered by copyright.

In the end, it appears that Mountain Dew is thus free use a homonym of Bud Ice’s cancelled mark on its can without fear of lawsuit. But of course, if anyone at Bud was paying attention, they might want to let some free advertising work itself out. After all, the beauty of the Bud Ice Penguin was that it would lurk in the shadows while it kept people in constant fear – quite subliminal – which is exactly what is happening now. Man I’d like a beer. Dew me barkeep.

July 22, 2006

Name that Smell

Filed under: copyright, patents, trademark — nick @ 11:18 am

There has been lots of discussion on-line recently as to the IP status of scents.  Here is a quick round-up of the discussion and a technological development that could change everything.

It seems that the stink first wafted over the Atlantic due to recent decisions in France and the Netherlands that have recognized copyrights in perfumes. Counterfeit Chic was the first to report on this and the NYT followed (or here) up a few weeks later.

Info/Law thinks that a smell, more specifically a perfume, should be protected by patent law rather than copyright, but also notes the way that the French are much more protective of the moral rights of artists.

There’s also the question of trademarking a smell. As The Trademark Blog has pointed out, a Lituanian pizza parlor is arguing that the smell of their pizza has secondary meaning that affords it trademark protection:

“Opinion polls show that many consumers in Lithuania identify the pleasure of eating pizza with our trademark,” said Mindaugas Gumauskas, marketing director of the [pizza chain]. “This makes us believe that the scent of freshly baked pizza is a subject to our copyright.”

If the request is granted, it does not mean that other pizzerias would have to stop making the oven-baked dish, but only [the chain] would be able to make the claim that its food smells like freshly baked pizza.

Thus highlighting the potential peril of such an expansion of intellectual property rights.

Since trademark is all about brand protection, there are always people looking to protect nontraditional marks such as smells, tastes, feels, and etc. Here’s also a bit of history behind protecting nontraditional marks.

Generally speaking, smells have usually been denied protection because there is no good way to define one. For instance, registering a trademark requires a graphical representation of the mark, which is impossible for a smell, as the Court of First Instance of the EC ruled in Eden v. OHIM in denying trademark protection for the smell of strawberries.

A patent requires both that the subject being patented be new and non-obvious.  Using the smell of strawberries as an example, the scent is clearly neither new nor non-obvious; everyone knows and can recognize the smell of strawberries.  However, gene patents have become fairly commonplace since a case, Diamond v. Chakrabarty, 447 US 303(1980), first loosened the accepted ban on patenting living organisms.  There, SCOTUS said a man-made organism was patentable.  Gene and other bio patent seekers attempt to exploit this kind of loophole, with moderate success, through the drafting of narrow claims over extracted or purified biological elements.  Thus, while a regularly occurring gene as it occurs in nature might not be patentable, using mechanical processes to isolate it increases the odds that the lab version can be patentable.  Though, gene patents are hotly contested as being incompatible with the plain meaning of patent law, especially as more obvious biological phenomena are being patented.

So what do gene patents have to do with scents?  In 2004, Dr. Richard Axel and Linda Buck were awarded the Nobel Prize for scientifically describing how scents are processed by the nose.  It should be no surprise then that, based on this discovery, researchers are working on a machine that is able to record a smell and play it back.  If successful, not only does this mean that the smell of my mother’s one of a kind apple pie – using a mix of McIntosh and McCoun apples with cinnamon, nutmeg, and a dash of cardamom – could be recorded and coded (ie. fixed in tangible form), it could also be duplicated for all sorts of uses.

And once there’s money to be made the IP lawyers and suits will follow.  If you fix it, they will come.  Such a smell machine would break down many of the practical barriers in denying scents IP protection.  Copyright?  Here’s the olfactory code of my smell, much like a computer program.  Trademark?  With the ability to reproduce at will and package ingeniously, building secondary meaning is no longer so difficult or implausible.  Patent?  Like with gene patents, if I modify the smell of strawberries and can isolate it from its natural source, what’s stopping the USPTO from giving me a patent?  All of a sudden, what seems practical – scents are too ill-defined for IP protection – starts to smell a bit fishy.

July 18, 2006

Judges Not Above the Rest of Us

Filed under: Judiciary, trademark — nick @ 7:30 pm

What would happen if a judge, who confesses to owning counterfeit goods, presided over a trademark case involving counterfeiting? An interesting anecdote from Counterfeit Chic.

July 7, 2006

OED Says Google is a Verb

Filed under: trademark — nick @ 4:13 pm

The OED has officially announced that using Google as a verb is now an acceptable use of the English language. The announcement means that Google’s efforts to protect it’s name from becoming a generic term for Internet search must begin in earnest.

Here are some historical cases of famous marks becoming generic:

Here’s an overview of trademark law and includes a helpful section on the danger of genericism.

An interesting thought is whether Google could sue the OED over this. It could be argued that by validating the use of “Google” as a verb, the OED in effect is diluting the strength of the mark, especially since the OED is the authorotative source on the usage of the English language. If that were to occur, I would like to see the OED argue that its definitions are subject to its own subjective editorial discretion, and thus that they’re not at fault, just as Google tries to defend itself in disputes over its listings.

Evan Brown of InternetCases fame has a good look at verbs and genericide.

Yell Sues Yellowikis

Filed under: trademark, Wikis — nick @ 2:32 pm

Yell, the largest publisher of Yellow Pages in the world, has reportedly threatened to sue the site Yellowikis out of existence, claiming trademark infringement:

Yell is demanding that Paul and Rosa close down the website, transfer the domain names to Yell and agree to pay damages to Yell for loss of profits. Yell made $2.4bn in 2005, whereas Yellowikis had a loss of $500. The $500 was used to print T-shirts promoting Yellowikis at the Wikimania conference in Frankfurt.

The term Yellow Pages should probably be considered generic at this point, since many wouldn’t be able to connect the term with a company and generally consider Yellow Pages to apply to any yellow book that contains a directory, regardless of its source. In addition, infringement would require some showing of consumer confusion, and finding a sufficient number of people who confuse Yell with Yellowikis doesn’t seem likely. And according to Wikipedia, the term Yellow Pages and the walking fingers logo have been in the public domain since the 1950s when AT&T failed to renew their registrations.

Yellowikis was founded by Paul Youltin and his 14 year old daughter who thought it unfair that small businesses couldn’t be added to Wikipedia since they were deemed “non-encyclopedic.” ZDNet has a case study of Yellowikis from last year, noting that the company has the potential to be disruptive in its market by utilizing the wiki; that is, disruptive in the sense of being cheaper, bigger, and better. It’s should be obvious now that advertising supported physical phonebooks are on the way out, as the number of people who use the internet to find businesses is ever increasing, making phonebooks irrelevant.

While the threat of a suit may not proceed any further, in a sense, Yell is almost obligated to make a fuss in order to defend whatever trademark claims it thinks it has, much in the same way that Xerox has to police the use of its name to prevent it from becoming a generic term for photocopying, for once a mark becomes generic it loses its trademark protection.

June 14, 2006

Legal Liability of Drop-Down Menus

Filed under: internet, trademark — nick @ 2:01 pm

Just found a great site called Internet Cases run by Evan Brown. He reports on a recent decision on personal liability in trademark disputes.

The case, Qwest Comm. Int'l, Inc. v. Sonny Corp., (Slip Op.) 2006 WL 1319451 (W.D. Wash., May 15, 2006), read here, stands for the proposition that a "Select a State" drop-down menu on a purchase webpage constitutes purposeful availment for establishing personal jurisdiction over an out-of-state defendant.

Internet Cases has a great rundown of the case. Basically, in order for Qwest to sue Sonny Corp., a Michigan business doing business online, in Washington state it has to show that Sonny directed activity towards the state of Washington in order to business there. It may seem odd to think that selling goods online could expose you to being sued in any state where your website is available, but generally, courts require something more than mere passive commercial activity (ie. just running a website). Sonny Corp. runs Questy.com, a site that sells "Qwesty's," stuffed question marks kids can use to signal preoccupied parents that they have a question that needs answering. Qwest's lawsuit claims, among other things, that Sonny's use of "Qwesty" diluted its trademark.

The court looked at this:

Qwesty.com order page
…and decided it was enough to say that Sonny Corp. directed its actions towards the state of Washington.

If the Qwesty site did not have a drop-down menu, if it required customers to enter their state into a field on their own, then it would probably have been off the hook. The decision, however, seems to require that website operators who use such drop-down menus either accept personal jurisdiction in all states or that they include in those menus only the states that they agree to be sued in. Both seem to be an excessive regulation over how websites are created.

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