Discourse.net

Everything is a Law School Hypo

I enjoyed this video, Barbri Girl, from the 2008 NYU Law Revue.

I’m afraid, however, that the reason I liked it so much isn’t simply that it’s sort of funny, and at its start so true to life. No, it’s because there’s a legal issue embedded in here — probably unintentionally — regarding whether anyone has grounds to sue over this video. And that just seems so appropriate given the subject matter.

See, the song on which this skit is based is the wonderful/awful “Barbie Girl” by Aqua, a Danish-Norwegian pop-punk band. The song was the subject of a major trademark lawsuit by Mattel.

A video accompanying the original song is available on YouTube. I’m pretty sure I saw a much less camp, and somewhat harder-edged, performance of it back when the song was being litigated — something vaguely like a studio version of the start of this — but maybe I’m imagining things.

Getting back to the law, Mattel was basically handed its head on a plate by the 9th Circuit. In a decision sure to be in every IP casebook, Judge Alex Kozinski not only said the song was protected as a parody under the First Amendment but concluded the decision with the admonition that, “The parties are advised to chill.” See Mattel Inc. v. MCA Records Inc., 296 F.3d 894 (2002).

But here’s where the fun starts: “Barbie Girl” was clearly a parody of the Barbie image. This video, however, is not. But that’s ok because as “BAR/BRI Girl” the trademark being parodied isn’t Mattel’s so they have no grounds for suit.

As for BAR/BRI themselves, they can’t sue, for the same reasons that Mattel’s suit against Aqua was baseless.

But here comes the (weak, legal) joke: the people who have a potential right of action against the NYU law students in the Barbri Girl video are Aqua! It’s a real stretch to say that the Barbri Girl video is a parody of Aqua’s song. [Contrast Barbri Girl with this “Ugly Girl” parody song, sometimes attributed to Weird Al Yankovic, here supported by some Sims 2 Machinima.] Rather, BarBri Girl appropriates the tune (and more) of Barbie Girl for a satirical purpose other than parody of the source. And — unless copyright law has changed since I last looked — that sort of satire isn’t necessarily a protected First Amendment use of a copyrighted tune, cf. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994); Dr. Seuss Enterprises v. Penguin Books USA, 109 F.3d 1394 (9th Cir. 1997).

But don’t panic. Despite using the whole tune, and some of the look and feel of the original video, Barbri Girl is probably fair-use anyway, since the use is not commercially motivated and indeed is arguably for nonprofit educational purposes, and will have no “negative effect … upon the potential market for or value of the copyrighted work.” (per the Supreme Court in the 2 Live Crew decision).

And most importantly, I don’t think Aqua is going to sue.

By the way, none of this stuff is going to be on the bar exam.

Johnson & Johnson Sues Red Cross -- And Loses

Almost a year ago, I blogged about an unusual trademark lawsuit, Johnson & Johnson Sues Red Cross, which I introduced as “a trademark lawsuit today that sounds as if it wants to be a law school exam, or maybe the background noise for a legal thriller.”

Well, most of the case got decided this week and it didn’t go well for J&J: Judge Sides With Red Cross Over Trademark. Interestingly, the court relied most heavily on 18 U.S.C. § 706, which hadn’t been part of my first take on the case, although it was pointed out by James Grimmelman in a comment.

Blue Jeans Cable Responds to a Demand Letter

The letter reprinted at Blue Jeans Cable Strikes Back - Response to Monster Cable makes for some fun reading.

Here’s how it starts,

RE: Your letter, received April Fools’ Day

Dear Monster Lawyers,

Let me begin by stating, without equivocation, that I have no interest whatsoever in infringing upon any intellectual property belonging to Monster Cable. Indeed, the less my customers think my products resemble Monster’s, in form or in function, the better.

I’m not a patent lawyer, but the trademark and trade dress parts of this letter look pretty good to me, and the patent stuff was fun to read — seven words I never wrote in that particular order before. I even laughed.

(Thanks to OJ for the link.)

Can Typosquatting Be Counterfeiting?

This seems to be media day. Brian Krebs quoted me in the Washingtonpost.com story Dell Takes Cybersquatters to Court.

The story there is about Dell bringing a very large and organized case against a bunch of domain tasters (people who register domain names for a very brief period then drop them, so they don’t have to pay for them) who were apparently typosquatting on a grand scale.

What makes the story interesting is that Dell’s lawyers threw in a counterfeiting claim into their complaint. It’s artfully worded, but the essence of it is that the counterfeits are the domain names, and/or the act of putting up web sites at the domain names that have popups or pop-under ads.

Tactically, this assertion has great value for Dell: it got the judge to treat the complaint the way that courts treat claims that there’s a warehouse of phony handbags somewhere; Dell got to file under seal, and to stage a raid before service to impound computers and other evidence. And the statutory damages for counterfeiting are higher than for cybersquatting.

But, and here’s the rub, it seems pretty clear to me that the trademark laws don’t contemplate this sort of cybersquatting/typosquatting, however heinous and massive, as being called counterfeiting. This isn’t like affixing a false mark to some good to make consumers buy it. And even if one were to say that consumers “buy” web sites by “paying” their attention, I don’t understand anyone to suggest that the defendants’ sites looked like Dell’s, just (some of) the domain names. Indeed some of the names, although they had “dell” in them, were so long and weird that you have to wonder how anyone could be confused, or how they could even be seen as diluting Dell’s marks. Even so, though, if the complaint’s facts are true, there were an awful lot of other names that were close enough to Dell’s be actionable.

Overall, it’s a very well-written complaint and makes the defendants sound very guilty of trademark infringement, cybersquatting, and various Florida state-law unfair competition claims and the like — but not of counterfeiting. The attempt to re-characterize typosquatting, even massive typosquatting, as counterfeiting seems to me to be an unusually far-fetched construction of the relevant law, but I’m open to correction from people who know counterfeiting law better than I do.

Burgers

Forgot to mention that I was on the radio yesterday, on Marketplace PM in Jeremy Hobson’s entertaining story, There’s only one Burger King in this town.

And, yes, it’s about trademarks again.

How Facts Can Ruin a Good Story

Although I haven’t taught trademark law in some time, and actually don’t have plans to do so again any time soon, I keep half an eye on some trademark blogs and mailing lists. And this tale, from a posting on an INTA-sponsored mailing list really caught my eye:

I had hoped that when the U.S. finally agreed to the Madrid Protocol that we were taking some steps toward a global trademark practice (and respect for the rest of the world), but the USPTO seems intent on its old “do it our way” mentality. As an American who is generally proud of what I consider the best trademark office in the world, I am dismayed by some lapses of global thinking:

Exhibit A is the ridiculous requirement to translate foreign entities into a corresponding U.S. entity. Why can’t we respect the corporate forms of other nations? Would it do some harm to U.S. trademark practice to list a trademark owner as a GmbH or an S.A. or an Srl? This is certainly more accurate than trying to fit these square pegs into the round holes of U.S. entity forms.

…earlier this year I had an Office Action where the applicant was from Calcutta, India and listed its entity type as an Indian corporation. The Examiner required that I specify whether the applicant was an American Indian tribe, and if so to name the tribe. When I complained to the Examiner’s senior attorney that this was just ignorant to ask of a Calcutta firm (and embarrassing to have to explain to them), the senior attorney defended the Examiner and praised his care for precision in raising this issue. I think we have a way to go in welcoming foreign applicants.

But the great thing about practitioner mailing lists, is that in addition to providing great little horror stories, they also keep you up to date. In the very next posting, I learned that such stories may be a thing of the past:

The newly revised TMEP eliminates this requirement. See TMEP 803.03(i).

And indeed the new TMEP 803.03 appears to do just that, as this partial quote from paragraph (i) demonstrates,

A statement of the accepted foreign designation (or an abbreviation therefor) of the legal entity of a foreign applicant is sufficient. The applicant may specify the legal entity by indicating the entity that would be its equivalent in the United States, but is not required to do so. The examining attorney should inquire further into the specific nature of a foreign legal entity if it is not clear that it is in fact a designation of legal entity in the particular country. The examining attorney may request a description of the nature of the foreign entity, if necessary.

Which is good news, but ruins a good story.

It also reinforces a general belief of mine: although it too has its quirks (see, e.g. dilution!), and its extremists (see, e.g. ICANN on domain names) both the Lanham Act specifically and trademark law generally tend to be among the more sensible bodies of law.

Marketplace

If you listened to the very end of this radio item from Marketplace, I have a few seconds talking about trademarks. Or you could skip that and just read about what ICANN is up to with its Internationalized Domain Names testbed.

Johnson & Johnson Sues Red Cross

The New York Times has a story about a trademark lawsuit today that sounds as if it wants to be a law school exam, or maybe the background noise for a legal thriller.

Johnson & Johnson (J&J) is suing the American Red Cross (ARC) for trademark violations. The chronology is a little complicated, but the lawsuit is very simple: J&J alleges that it has a deal with the ARC, in which J&J gets exclusive rights to commercial use of the red cross symbol on bandages and the like. That deal is over a hundred years old (the Rule Against Perpetuities, it seems, doesn’t apply to licenses…). After observing this ban for a century, J&J alleges, few years ago the ARC suddenly licensed the mark to some makers of “humidifiers, medical examination gloves, nail clippers, combs and toothbrushes” and emergency supply kits. J&J says they tried to negotiate, offered mediation, to no avail.

The ARC says the lawsuit is immoral: a spokesman is quoted as the complaint is “obscene” and “simply so that J.& J. can make more money.” (Er, hello? Isn’t that what corporations do?)

But in fact, honoring your agreements is a moral thing to do too, and the NYT article is strangely silent on the question of whether the ARC admits the agreement with J&J exists, or whether it has some claim that the even if it did exist the agreement is now invalid. To me, that’s like the dog that didn’t bark in the nighttime — if the ARC thought the agreement wasn’t valid, wouldn’t it say so?

Ironically, J&J’s original claim on the red cross design mark probably stems from a quirk in trademark law: at least before the most recent amendments, trademark law was strictly national. In other words, just because someone held rights to a mark abroad gave them no advantage in claiming rights over that mark here unless they actually used it here. As a result, it was pretty common for Americans to go abroad, see a nice trademark, come home and start an unrelated business using the mark, then win a lawsuit when the original foreign company tried to come into the US market.

It looks, from this timeline I’ve constructed (corrections welcomed!) like J&J may have done just that:

1863: The International Committee of the Red Cross (ICRC) is founded in Geneva, Switzerland, as a private humanitarian institution.

1887: The year J&J claim to have first used the mark in commerce in the USA.

1895: The ARC & JJ sign the deal that is the basis of the J&J suit today.

1900: ARC chartered by Congress for non-commercial purposes.

1906: J&J gets a federal registratrion for the red cross mark, citing 1887 as the date of first use

1910: ARC acknowledges there are some senior users of the mark (unclear if it named J&J, however)

1919: The International Federation of Red Cross and Red Crescent Societies (IFRC) founded. As part of the many high-minded things said at this founding, the IFRC leaders suggest they won’t cheapen the mark with mere commerce.

Incidentally, Marketplace Radio is doing a story on all this, and I may be part of it. The show airs at 6:30pm on the east coast on public radio stations. It will be on WAMU if you’re looking for an internet stream.

Update: For non-trademark geeks, I should also perhaps explain that given the way trademark law works, if J&J didn’t sue ARC and the companies that are branding goods based on its licenses, then J&J would risk losing control of its valuable mark. So the facts that J&J is a big, rich multinational, ARC is a humanitarian organization routinely mismanaged by Republicans, and the dollar value of the contracts is small (I heard $5 million), all these are pretty much irrelevant.

If I Were Still Teaching Trademark

If I were still teaching Trademark, I could make something of JewTube. It’s not quite an exam question, but it’s at least a good class discussion. Is it a trademark violation? The chance of confusion is low. YouTube has considerable fame, however, so actual likelihood of confusion may not be required. There’s clearly some overlap in what the sites do: serve up little movies. And the parody defense may be inapplicable, because JewTube does not appear to be a parody — it seems to be serious, for all that there’s not much content there, and what there is won’t detain you long…

But maybe it’s not commercial, so the site survives, so long as it never runs a banner ad.

Anyway, I don’t teach Trademark any more, so I don’t have to worry about any of it, except why the site is so lame.

Google Fights Genericide

Google™ fights to avoid genericide.

“Genericide” is when your trademark becomes a synonym for a thing or activity. Asprin was a trademark once. Xerox™ and Kleenex™ live on the edge of genericide and spend big bucks to prevent it.

If “to Google” something were to come to mean to search for it online regardless of which search engine one used, google or “googling” would have become generic, destroying the trademark — and meaning that competitors could use it too. At present it still clangs a little to say “I googled him on Yahoo” so I think the brand is not yet generic.

But they sure are right to be worried.

"Podcast" is Generic

I'm don't often make legal predictions, but I'm going to go out on this nice sturdy limb here and predict that Apple's attempt to assert trademark rights in the word "podcast" will fail. There are multiple grounds why it should fail (the term is in no way dilutive of "iPod" for one), but if I were a judge I would be very receptive to the suggestion that the term is now generic and thus part of the public domain.

Podcasting is the method of distributing multimedia files, such as audio or video programs, over the Internet using syndication feeds, for playback on mobile devices and personal computers. The term gained wide popularity as a portmanteau of iPod and broadcasting, but was seen before that as an acronym for "portable on demand".

The term podcast, like 'radio', can mean both the content and the method of delivery. The host or author of a podcast is often called a podcaster. Though podcasters' web sites may also offer direct download or streaming of their content, a podcast is distinguished from other formats by its ability to be downloaded automatically using software capable of reading feeds like RSS or Atom.

Incidentally, a quick search at the USPTO finds 20 filings with the word 'podcast' in them...but only two for the word alone. One, dated Feb. 10, 2005, is for "online prerecorded radio or other recorded program over the Internet for purposes of allowing users to download, in electronic audio or video files, information regarding entertainment and educational to MP3s or other portable audio and video players." The other, for "SOUND RECORDING FEATURING AUDIO INFORMATION FOR DOWNLOAD-SPOKEN WORD AND MUSIC" claims a first use in commerce of only Feb. 2006. Neither is from Apple.

I Told You So

As so many of us predicted, law designed to prevent cybersquatting can too easily be mis-used to intimidate core First Amendment speech. Via The Trademark Blog, here's a link to Blogger shuts down Web site that mocked legislator in the Honolulu Advertiser.

An irreverent local blogger has chosen to give up a Web site making fun of state Rep. Bev Harbin after Harbin threatened to take him to court under the state's law against cybersquatting.

Jon Asato, a tour guide and writer, said he agreed to drop the domain names BevHarbin .com and BeverlyHarbin.com after Harbin sent him two letters warning of a civil lawsuit. Asato said his Harbin Web site, which had cartoons that likened Harbin to The Incredible Hulk and the Joker character from the movie "Batman," should be protected as free speech.

The law at issue is a state law, not the federal Anti-Cybersquatting Consumer Protection Act. And I think that any law which reached this sort of political criticism would be unquestionably unconstitutional. But fighting those fights is expensive, and most regular citizens don't have the money and the time to do it. Intimidation works.

In Case You Give a Hoot

In case you care, Ann Bartow explains the trademark law behind the decision in the Hooters case. I especially liked the post title, "Hooters" Loses Its Appeal.

Absurdist Trademark Posting

MARTY SCHWIMMER is not a bicycle or a water-exercise product for men. I am a law professor and I should know.

(Sorry Marty, I couldn't resist.)

On Not Being Catty

In the course of a domain name arbitration awarding mymorganstanleyplatinum.com to Morgan Stanley, arbitrator Richard Hill had this to say,

Respondent maintains that it is a cat, that is, a well-known carnivorous quadruped which has long been domesticated. However, it is equally well-known that the common cat, whose scientific name is Felis domesticus, cannot speak or read or write. Thus, a common cat could not have submitted the Response (or even have registered the disputed domain name). Therefore, either Respondent is a different species of cat, such as the one that stars in the motion picture "Cat From Outer Space," or Respondent's assertion regarding its being a cat is incorrect.

If Respondent is in fact a cat from outer space, then it should have so indicated in its reply, in order to avoid unnecessary perplexity by the Panel. Further, it should have explained why a cat from outer space would allow Mr. Woods to use the disputed domain name. In the absence of such an explanation, the Panel must conclude that, if Respondent is a cat from outer space, then it may have something to hide, and this is indicative of bad faith behavior.

On the other hand, if Respondent's assertion regarding its being a cat is incorrect, then Respondent has undoubtedly attempted to mislead this Panel and has provided incorrect WHOIS information. Such behavior is indicative of bad faith. See Video Direct Distribs. Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that the respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name). ...

The Panel finds that Respondent's assertions that it is a cat provide sufficient evidence to conclude that the Respondent registered and is using the disputed domain name in bad faith. And this despite the fact that the Panel, unlike Queen Victoria, is amused.

Contemptible

Have I mentioned how mean-spirited and contemptible the official UNICCO strike blog is is both tone and content? Here's the latest screed,

With the deadline looming on its 30-day recognition strike, the SEIU has to end its picketing, chanting and tub-thumping today and the few striking workers have to come back to work. Meanwhile, a meeting between all the parties called for by UM President Donna Shalala will convene soon and we expect the message in that gathering will be clear: “Let ‘em vote.” The union really has no alternative except to try and bolster more support among students, but they will soon be departing for summer vacation. It’s over. I feel kind of sorry for the students whose heads have been filled with union mush. But, hey, students and protests used to go hand in hand and it’s actually good to see students seriously engaged in something other than keg parties. And, it’s the last chance they get to stick it to the man before they become the man.

(The "university truth" blog has neither links to individual items, nor does it allow comments, so that link will only take you to a category; look for today's entry, currently at the top.)

Some colleagues of mine have also noted that the site -- especially the main UNICCO page's link to it -- uses colors, type and language in a way meant to evoke the official UM pages. I'm doubtful that this is actually a trademark violation as I think the likelihood of confusion is low; that said there might be an initial interest confusion claim based on this item,

currently found at the UNICCOtruth page with a link to UNICCO's (not UM's!) "UniversityTruth" blog.

I mention this not because I think trademark law should be used to stomp UNICCO's advocacy, and I don't, but rather because it's somewhat surprising that UM's trademark lawyers, normally quite protective of the University's rights, don't seem to have sent a cease and desist letter which I would presume would be immediately complied with by UNICCO, whose customer they are. Just something to think about when UM touts its neutrality...

There Goes Particle Physics

Laura Quilter writes,

derivative work - Nintendo Threatens Cancer Researchers: Sloan-Kettering Cancer Center has apparently received a trademark cease & desist from the Pokémon company (Nintendo) after cancer-related research on the Pokemon gene — which Pandolfi’s lab named four years ago, in 2001 — received headlines like “Pokemon Causes Cancer”. Sloan-Kettering has knuckled under, now calling the gene Zbtb7.

Lots more on this if you follow the link...

I understand why Nintendo were mad, but like Ms. Quilter, I can't understand why the doctors caved in. If their use was non-commercial it is not banned by the the Lanham Act. Even if it was commercial the claim for confusion is nil. The claim for tarnishment under a dilution theory would I think fail under federal law; unlike Ms. Quilter I do think it's possible that some state law claim might have had a little more juice...if the court could keep a straight face...although I agree Nintendo would have to be complete idiots to bring the case and face the bad publicity.

What's next, the estate of James Joyce suing everyone who writes about quarks?

"Sucks" Sites Don't Violate US Trademark Law

We hold today that the noncommercial use of a trademark as the domain name of a website - the subject of which is consumer commentary about the products and services represented by the mark - does not constitute infringement under the Lanham Act.

So says the 9th Circuit in Bosley Medical Institute v. Kremer.

It’s important to keep decisions like this in mind when dealing with WIPO’s Borg-like attempts to route around US trademark law by trying to “restate” or “explain” the UDRP, the arbitration-like system which ICANN has imposed on domain name disputes. WIPO is trying to get its arbitrators to think that either they or WIPO are the source of the substantive law that applies in domain name disputes. But that’s not what the UDRP says — it clearly refers to the national law that would be applied against a defendant in a court case. WIPO opposed that rule during the drafting of the UDRP but was forced to accept it. It’s been chipping away at it ever since.

An example of this is WIPO’s recent push for “consistency” in UDRP decisions — something that flies in the face of the agreement that the UDRP should seek to replicate the decisions that would be reached in national courts — decisions which are not the same, as the national law differs. The decisions should be consistent with the relevant national law — not with each other.

Decisions like this — which hold First Amendment values as superior to commercial claims that the law should shield them from effective critique — differ from the law that applies in the UK and on most of the European Continent (especially Germany and Belgium). But they’re our rules, and we have a right to them until our legislature changes them.

Moveoneforamerica.org -- Trademark Infringers

The latest slime group to come my attention is a 527 that calls itself moveonforamerica.org. They have a web page which promotes two commercials they claim to want to run on TV. They are both rather badly done in terms of production values, and both are race-baiting: one tries to Willy Horton Zerry — it even uses Willy Horton’s picture — only trouble is, the guy they accuse Kerry of springing from jail appears to have been innocent of the crime Kerry got him off for. The other ad is all about equating Kerry and Al Sharpton.

Regardless of the lack of taste and ethics in their campaign tactics, these movenonforamerica.org guys seem ripe for a trademark lawsuit. Indeed, many business people consider cybersquatting and trademark infringement to be a form of theft or fraud, so we should expect the business community to condemn this organization (but don’t hold your breath…).

Moveon.org has a federally registered trademark for,

Association services, namely a grassroots organization that promotes public awareness and participation regarding policy and legislative issues and leadership positions at community, local, state and national levels, that distributes newsletters, e-mail, faxes, and other written communications, makes phone calls, contacts news agencies, and places mass media advertising to promote public awareness of the status of policies, and legislation, and encourages members to take action through lobbying and other means to help shape public policy, legislation and leadership positions; and providing information to members and the public at large regarding issues relating to policies, legislation and leadership positions at community, local, state and national levels. FIRST USE: 20010900. FIRST USE IN COMMERCE: 20010900

The “moveonforamerica.org” name is being used in the same sector — indeed, clearly imitates moveon.org’s tactic of putting commericals online before going to TV — and is almost certain to be found to be likely to cause confusion, deception or mistake. Were moveon.org to decide to sue, at the very least the moveonforamerica.org guys are likely to be found guilty of trademark infringement, which requires only a showing of “likelihood of confusion”.. I imagine that if it chooses to, moveon.org could get a federal injunction against their use of the name. It could probably also yank the domain name either in federal court or via the ICANN UDRP quasi-arbitration procedure for domain name disputes.

There are important and substantial First Amendment protections for political speech that trump the trademark statute. These include a right to parody, and a right to refer to an organization you are criticizing by its own name (“nominative fair use”). But none apply to attempts to create a confusingly similar name for yourself in the hope of confusing the public.

University of Georgia Will NOT Be "Losing Its Name"

The more than two-century-old University of Georgia is having a nasty spat with the 67-year-old “University of Georgia Foundation”. As part of the spat, the Foundation is seeking to trademark the “University of Georgia” name, having discovered that U.Ga. let the registration lapse a few years ago. The Foundation apparently did this because the state is threatening to remove the Foundation’s right to use the U.Ga. name.

According to a correspondent on Dave Farber’s mailing list at least one of the newspapers covering this has leapt to the conclusion that this might mean that at least in theory, the foundation could try to force the University of Georgia, founded in 1785, to stop calling itself the University of Georgia.

Nonsense.

Here’s what I sent Farber on the subject:

Dave, they should have talked to a trademark lawyer before running with this silly story.

Even if one assumes the worst and most unlikely set of facts for U. Ga., it wouldn’t have a lot to worry about unless there’s something unusual in Georgia law. Under federal law, at least, in any state where the state university partakes of the state’s sovereign immunity that university can more or less infringe all the trademarks it wants.

Although the Supreme Court has not ruled on the precise issue that would be raised in this case, it has held in closely related contexts that states have sovereign immunity against both Patent infringement (527 US 627) and Lanham Act false advertising claims (527 US 666). Odds are good that the logic of those decisions would extend to a straight trademark infringement claim under the Lanham Act. Cf. Idaho Potato Com’n v. M & M Produce Farms & Sales, 95 F. Supp. 2d 150 (S.D.N.Y. 2000), aff’d, 238 F.3d 468, 57 U.S.P.Q.2d 1728 (2d Cir. 2001) (Eleventh Amendment state sovereign immunity prevents assertion of antitrust claim and claim for cancellation of the IDAHO potato certification mark).

The University might have some exposure under Georgia state law if the state has waived its sovereign immunity for trademark suits.

Oh wait — never mind — I just Googled this and the story is even MORE nonsensical than it seemed. According to the Macon Telegraph, what actually happened is that, “On top of that, the foundation applied for the trademark to the University of Georgia name last year after finding out the school itself let the trademark lapse in 1997.”

Letting a registration lapse allows other people to use the name in some circumstances, but it doesn’t constitute abandonment (that requires years of non-use or an intent to abandon). As the Supreme Court said in 1900:

“To establish … abandonment, it is necessary to show not only acts indicating a practical abandonment, but an actual intent to abandon. Acts which unexplained would be sufficient to establish an abandonment may be answered by showing that there never was an intention to give up and relinquish the right claimed.” (179 U.S. 19 at 45)

In other words, even if the new application is granted, it doesn’t allow the new registrant to stop you using it — so long as your use was continuous at all relevant times. (Just checked…yup, U.GA. is still there.)

Let me assure all your readers that if firm A has long been using a name when firm B applies for a TM on that same name, and firm A acts promptly to protect its rights there is NO WAY that the firm with the longer continuous record of use — even if it let the registration lapse — is going to “lose the right to its name”. The very worst case, almost certainly inapplicable in this case, is that if Firm 1 and Firm 2 were in different lines of business, then Firm 1 would lose the right to expand into Firm2’s line of business.

So long as it doesn’t involve the Internet (where admittedly things are sometimes nutty), most trademark infringement law is pretty fair and comes out the way any reasonable and honest person would expect it to. [Note for other lawyers. I said “infringement” and not “dilution”.]

Repeat: There is NO WAY even “in theory” that this act could “force the University of Georgia, founded in 1785, to stop calling itself the University of Georgia.” It is possible, however, that by taking this action, the foundation may be able to prevent the University from making the Foundation change its name. But that’s it.

Volokh Ponders the Trojan Doctrine

In trademark law, a mark that is deceptively misdescriptive is not registerable. But what if the mark (falsely?) imputes bad qualities to the goods? Eugene Volokh argues we need a Trojan Doctrine to cope with that one.

Domain Names and CAFTA Sounds Like A Bad Mix Too

It’s very hard to tell for sure from the online summary, but it looks as if the the new “Central American Free Trade Agreement ” (CAFTA) has the same nasty domain name and ICANN rules as did the the unlamented IP sections of the FTAA. Here’s what the press release says:

State-of-the-Art Protection for U.S. Trademarks
· Requires a system to resolve disputes about trademarks used in Internet domain names, which is important to prevent “cyber-squatting” with respect to high-value domain names.

How do we get Congress to realize the absurdity of making national law subsurvient to a private corporation’s whims?

FTAA 3rd Draft Leaves ICANN/UDRP Provisions Unchanged, Unagreed, and Probably Optional

The third draft of the FTAA is now online. The Revised Intellectual Property Chapter, FTAA - ALCA - ZLEA - FTAA Draft Agreement - 2003 - Chapter XX, is still crawling with brackets (meaning there is no agreement), and Art. 13, which I criticized recently, is unchanged — but now it seems the whole chapter may be optional!

Not Geniuses has links to summaries of the overall course of the negotiations. It seems to have gone in the direction of ‘FTAA a la carte’ — and the IP provisions appear to be among the optional ones.

Of course this means the US will step up its pressure to put IP rules into bilateral trade agreements, but overall this is still progress.

Domain Names and the FTAA: A Bad Mix

[HTMLized version of document presented to today’s conference on Negotiating Intellectual Property Provisions in Free Trade Agreements]

FTAA

Intellectual Property Rights Chapter, Part II, Section 1
Article 13 — Domain names on the Internet

[13.1. Each Party shall participate in the Government Advisory Committee (GAC) of the Internet Corporation for Assigned Names and Numbers (ICANN) to promote appropriate country code Top Level Domain (ccTLD) administration and delegation practices and appropriate contractual relationships for the administration of the ccTLDs in the Hemisphere. Each Party shall have its domestic Network Information Centers (NICs) participate in the ICANN Uniform Dispute Resolution Procedure (UDRP) to address the problem of cyber-piracy of trademarks.]

[13.1. Each Party shall make efforts, to the extent possible, to promote an adequate administration of domain names.]

Summary

The first paragraph is highly objectionable. The second is acceptable, although it is vague.

Nations should not be required to impose the ICANN Uniform Dispute Resolution Procedure (UDRP) by law on their citizens because:

• Governments should not be subordinate to the decisions of a private corporation, ICANN;
• Nor should the legal rights of citizens be decided by a private corporation;
• The UDRP is subject to change, and governments should remain free to opt-out if its provisions become unacceptable;
• As it stands, the UDRP fails to guarantee basic due process to consumers;
• Serious questions have been raised about the even-handedness of some of the arbitration service providers who supply the arbitrators for the UDRP.

Governments that have thought most carefully about what rules should be imposed on their ccTLDs and their registrants have imposed their own arbitration systems which, while modeled after the UDRP, use home-grown rules that more closely track local law, customs, and commercial expectations. Canada is the leading example of this. This choice should not be over-ridden by the FTAA.

The term “Network Information Centers (NICs)” used in the first version of Art. 13.1 is poorly chosen because it refers to an entity concerned with the allocation of Internet Protocol numbers, rather than bodies such as registrars and registries that actually allocate Domain Names.

Requiring nations to participate in the ICANN Government Advisory Committee commits them to use resources attending far-flung meetings in expensive venues all over the globe, meetings which may not bring much in return. The GAC is in any event a secretive and undemocratic organization, so it is not obvious that governments would necessarily see their participation as warranted. The appropriate level of participation in the GAC should be left up to individual governments to decide for themselves.

In contrast, the second paragraph in the proposed text of Article 13 is acceptable. Although unobjectionable as written, its very lack of clarity — what is “an adequate administration of domain names”? — is slightly troubling, and perhaps invites future mischief.

Analysis & Explanation

Background

Domain names are the alphanumeric text strings to the right of an “@” symbol in an e-mail address, or immediately following the two slashes in a World Wide Web address. Thanks to a massively distributed hierarchical system for resolving domain names to IP numbers, the DNS, Internet software can rapidly and invisibly convert a domain name to its unique Internet Protocol (“IP”) number, the number used to route data correctly.

There are many “top level domain names” (TLDs), including .com and also 244 “country-code top-level domains” (ccTLDs), all of which are two-letter codes, and most of which use the two letters associated by ISO Standard 3166 to refer to a country. Thus, Canada’s ccTLD is .ca, and Columbia’s is .co. These ccTLDs are managed either by national governments, or by private citizens domiciled in the relevant nation, ensuring that the government has regulatory authority over the ccTLD.

Traditionally, second level domain names, such as “example” in example.ca, have been allocated on a first come, first serve basis. Every ccTLD has its own rules; some impose limits on who can register what, but others do not. This sometimes results in unhappy trademark and service mark owners, late to the Internet, discovering that “their” name is already registered by another. In some cases the earlier user is a legitimate business from a different sector, or is a non-commercial user who cannot be considered an infringer. But in other cases, the first registrant is either a standard trademark infringer, or a so-called “cybersquatter” — a person who in the business of registering domain names in the hope of reselling them to owners of identical marks, and who counts on the high cost of litigation, or its slow pace, to negotiate a windfall.

The Internet Corporation for Assigned Names and Numbers (ICANN) is a California non-profit corporation that manages the Domain Name System under contract to the U.S. Department of Commerce. It has an international board of directors, and an unusual structure that includes a “Government Advisory Committee” (GAC) which, despite its name, participates in the selection of ICANN directors and has a right of consultation on key policy issues.

ICANN imposes a mandatory arbitration clause on registrants to .com and other “global” TLDs (gTLDs) that are not linked to anparticular country. The clause can be invoked by anyone, anywhere, who thinks that his trade or service mark is infringed by a second-level domain name registered in a gTLD. The UDRP is popular with mark holders, who find it quick and relatively cheap. It has been criticized by the majority of academics who have studied it for lacking procedural due process, having structural biases, and for failing to give due consideration to the expressive rights of non-commercial users seeking to criticize corporations by hosting web sites with derogatory domain names (e.g. “companysucks.com”).

Analysis of First Paragraph of Art. 13

The major problem with the first paragraph of proposed Art. 13 is that it forces signatories to impose ICANN’s UDRP on the users of their ccTLDs, who will primarily be their own citizens (ICANN already imposes the UDRP on all registrants in gTLDs such as .com, and no FTAA action is required to maintain the status quo in this regard). Participation in ICANN’s UDRP for every ccTLD should not be required by treaty because ICANN is a private corporation. International law should not make governments subordinate to a private corporation. Nor, if the national ccTLD is private, should a government be required by international law to subordinate its nationals to decisions made by a foreign corporation.

Indeed, some of the governments that have thought most carefully about this question, such as Canada for example, have adopted their own domain name arbitration systems for their ccTLDs. While modeled after the UDRP, these use home-grown rules that more closely track local law, customs, and commercial expectations. Canada’s system is notably fairer procedurally than ICANN’s.

ICANN can change the UDRP at any time. Indeed, discussions are currently under way to expand the reach of the UDRP. Even if one is satisfied with the UDRP at present, states should not allow themselves to be locked into a system that might change in ways they find objectionable. And, there are reasons to think the UDRP is not ideal:

As it stands, the UDRP has a large number of obscure but significant procedural defects. Because of these, the system fails to guarantee basic due process to consumers who register domain names.

In addition, serious questions have been raised about the even-handedness of some of the arbitration service providers who supply the arbitrators for the UDRP; as currently written, the UDRP creates economic incentives for arbitration providers to be “plaintiff-friendly,” and to discriminate subtly against consumers. Service providers’ are nor required to disclose their methods of recruiting and assigning arbitrators, and the system permits provider manipulation of panelist selection to achieve a desired result in a given type of case.

Currently, the UDRP rules do not [corrected] require actual notice to the defendant, nor do they require sufficient efforts reasonably calculated to achieve actual notice, especially in countries with inferior postal systems. The time limits to respond are very short, and put ordinary people who do not have an internet-savvy trademark lawyer on permanent retainer at a substantial disadvantage. Although the UDRP purports to have word limits, these are routinely circumvented by the use of “attachments” further adding to the burden faced by parties needing to prepare their responses in a short time.

A final note on the first paragraph: The term “Network Information Centers (NICs)” used in the first version of Art. 13.1 is poorly chosen because this term usually refers to an entity concerned with the allocation of Internet Protocol numbers, rather than to the bodies such as registrars and registries that actually allocate Domain Names. The confusion could be damaging as to date the two regimes have intentionally been kept separate, and indeed are subject to very different governance mechanisms. Internet Protocol numbers are controlled outside the ordinary ICANN process via regional bodies ⁽¹⁾ and by the Internet Assigned Numbers Authority (IANA), which is technically a separate function from ICANN’s management of domain names.

Analysis of Second Paragraph of Art. 13

As noted above, the primary problem with the second paragraph in the proposed text of Article 13 is that it is vague. It is not clear what constitutes “an adequate administration of domain names”, which perhaps invites future mischief. Since the duty to act is qualified by “to the extent possible” this provision does not appear too troublesome.

For further Information

     On ICANN

• Milton Mueller, Ruling the Root (MIT, 2002)
  
• A.Michael Froomkin, Wrong Turn in Cyberspace: Using ICANN to Route Around the APA and the Constitution, 50 Duke L.J. 17 (2000), available online http://www.law.miami.edu/~froomkin/articles/icann.pdf
• A.Michael Froomkin & Mark Lemley, ICANN and Anti-Trust, 2003 Illinois L. Rev. 1, available online http://personal.law.miami.edu/~froomkin/articles/icann-antitrust.pdf.
• ICANNWatch.org, http://www.icannwatch.org

On the UDRP

• A.Michael Froomkin, ICANN’s “Uniform Dispute Resolution Policy” — Causes and (Partial) Cures, 67 Brooklyn Law Review 605 (2002), available online http://personal.law.miami.edu/~froomkin/articles/udrp.pdf
• Elizabeth G. Thornburg, Going Private: Technology, Due Process, and Internet Dispute Resolution, 34 U.C. Davis L. Rev. 151 (2000);
• Michael Geist, Fair.com?: An Examination of the Allegations of Systemic Unfairness in the ICANN UDRP, http://aix1.uottawa.ca/~geist/geistudrp.pdf (Aug. 2001);
• Milton Mueller, Rough Justice: A statistical assessment of ICANN’s Uniform Dispute Resolution Policy, http://dcc.syr.edu/roughjustice.htm

  
  

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1. These are APNIC (Asia Pacific Network Information Centre) - Asia/Pacific Region, ARIN (American Registry for Internet Numbers) - North America and Sub-Sahara Africa, LACNIC (Regional Latin-American and Caribbean IP Address Registry) - Latin America and some Caribbean Islands, RIPE NCC (Réseaux IP Européens) - Europe, the Middle East, Central Asia, and African countries located north of the equator, and soon to be joined by AfriNIC (African RIR, proposed).

That Trademarked Baby

US babies get global brand names. As more and more ordinary words become national and international brands, some overlap between personal name space and TM-space was inevitable. But naming kids “ESPN”? I think naming a child after a brand is a pretty awful thing to do — but that doesn’t make it illegal.

I haven’t researched it, but it seems to me that were any owner of even a coined famous mark (the very, very strongest kind) to complain about a child bearing their trademarked name, the company would lose. Mere naming of a child is a non-commercial use of a word, and federal trademark law, at least, requires commercial use of a term for both traditional infringement and for federal dilution claims. Furthermore, the naming is neither dilution nor tarnishment (although it could lead to either in the long run).

The more interesting legal issues arise if the kid ever tries to use his name in commerce. Even people named McDonalds can’t open eponymous burger joints today. So the kid might have more constraints on the use of his name than the rest of us.

Drawing the line isn’t easy, since dilution law is fairly hair-trigger, and doesn’t require even an imminent likelihood of confusion, must less evidence of actual confusion. Nor does it require that the two sets of goods be in competition — just that the new user be thought to “blur” the uniqueness of the prior user’s famous mark.

Now suppose the kid with the funny name grows up and becomes a major recording artist, uses his own name, and sings songs that the famous, coined, mark holder thinks blur or tarnish the brand…. The mark holder would certainly have an arguable case that the former kid should call his act something else.

I think the former kid should win, but it’s a comment on the state of the law that this isn’t as obvious a result as it might be, especially if the dilution claim was based on one of the more aggressive state’s laws.

(If thousands of people name their kid after a trademark, is it at risk of becoming generic? Only for kids, not for the class(es) of goods on which the mark is used in commerce.)

On a marginally related note: McDonalds complained about “McJob” being in a dictionary (although the word is apparently there to stay).

Meanwhile, here’s my policy on T-shirts and other goods with prominent logos: If you want me to wear your logo (I.e. advertise your brand) you have to pay me. It may not cost much, though: Give me a free t-shirt, and I may wear it if it’s nice….

I usually also avoid clothing with even small, externally visible logos, but I’m not fanatical about it, especially when it comes to blue jeans and sneakers (since they all seem to have them).

A Visual Joke And Also A Decent Exam Question

Here’s a fun visual joke from David Weinberg that he calls Trademark Registered Copyright (and which he has placed in the public domain, thereby preventing the hypo from becoming a realo). I suspect that with only a little effort, it could be turned into a nice exam question in Trademark law. Which I’m not teaching this semseter.

What I need is exam questions for Administrative Law and especially International Law, which I’m teaching for the first time.

French Court Says Google's Sponsored Links (Adwords) Can Be a Trademark Problem

Monday a French court, the Tribunal de Grande Instance de Nanterre, 2ème chambre ruled in Sté Viaticum et Sté Luteciel c/ Sté Google France that Google France violated the trademark rights of a complainant when it displayed a competitor’s sponsored links (via its Adword program) in response to a search for the plaintiff’s trademark. The decision is subject to appeal.

Google’s Adword Trademark policy offers limited review; it’s mostly ‘let’s you and him fight’.

There is one US case that I know of which discusses the issue in the context of serving banner ads, Playboy Enterprises, Inc. v. Netscape Communications Corp., 55 F.Supp.2d 1070 (C.D.Cal., 1999), but it’s only a district court, and fairly fact-specific. The court just wasn’t persuaded that the use of the terms “playboy” and “playmate”—which it thought generic—was infringement. Even if they weren’t generic, it said the banner ads were not infringing or dilution since they clearly advertised something other than the plaintiff’s magazine or in any way interfered with the association between the plaintiff’s mark and the product. (There may be more cases (there certainly are on meta-tags!), I haven’t done a search on this recently.)

The very reliable Trademark Blog has in the past suggested that the US law in this surprisingly complex area is unstable, which seems fair enough as a descriptive matter. But I hope the French rule isn’t adopted here.

The most recent article I know of on the subject of keyword advertising, Gregory Shea, Trademarks and Keyword Banner Advertising, 75 S. Cal. L. Rev. 529 (2002), doesn’t seem to be online. It begins by suggesting the practice is bad,

With the rapidly expanding use of the Internet, new methods are being developed to infringe the vital asset of commercial goodwill: the trademark. As companies vigorously compete for consumer attention and money, they have discovered new techniques to exploit their competitors’ goodwill to attract new consumers to their websites and products. Balanced against this manipulative behavior is the fact that the Internet has offered consumers new choices like never before. Consumers can quickly get information about new products, compare prices, and make purchases faster than ever.
One of the new techniques to reach consumers on the Internet is the use of trademarks as keywords to trigger competitor advertising when the trademark is entered as a search term in a search engine. While consumers can obviously benefit from this practice—as it allows them to see more choices related to their query and learn about new products—many companies feel this practice violates trademark law because it allows competitors to benefit from their goodwill.

Yet, it concludes by saying that it should not be banned,

Courts should resist their judgments that this behavior is morally reprehensible, as it will distort their application of the law. Keyword banner advertising does not confuse consumers because consumers expect that the ads are not connected to the trademark. Nor are claims of dilution likely to be successful. Keyword banner advertising is not trademark infringement, and describing the practice as devious or deceitful mischaracterizes the true situation.

Trademark owners frustrated by these decisions can pay to advertise with their trademarks, thus preventing competitors from doing so. Alternatively, they can pressure search engines to refrain from selling their trademarks to others. Courts, however, should not be overly sympathetic and unduly extend the protection of trademark rights. Trademark law focuses on protecting consumers. Consumers are helped—not harmed—by keyword banner advertising. Proper application of the law and considerations of policy should lead courts to allow the practice to continue, fostering competition and benefiting consumers.

Sounds about right to me, although I’m not even sure I believe it’s morally dubious if it doesn’t displace the trademark holder’s listings and is clearly identifiable as a paid ad.