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.

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.

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.)

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.

And, yes, it’s about trademarks again.

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).

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.

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.

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.

“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.