Category Archives: Law: Trademark Law

Plain Talk About Competitive Keyword Ads Lawsuits

One of the things that used to drive me crazy back when I did more Trademark law was the brain-dead assertions made robotically, with — it seemed — the best faith in the world, by lawyers for Big Trademark. They not only believed that they “owned” the words in their marks (and often common derivatives) but that anything which led (they would say “stole” or “diverted”) a customer away from their clients’ wares by referring to that word was illegal.

So hats off to Eric Goldman who has the stomach to keep following their antics, and to call these claims what they are: dumb. See Technology & Marketing Law Blog: Yet Another Ruling That Competitive Keyword Ad Lawsuits Are Stupid–Louisiana Pacific v. James Hardie for more of the gory bits.

Posted in Law: Trademark Law | 1 Comment

(What) Were They Thinking?

A cease and desist letter from the National Pork Board, protesting ThinkGeek's April 1, 2010 offer of canned Unicorn Meat (“the new white meat”) has produced the predictable and hilarious result.

Alas, they've only put the first page of the cease and desist letter online.

(via Slashdot, ThinkGeek's Best Ever Cease-and-Desist Letter)

Update: I am directed by a reader to the dragon sausage incident.

Posted in Law: Trademark Law | 3 Comments

Glenn Beck Attempts to Get UN to Circumvent US Constitution

Is this Response in the best UDRP response ever?


We are not here because the domain name could cause confusion. We
do not have a declaration from the president of the international
association of imbeciles that his members are blankly staring at the
Respondent’s website wondering “where did all the race baiting content
go?” We are here because Mr. Beck wants Respondent’s website shut
down. He wants it shut down because Respondent’s website makes a
poignant and accurate satirical critique of Mr. Beck by parodying Beck’s
very rhetorical style. Beck’s skin is too thin to take the criticism, so he
wants the site down. Beck is represented by a learned and respected
legal team. Accordingly, it is beyond doubt that his counsel advised him
that under the First Amendment to the United States’ Constitution, no
action in a U.S. Court would be successful. See, e.g., Hustler Magazine,
Inc. v. Falwell, 485 U.S. 46 (1988). Accordingly, Beck is attempting to use
this transnational body to circumvent and subvert the Respondent’s
constitutional rights.

Here, in the interest of fair play and equal time, is the compliant in

Yes, Glenn Beck is going to an international tribunal set up by a UN Body (WIPO) in order to trample the US Constitution.

You can't make this stuff up.

Posted in Law: Trademark Law | 2 Comments

This Is Funny

This is funny.

Warning: Some viewers may find this oleaginous.

Posted in Completely Different, Law: Trademark Law | Comments Off on This Is Funny

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.

Posted in Law School, Law: Copyright and DMCA, Law: Trademark Law | 2 Comments

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.

Posted in Law: Trademark Law | Comments Off on Johnson & Johnson Sues Red Cross — And Loses