Category Archives: Law: Trademark Law

On Not Being Catty

Posted on May 30, 2006 by Michael Froomkin

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.

Posted in Law: Internet Law, Law: Trademark Law | 1 Comment

Contemptible

Posted on March 31, 2006 by Michael Froomkin

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,

university_truth.jpg
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…

Posted in Law: Trademark Law, U.Miami: Strike'06 | 3 Comments

There Goes Particle Physics

Posted on December 16, 2005 by Michael Froomkin

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?

Posted in Law: Trademark Law | 2 Comments

“Sucks” Sites Don’t Violate US Trademark Law

Posted on April 5, 2005 by Michael Froomkin

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.

Posted in Law: Trademark Law | 4 Comments

Moveoneforamerica.org — Trademark Infringers

Posted on September 5, 2004 by Michael Froomkin

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.

Posted in Law: Trademark Law, Politics: US: 2004 Election | 2 Comments

University of Georgia Will NOT Be “Losing Its Name”

Posted on May 29, 2004 by Michael Froomkin

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.

Continue reading →

Posted in Law: Trademark Law | 1 Comment