Lyon Legal

Ohh baby baby ...

2012-02-07T09:55:00.000-08:00

If you follow celebrity news you know that Beyonce and Jay-Z have a baby.
They named the baby Blue Ivy.
Now I knew a guy named Blue and I've heard of women named Ivy so as celebrity baby names go it's not so bad. It's kind of catchy. You know. . . I think Blue Ivy would make a great product name!
And so do Beyonce and Jay-Z. That's why they registered the name as a trademark.
They are the third to do so by the way. Two others tried registering the name just after the baby was born but the applications were rejected. This one will probably go through.

I haven't looked up the application but I read that it is for perfumes and scents.
wait... what?
Do you really want to smell like a baby? Now I don't have any kids of my own but my brother has six and I can tell you most of the time babies don't smell that great.
Personally I'd have gone with a line of baby clothing, but hey, I'm not the one with the multi-million dollar portfolio.
And I'd never name a baby Blue Ivy.

So if you have a baby, before you pooh pooh any weird name suggestions, ask yourself if you want to make it a trademark. Will it be distinctive enough?
Maybe Rob Morrow should open a line of training pants named for his daughter Tu (yes, her name is Tu Morrow)

START THE YEAR OFF RIGHT

2012-01-13T08:22:00.000-08:00

I've been a very bad blogger. It's difficult to make meaningful blog posts about interesting things in the law because to write something I feel I have to research it thoroughly so I don't pass any misinformation.

That means a single page post may take 3 hours of research and another hour of writing to get the wording clear and accurate. I need to allow myself to be a little more sloppy - or a little more superficial.

In either case I will be blogging more this year and will be talking about all sorts of things that may or may not be related to the business. I have to make it free-form so that I don't tie my own hands doing research and in the end writing nothing because I can't find the time.

So my first off-topic post is my bucket list.

I read a great bit of advice recently: make a bucket list, and when you accomplish one thing add a new goal. You will never finish your list, but that's the point.

Also, give yourself deadlines - and not literally as in most bucket lists.

I'm starting here with things to accomplish this year.

1. Get published

This doesn't have to be big. I've been published before, but it was a while ago and I should really do it more. This means to me that some other entity over which I have no control, will put my words in print - on paper. It doesn't have to be paid. If the Washington Post publishes a letter to the editor that counts.

2. Get paid to speak publicly.

The nature of the payment doesn't matter. If someone covers my dinner that's good enough. Of course I get paid to talk in court all the time but for this goal it has to be something outside the context of a litigation. Either for entertainment or educational purpose rather than advocacy.

3. Come up with more things for the bucket list.

SERVE THE BREAD FIRST

2012-01-13T08:18:00.000-08:00

This is an old post I wrote back in October but never uploaded.

That document review project I was on lasted only a month for me, and not much longer anyone else. The multi-billion dollar corporate merger it involved was cancelled by the DOJ as a trust violation.

No big deal. I got some more temp work almost immediately and have had my own cases pick up. I even had a trial in December, but more on that later.

I learned something very important on that project: something every lawyer should know.

So here is the big lesson I learned

Serve the bread first!

I’ve been working almost every day on this document review project. I’ve learned something valuable: start with the bread.

The place I’m working provides lunch. They lay out the food on these lined up tables and everyone walks from one end to the other in 2 lines, one on each side of the table, cafeteria style.

The other day they served build-your-own barbecue pork and chicken sandwiches, the food kept in those aluminum sterno-warmed serving trays. We all lined up to get lunch and at the starting edge of the table were the plates and flatware. Then there were trays with steamed vegetables. A good sign. There were then home-style fries and fried chicken, and then the delicious pulled pork and pulled chicken, then the cole slaw and lastly the bread.

Sounds delicious, right? Well it was. But did you notice the problem? If you’re assembling a barbecue pork sandwich as you walk along the table, what do you do with the meat when you come to it? Ideally you’d open up your bread and slap it on, but hold up. You don’t have any bread. It’s way at the end of the table. People ended up running up to the other end of the table to get a roll then running back hoping the line didn’t push ahead and they could still get back to the meat before the person behind them figured out what was happening. An ugly lump in the line ensued - or people settled for a plate-full of sloppy shredded meat.

So if you’re a caterer, and you’re serving a crowd build-your-own sandwiches, serve the bread first.

Of course there is a greater lesson to be learned here and that’s what I’m getting to now. Like a good server, I’ve left the meat of my discussion for last.

The sandwich line is an example of how lawyers are not experts at efficiency. There are experts at efficiency, but they don’t come out of law schools.

I’m a lawyer. I know the law. I like to read cases and rules and regulations. I like to see how a pattern of facts matches up to a statute. I’ve never built a car on an assembly line. I wouldn’t know what parts to start with. If I had to build a car on an assembly line I’d hire an expert at line-efficiency to work out the best way to get the car built with the least amount of time spent by line workers standing around waiting for parts.

Most lawyers don’t seem to think this way though. I think they get too focused on the legal twists that they are good at they neglect addressing the things they aren’t good at.

At the place I’m doing document review, there are somewhere around 200 contract attorneys (temps) reviewing documents - only most of the time we don’t have documents to review. We wait. We get paid to wait, to be here when the documents do come, but most of the time we wait.

Over us are maybe 6 staff attorneys, and above them one associate attorney. Their job is taking the documents that have been reviewed by a previous law firm for relevance and sorting them into batches to deliver to us to review for privilege. (if you don’t know what that means don’t worry, it’s not relevant).

Anyone with a manufacturing background will see the problem. There’s a 6-person bottle-neck. Those 6 people get to make the decisions about how we will address issues and to make on-the-spot decisions when the unexpected arises. They also form a review layer to look at what we’ve done and make sure things are working as they should. The process of batching and distributing should not also be stuck with them. Perhaps another level of temp attorneys could be hired to do that part of their job. The point is, we’re all standing round trying to make a sandwich and the firm is putting the bread at the far end of the table.

If I ever find myself as counsel on a large case that requires doc review, I will also spend a little extra for an efficiency expert instead of paying a bunch of lawyers to wait around.

contact work at last

2011-09-28T10:32:00.000-07:00

At the beginning of this year I signed up to a long list of "contract" attorney firms.

That's basically a temp agency but for attorneys.

At first there was nothing, then I got some really good research and writing projects for a very friendly small firm in Dupont Circle. It was like I was part of the firm, going in every day, sitting at the office desk and working my hours, going home, getting a paycheck on Friday.

Then the cases I was on closed. Sure, there were projects that came and went from them after, but very short things, couple days at most here and there. Great people so I'm happy to keep doing work for them whenever they need the help.

But that's not typical of contract work. Mostly it is document review.

So after seven months on the rolls, another contract firm contacted me in a rush to fill some document review slots. Tomorrow I will begin a three month stint in document review. I don't really know what to expect but given the economy and some big expenses coming up for my home, at least the money is good.

Location, Location, Location - and REGISTER!

2011-05-10T07:07:00.000-07:00

If you own real estate in Maryland to rent out, read your county code requirements.

Tom Baranowsky did not, or he thought he'd save some money by not registering his rental condo in Anne Arundel County. It ended up costing him quite a bit in the long run.

Tom was not able to evict his tenant when she did not pay rent.

To register, and get a license to operate a multi-family dwelling, such as Tom's in Anne Arundel County, means to have the place inspected for safety and habitability by the county.

Technically, Tom had gotten such a license, but these are not permanent things. His had expired in 2005. The county contacted him thereafter (on 5 separate occasions) asking him to renew in order to be able to operate, but he did not attempt to renew until May 21 2009.

But on March 12, 2009, he had rented the property to Katie McDaniel.

Katie almost immediately discovered a short in the fuse box. She tried to get Tom to fix it. She called the fire department and they told her to move out as it was unsafe - but Katie had no place to go. There were also missing window locks and broken windows, and the kitchen countertop was never secured to the cabinets. Definitely unsafe for Katie and her young daughter.

In April a county inspector told Tom of those and numerous other safety violations. The same day of the inspection Tom filed suit to evict Katie because she had not paid rent for April 12 - May 12.

While the district court found for Tom, he lost on appeal.

The Court of Appeals ruled May 4 2011 that failure to license under the county rules undermines his legal status as landlord and thus denies him access to the expedited eviction process of the law.

He should have lost on the eviction case and the case was remanded to deal with the rent.

The moral is, check the local codes and get whatever licenses you need. It may cost a little now, but better than costing a lot later.

Would Solomon have Split the Dog in Half?

2011-04-25T03:54:00.000-07:00

(this is something I posted on another forum in August that I'm reposting here in case it gets deleted there)

Fortunately we don’t have to know because in today’s legal arena you can split time. That’s what Judge Graydon S. McKee III (retired), sitting on the Circuit Court for Calvert County, has recently done.One of the difficult issues in any divorce is how to split up the property. It is almost always better to come to an agreement for the court to approve. If the parties don’t agree on how to divide a piece of marital property, then the court usually orders the property sold and the proceeds split equitably. What about the family dog?In Maryland, pets are considered property. If the parties can’t agree who gets to keep the pet, the court can order it sold and the money split. The reality is that people don’t consider their pets just like other property. In the recent case of Meyers v. Meyers, Judge McKee did not think that was a good solution, so in an unprecedented move he ordered Craig Meyers have possession of the dog 6 months out of the year and Gayle Meyers have possession the other 6 months.This was a possibly risky move in a precarious area of the law. Pets are more and more being considered part of the family, but the law still considers them property. If this case were to be appealed the decision could easily be thrown out. Then again, if it were a part of a negotiated separation agreement it would not. That is more reason why coming to an agreement with each other is better than having a decision thrust on you by the court. Not every judge will be as innovative as Judge McKee.

The Cruelty of a Sexually Transmitted Disease

2011-03-15T08:27:00.000-07:00

Divorce is a bit difficult in Maryland. You can't just say "we no longer get along - we have irreconcilable differences."

You can do that. There is "no-fault divorce" in Maryland, but to qualify you have to mutually agree to separate and then you have to wait for a full year before you can file your complaint for divorce.

If you have grounds though, like adultery or extreme cruelty, you don't have to wait.

Extreme cruelty may not be what you think it is though. Sure, the stereotype abused spouse with bruises and missing teeth is the victim of extreme cruelty, but did you know you could be the victim of extreme cruelty without a finger being raised against you?

You could instead have a disease.

In Maryland, if your spouse was infected with an STD and knew it, and slept with you anyway, without telling you about the STD, that is extreme cruelty.

And why not?

It shows an utter disrespect for your autonomy and your health.

You need a grounds for divorce in Maryland. An STD can be grounds.

Gun for Hire

2011-03-09T09:43:00.000-08:00

With the ever-present need to pay bills, and the recent dearth of paying clients at present (I did not bring any with me from the partnership, it barely had any to keep afloat either), I have signed up with a half dozen legal temp firms.

They use the more impressive sounding "contract attorneys" label but for the most part it's just document review - the type of work a good Watson-type computer will be able to do in a fraction of the time soon.

So the firms all say it will just be a couple of weeks. They are sure work is just around the corner. Truth is, they don't have as much as they used to either.

So I plod along applying for other jobs, handling one or two cases of my own, and doing desperate acts like throwing my resume up on Monster.com.

Well Thursday I got a call from a legal temp agency. They have a job I would be good for, can I come meet tomorrow?

I go, even though I don't remember signing up with this particular agency.

Turns out, they grabbed my resume off Monster.

The interview goes well, he sends me to the client firm's offices to meet and it goes well there. In fact they put me to work. I get about 3 hours on the clock Friday - and another 7 hours Saturday. A couple from home Sunday, and full (very full) days Monday, Tuesday and today.

I think I just paid this month's mortgage.

Oh, and it's not document review. I'm doing substantive work, drafting a very complex opposition and memorandum in an appeal.

Temp work doesn't have to be drudgery - in fact I'm still waiting for the drudgery mills to call.

There's next month's mortgage to worry about after all.

Palin's Latest Failure

2011-02-07T09:05:00.001-08:00

was her attempt to register her name with the Patent and Trademark Office.

Why did she fail? Well, most recently it's because she didn't sign the application:

How could you forget to sign when it's your name you're trying to register?

She actually did a number of things wrong (well, her lawyer did, but we'll attribute it to her anyway).

Initially she submitted samples of her name in use that had nothing to do with the grounds she claimed for use.

You have to say HOW you are using a mark in commerce. So the application said "as a motivational speaker".

And you have to provide a "specimen" of your mark in use.

So they provided a newspaper article saying she'd been hired as a Fox commentator.

That's not really motivational speaking, so the specimens were rejected and new ones requested.

Don't know if they were provided because someone then noticed she failed to sign the application. It was rejected for lack of a signature.

Now that's correctable, but what about the samples?

Here's my take: why did she submit for motivational speaking?

Why not register for something she's actually done? She wrote some books didn't she?

So register for books in that genre.

Contrary to what many articles say about it being very hard to register a name as a mark, lots of people do it, particularly authors. Admittedly Danielle Steel is registered for perfume, not books, but she could just as easily register for novels in the romantic fiction field.

So Sarah, cause I know you read this, go back and register for books - or television acting - and produce new specimens and sign the application.

And if you really want to be registered as a motivational speaker, there is a way to do that.

Register an "intent to use" application. That gives you a year in which to actually start using the mark for that purpose.

Get hired as a motivational speaker.

Then print up advertising flyers or invitations for the event and voila, you have specimens.

And don't forget to sign on the dotted line.

Copyright in the Spoken Word

2011-01-14T08:19:00.000-08:00

In this post I will address a question that you might have if you are in a group that works to improve public speaking (this came up because I joined Toastmasters and I did this as a speech topic).

In such a group you will have to prepare and present several speeches. So:

Do you have a copyright in your speeches?

First I will try to keep from using copyright as a verb. We tend to say did you copyright your speech, but what we should say is: do you have a copyright in your work. Copyright is a noun. It means, quite plainly, the right to make a copy.* If you have a copyright you can make copies and nobody can stop you; but, you can also license that right and let someone else make copies, or even transfer that right so that they can grant a license to yet a third party make copies. It also means you can prevent someone else from making copies of your work.

But how do you know whether or not you even have a copyright to begin with?

If you really need to know you should consult an attorney, because the question can be more complicated than you think. I am not here to give legal advice, but I will give you the basic tools to let you tell if you probably do or probably don’t have a copyright in your speech.

The Constitution gave Congress the power to grant copyrights, and the United States Code explains what types of things are entitled to a copyright.

There are three basic requirements: a work must be original, it must be creative, and it must be fixed in tangible form.

If you have those three things, you immediately have a copyright.

Now I will assume you make up your speeches on your own. Reciting someone else’s speech is not original.

And I will assume your speech is at least a little bit creative. A list of all of the people who came to your holiday party may be original but it is not creative. A phone book does not get a copyright.

So the third factor is probably the most critical, and potentially the most complicated.

Is your speech fixed in a tangible form?

That means, is it in a physical form that will last some amount of time.**

Did you write it down? If you did then you do have a copyright on your speech; at least, you have a copyright on your words.

But as your public speaking program no doubt teaches, your speech is much more than the words. Your speech includes your inflections and the tone of your voice. Those don’t have a place on the written page.

Can you get a copyright in those? Yes, you can.

What if you used a tape recorder, or a digital audio recorder?

The law grants copyright for sound recordings so if your speech is recorded in audio format then that too can be protected by copyright.

But is that really your speech? What about your gestures, your facial expressions? your body language and the way you move around the podium?

Yes, those too can be protected by copyright - if they are recorded, such as if you use the webcam on your laptop. The law grants copyright in audio-visual works or performances.

The key is always whether or not it is fixed in a tangible medium.

Suppose you wrote your speech down, and you recorded the audio and you recorded the video. You won’t have a copyright. In fact you will have three separate copyrights: a copyright in the written work, another in the sound recording, and another in the audio-visual work.

You can let someone photocopy your written words, or transcribe them, or photograph them, or even translate them into another language. You can let someone make duplicates of the audio, put them on an ipod, or even recite your speech imitating your voice. And you can let someone duplicate the audio-visual record, make mashup videos, post them on youtube, or broadcast it on television, or any of a countless array of inventive derivations and methods of copying.

Or, perhaps more salient to you, you can stop other people from doing any of those things.

Now there are exceptions to what you can prevent others from doing; and how to enforce your right is a whole different question.

If you just want to answer the basic question: Do I have a copyright in my speech, you only have to know three things: Is it original? Is it creative? and is it fixed in a tangible form?

* What is a copy? That’s a complicated question I will address in another post or series of posts.

** There has been much litigation about what fixed means so this discussion will be limited to the type of fixing you are likely to have as a public speaker.

2011-01-01T11:08:00.001-08:00

Starting over.

I have spent most of the past year working on a partnership in a family law practice. I've had to learn so much it's ridiculous.

However, it didn't work out. Much of what I learned concerned working with another lawyer and you have to have a fit better than we had.

So starting over, only now I've spent down my savings on that failed project and need to get an income fast so it's hitting the job hunt again.

At the same time I'm going to be working on this, to keep every venue open.

Right now I'm learning how to use social networks, specifically: Twitter

My 2 greatest loves united!

2010-11-23T16:06:00.000-08:00

By profession I am a lawyer.

By hobby I am a gamer - specifically tabletop and board games, not a Halo or Word of Warcraft gamer.

Well Lawyers Without Borders has invented a boardgame!

It's called "Record It!" and is designed to teach women in African countries (and probably other developing countries, but started with Africa in mind) the benefits of recording the births of their children. It emphasizes the value of recording information in order to obtain inheritance, business licenses and various other benefits from the state.

I wonder if I can get a copy of it for the local gaming club.

Reference on Law.com

More News for the Naked Cowboy

2010-11-22T05:45:00.000-08:00

I tried following up on the law suit story. It's still going on in the courts but no news is out.

But there is news about the Naked Cowboy.

He's running for President in 2012.

Surprise to me he has a BA in political science.

Listen to his own words - it's a hoot.

The most reasonable Tea Party candidate

"I'm against marriage period"

he's concerned about the "demilitarization of America"

"secular humanism . . . is taking away our traditional values"

Can You Franchise Nudity?

2010-07-23T11:29:00.001-07:00

Well, not "nude" but "naked".
And if you ask me, they should both be charged under truth in advertising statutes.

Who are they? Why the Naked Cowboy and the Naked Cowgirl of course!

It seems from what I can tell that the Naked Cowboy has been performing this character since 1997 and in 2001 he moved to NY (the same time moved to go to law school, and he and I are the same age - how different our choices have been) and started performing in Times Square.*
The Naked Cowgirl was a stripper for years but in 2008 she started dressing in her underwear and singing and playing guitar in Times Square.
He sent her a cease and desist letter.
Then he sent her a franchise agreement (Yes, you too can be a Naked Cowboy if you buy a franchise)
When she continued her performances and never signed an agreement, he finally filed suit against her, alleging trademark infringement and other unfair trade practices.

This is not the Naked Cowboy's first rodeo.

In 2008 the Naked Cowboy sued the M&M Mars corporation, claiming $6million for violating his trademark. The candy company had made a commercial specifically to broadcast in Times Square, showing a blue M&M with cowboy hat, cowboy boots and briefs, playing guitar and singing. That case settled.
This is not a multi-million dollar case, and I can't predict whether or not it will settle, but the outcome is not as easy as you might think. First off there's no copyright protection in the character because it's not written down but performed. Second, trademark protection is not settled on the issue of characters. Some courts will find it but others will require the character be attached to a product. That could make the evidentiary stage of the case rather difficult for the cowboy. That leaves unfair practices, and that's an animal of state law. New York has a thriving art scene of course, so I suspect that there's good precedent for protecting performance art against immitators.

In any case it's an interesting case to watch (though looking at the pictures above, maybe "watch" isn't something I want to do).

*and for just $499 you can get married by Reverend Naked Cowboy in Times Square!

The average consumer can't tell Apples from Oranges

2010-07-20T09:00:00.000-07:00

The Trademark Trial and Appeals Board ruled a couple weeks ago that the stylized orange above is too similar to the stylized apple above.
The fundamental principle of trademark law is identity. Infringement happens when there's a likelihood that people will confuse one for the other.
There are all sorts of other nuanced levels of where confusion lies, but when someone says something is like comparing apples to oranges, you can point to:
Apple Inc. v. Echospin, LLC
for the position that both are fruit and the average person can't tell the difference anyway.

Where was that infringement?

2010-06-17T19:33:00.000-07:00

New York is investigating what I think is a question of first impression:
Does a copyright infringement take place where the copy is made? or where the owner of the right resides. The former is where the infringing action originated, but the latter is where the injury occurred.
I wonder if the court will look into other torts across jurisdictional lines. What happens when you stand in North Carolina and throw a rock at someone in South Carolina? Who has jurisdiction?
Penguin v. American Buddha
(got to love the name too)

How many things are a foot long?

2010-05-14T10:40:00.000-07:00

So Subway (the national sandwich chain, the guys behind Jared and his nice weight loss) has decided to register a new trademark.
They've registered "footlong".
Much to my shock and surprise the PTO actually granted their registration - or more specifically, accepted for publication. Basically they submitted an application and the PTO said that the term is sufficiently unique to be granted a trademark registration unless anyone can show otherwise.
They publish in the Official Gazette, then people who may also have an interest in the name can oppose the registration.
So far it looks like 9 oppositions have been filed and one application to extend time to allow an opposition to be filed.

It's a bit of a complicated history. Doctor's Associates Inc. (yes, that's the corporation that owns Subway) filed a registration for "footlong" in relation to sandwiches.
The registration was denied because of pre-existing marks for "footlong express" that sold hotdogs at sporting events.
DAI fought that, saying sandwiches are basically nothing like hotdogs and since DAI doesn't sell at sporting events, there's no likelihood of confusion.

The PTO didn't buy it.

So DAI filed to cancel the pre-existing marks.
And the owner of that mark didn't bother to file an answer defending it. Subsequently the mark for "footlong express" was canceled and now there's no likelihood of confusion.

The application was also refused because it was merely descriptive of the goods. The sandwiches are a foot long (I've never measured, but I'd be surprised if they really were).
Well that was dropped because DAI said basically that "footlong" just tells you something is 12 inches, but it doesn't tell you what is 12 inches. It could be foot long neckties. It takes imagination to leap from an adjective to the noun it describes.
The PTO bought this and let it go forward.

Now I think what really happened was more along the lines of the PTO throwing its hands in the air and saying to itself - these folks are really going to fight for this and we don't have the resources, time, or inclination to go into the historical use of the word "footlong" so we'll just approve it and let someone else oppose it and fight it out in a trial.

Which is what's happening now.

Now this came to my attention because DAI has been sending cease and desist letters to small mom and pop delis to get them to stop calling their sandwiches "footlongs".
However, it is nice to know that DAI is not going to get away with simply throwing it's weight around and intimidating or outspending the little guy. Big guys are opposing the registration. Here's a list of the opposers so far:

A&W Restaurants, Inc.
Long John Silver's Inc.
KBI Holdings, L.L.C.
RaceTrac Petroleum, Inc.
Taco Bell Corp.
Sheetz, Inc.
American Dairy Queen Corporation
Firehouse Restaurant Group, Inc.
America's Drive-In Brand Properties LLC
KFC Corporation
Pizza Hut, Inc.
DOMINO'S IP HOLDER LLC
Kahala Franchise Corp.

So looks like this is going to be a big fight over a big sandwich.

Kung Fu Grip!

2010-04-28T13:35:00.000-07:00

If Kwai Chang Caine is your image of a Shaolin Monk, you may have to do some rethinking.
Instead of fists and pole arms, the Shaolin of today fight like everyone else: with lawyers!

Being a bit of a gun for hire myself, I do find this very amusing. The China Songshan Shaolin Temple has been denied a trademark registration for "Shaolin Medicine".

As I've noted before, a trademark has to be attached to something - something in the marketplace - something you trade in.
So what did the monks call "Shaolin Medicine"? Noodles.
Well, and instant coffee, and a few other foods.

The monks began selling their foods with the name "Shaolin Medicine" back in 2004 and at that time applied for a trademark with the Chinese bureau that handles such matters. A committee rejected the application and the monks filed a lawsuit against the commission. (hyaaa!)
Monday the court ruled against the monks (bam! Ancient martial arts are no match for modern court room techniques).
The commission found, and the court ultimately agreed, that the name would confuse buyers into thinking the food had some actual curative properties. You see, the monks have been peddling "medicine" (mostly herbal remedies, acupuncture and quackery) for 1500 years. Now they are getting into the noodle biz.

The Zen monks have been catching a lot of flack lately for their increased commercialism, but I'm sure they can easily deflect it with their super-human reflexes and acrobatic flips. (keya!)

One source of many

The Reason for My Absence

2010-04-28T13:32:00.001-07:00

On January 30, 2010, my mother died suddenly and unexpectedly. She was 82 so it was not entirely unexpected. However, she did not have any chronic health problems beyond arthritis and some circulation difficulty in her legs. Basically her kidneys gave out, her blood pressure dropped precipitously, and when blood returned to her heart the strain was too much and her heart failed.

I took some time off an have been involved in another project and taken vacation, but I'm back now and ready to post again.

Hail Mary is 35 now

2010-01-17T06:52:00.000-08:00

The Hail Mary pass turned 35 in December.

Here is an excellent article about it.

I mention it here because of the last few lines of the article. Drew Pearson owns the trademark on "Hail Mary" for caps and shirts. I wonder if the Catholic Church was annoyed by that.

Legend of Booty

2010-01-17T06:16:00.000-08:00

I just read this brief article and as a trademark attorney something popped out at me:
Age of Booty sequel
On January 11, the makers of Age of Booty filed a trademark registration for the term "Legend of Booty."
The author of the article said "it doesn't make sense that they would register such a title without some sort of plan for a game to go with it." If he were a trademark attorney he would have known that not only does it not make sense, but it's not valid.
You have 2 possible bases for filing an application to register a trademark: you are using the mark in commerce, or you intend to use the mark in commerce within the next 6 months.

A quick peek at the USPTO website shows this is a 1B intent to use application and that it's for "computer game software . . . [etc.]"
So basically Certain Affinity has just told the world "we have a computer game coming out in the next 6 months called "Legend of Booty."

Does Google Dream of Electric Sheep

2010-01-12T04:59:00.001-08:00

Now here's a good case for learning a simple lesson about Trademark law.

The lesson: Trademark is not automatic.

Copyright is automatic. As soon as you put it down on paper (or other media "fixed" in tangible form) your right begins.
Trademark is a different beast. The first thing to realize is that legal protection does not begin as soon as you create the mark. The second thing to realize is that it doesn't begin with registering the mark either. Registering a trademark is a good idea because should you have a dispute over it, having it registered gives you numerous advantages. However, it has to be a valid mark before you can register it.

So how does a mark become a valid trademark? By using it in trade (or commerce if you prefer).
The basic concept of a trademark is that it identifies your goods to potential customers. Clear examples of trademarks are the swoosh that tells you it's a Nike shoe, or the golden arches that tell you a certain clown is pedaling ground beef and related food items. To register a mark, you must either already be using it for something you are selling, or you must have a sincere intent to use it within a very short period.

That brings us to the case of Blade Runner and Google's phone.
Nexus One
If you haven't seen the movie Blade Runner, based on the book "Do Androids Dream of Electric Sheep" by Philip K . Dick, staring Harrison Ford and Rutger Hauer (with excellent supporting roles by Brion James, Daryl Hannah, William Sanderson and others, and directed by Ridley Scott) then stop reading this blog and go watch it.

waits . . .

Now that you've seen it, you know that the renegade androids are Nexus-6. And Nexus One uses Android software. Hmmmmm. Coincidence?
Most likely yes.
I don't know why Google chose to call it's phone software "android" but given the sci-fi feel of the whole phone industry it's not ridiculous (or even particularly imaginative). Google explains why they called the phone "nexus" since it's supposed to be a nexus between your phone and your computer. One? well it's the first edition.

Android literally means "of the species of man" or "man-like". Its use goes back at least as far as the 13th century German theologian Albertus Magnus. In a popular 19th century French novel called "The Future Eve" or "L'Ève future", a character based on Thomas Edison invents an artificial woman to replace his best friend's fiancee.
The term "android" to depict a replica human is pretty clearly not a protectable use. A quick search of the USPTO shows 63 registrations of "android" - only 19 are live registrations that actually include the word android in the mark.
Google is one of them, but that doesn't mean they have a protected mark. A live registration is simply one that has not been denied or abandoned. That doesn't mean it's been approved.
Google's application is being stayed pending the outcome of a law suit in Illinois.
The Android’s Dungeon Incorporated sued Google for trademark infringement:
Specht, et al. v. Google Inc.

So now Google is facing another problem with trademarks, with threats coming regarding "Nexus One."
They don't have much to worry about though. As I explained, you have to use a mark to identify a product in order to get protection. "Nexus-6" is certainly similar to "Nexus One" but there's nothing to indicate Nexus-6 was ever used to mark a product. Not in this world anyway. In the fictional world within the novel it is actually the trademark name of the androids. But the law operates in this world. If Google had called their phone the "electric sheep" there might be a case, since that's a clear lifting from the title of the novel, and the title certainly identifies the product (the book) to buyers. But even if Google had intentionally lifted a term out of the text of the novel (provided it wasn't a copyright violation) they still would likely prevail in a trademark case.

In the end this is probably a non-story, but it does illustrate the concept that use does not provide trademark protection, only use in commerce does.

Tillman involved in another controversy

2009-12-01T12:38:00.000-08:00

When Pat Tillman left the NFL to fight in Afghanistan, I thought it was a terrible thing for him to do. Most people said it was heroic to turn his back on millions as a football player in order to put his life on the line serving his country in the hunt for Osama Bin Laden.
Now it may have been, but I thought it would have been better use of his particular talent to earn his millions and then give them to a truly beneficial charity.
But it was his choice and he made it, and he died in the service of our country and for that he should be honored.

Now the first controversy came about when it was discovered he most likely was killed by "friendly fire" and that the DoD lied about the circumstances of his death.

The second controversy came about when it was revealed that Tillman was an atheist and that the "friendly fire" was allegedly the intentional act of his fundamentalist Christian brothers in arms.

Well whatever the facts on those, he's now featured in a book called "Where Men Win Glory: The Odyssey of Pat Tillman". The cover of the book bears the photograph titled: "Afghan Fighter at Dawn".
The photographer is suing the publisher for copyright infringement.
According to THIS ARTICLE, the publisher did not sign the contract for use of the photo, and the agent for the photographer was fired, then the agent negotiated the contract and the publisher used it.

It seems like an open and shut case from the facts in the article: no one denies Ed Darack owns the copyright in the photo. The question is really going to come down to whether or not Random House had a license to publish, and according to the dates in the article, the did not because the offer was revoked before acceptance and acceptance was unauthorized.

This is what makes it interesting though. It's possible Random House operated under the apparent agency of the fired agent. Basically, Random House could get away with infringement if they show that they acted on the reasonable assumption that Getty Images still operated as agent for Darack. The short of it is, while it may be infringement, it may not be Random House's fault. If they did everything reasonable to get the license to use the photo, and only failed because the agency relationship between Darack and Getty had ended without Random House being informed, then they can't be held culpable.

It's one of those areas where you can do wrong, but if your heart was pure you get away with it.

Domestic Violence in the Big Easy

2009-10-23T14:48:00.001-07:00

Trademark fights can get intense but usually not with so much colorful language.

We can Slap Ya Mama, but you better not Punch Ya Daddy.

At least, that's what the Walker & Sons spice company is saying to the Falcons.
See, they sell a spice blend called "Slap Ya Mama" and Falcon has just started selling his "Punch Ya Daddy" spice mix.
Boy, Cajun spices can be rough on the family unit.

I haven't found a copy of the Complaint, but I can see a couple of issues from the stories I've read. One is called dilution. Basically, W&S is saying their product is very well known, and if anyone were allowed to just come along and sell something so similar that people would think they made it, the value of their mark would be diminished. If someone produced a crappy product with such a name, the reputation of the famous maker would be hurt, even though they didn't make the bad product.
Of course the key word there is "famous." You have to have a famous mark to get dilution protection. But what's a famous mark? Well there's where the lawyers make their money.

Another issue is the obvious similarities of names: "(strike) Ya (parent)".
Unless it's a ubiquitous practice at Cajun barbecues for people to go around eating spicy food then playing pugilist with progenitors, I think this is a pretty clear win for W&S. If a name is confusingly similar it can be said to be infringing.

Finally there's trade dress. That's basically how your product will look when a consumer is shopping. Do you have a distinctive "style"? So basically they are saying that even if the names were different, the package of one looks an awful lot like the package of the other. I say this is true too. The primary color being yellow or white - those are the 2 "metals" in medieval heraldry which can be based with any color to be distinctive at a distance. I'm sure modern marketing design types have another name for it, but basically they are interchangeable in many instances. Then a color band at the top with the maker's name on it, the use of paired chili peppers around the title; the fonts may differ, but font and color don't seem enough to me.

I'd say this is an easy win for W&S, especially given they've been in business for more than a decade and Falcons is a newcomer.

The thing to remember in all of this is it all hinges on likelihood that a consumer will be confused as to the source of the product. On one level trademark is a consumer protection scheme.

Of course I could be wrong. Maybe family fisticuffs is the state sport of Louisiana and neither name is protectable for being merely descriptive.

Arbitration and the Violent Criminal Act

2009-10-21T12:36:00.001-07:00

Another non-IP post, but this is so important I just want to put my thoughts down.

The Senate voted for the Franken Amendment to the Appropriations Bill.
That amendment prohibits funding going to a government contractor who uses contracts to interfere with a crime victim's right to seek redress in the courts.

Jamie Leigh Jones was the brave woman who made the story of her own rape and brutalization and false imprisonment by her co-workers so very very public.
She stood beside Senator Franken as he presented his amendment and as the voice vote was taken.
Ms. Jones was raped several times by coworkers, vaginally and anally then locked in a shipping crate for days. She finally persuaded one of her guards to let her have a phone, which she used to call her dad. Dad called his Congressman and they went to work rescuing an American captive in Iraq. Somehow this didn't make as much news as rescuing soldiers captured in Iraq; probably because she was captured by her own employer.

I don't do criminal law and don't know much at all about criminal law as it relates to actions outside the US by US entities toward other US entities (or citizens). The articles say there's some loophole that makes it virtually impossible to prosecute an American who commits a crime overseas, even if the victim is another American. That needs to be stopped, but in the short term at least we can stop paying for it.

As their website says: "When you become part of the KBR team, your opportunities are endless." For instance, the opportunity to be gang-raped and stuffed in a box for days. No thanks.

I want one!

2009-10-21T12:22:00.000-07:00

Nook
that is all.

Criminal Poking

2009-10-13T10:56:00.000-07:00

Normally I try to keep this blog on the topic of copyrights and trademarks, but occasionally I will find something so fascinating or so funny that I feel compelled to post.

This time it's how social networking can land you in jail.

I'm a big fan of Facebook. (here's me: http://www.facebook.com/VincentTLyon)
I just read 2 stories where Facebook users got arrested as a result of their activities there.
The first is from last month. Seems one Jonathan G. Parker decided to break into a neighbor's house and see if there was anything worth stealing. Apparently there was, as 2 diamond rings went missing.
How are we so sure Mr. Parker was the thief? While inside the victim's house he decided to use her computer to check his Facebook page. Facebook addiction is pretty pervasive, but come on. Focus on your work a little!
So Mr. Parker for whatever reason had enough of Facebooking in the victim's house, grabbed the rings and left before anyone got home to catch him.
But he left the computer on, and left himself logged into Facebook.
Victim comes home, discovers her home has been broken into, sees drawers and cabinets left open, sees the computer on, calls the police. Having access to his Facebook profile they quickly identify and arrest him.
That just falls in the stupid criminals file.

The next is far more interesting to me.
A woman has been arrested for "poking" someone on Facebook.
The story so far hasn't told us what their previous relationship was, but apparently it got so bad that Dana Hannah had a restraining order against Shannon Jackson. The Order prohibited Ms. Jackson from contacting or communicating with Ms. Hannah at all. Ms. Hannah must have really had problems with Ms. Jackson to get this order issued.
Then what does Ms. Jackson do? She "pokes" Ms. Hannah on Facebook.
Well, that seems like a contact or communication (is that what it is? I've never understood poking on Facebook) so Ms. Hannah calls the police. Boom. Ms. Jackson finds herself in jail for anywhere up to a year just for clicking the poke button.

One weird detail to consider: You can only "poke" friends. If Ms. Hannah had such a bad experience with Ms. Jackson that she had the restraining order issued, why didn't she remove her from her friends list? We may never know.

Read the story for yourself.

Olympic Committee wins gold medal in obnoxious enforcement of IP

2009-10-11T15:35:00.000-07:00

The United States Olympic Committee (USOC) has gone a little overboard in enforcing its rights to the word "Olympian".
The newspaper in Olympia Washington is "the Olympian" - and it has been so since 1889. Washington wasn't even a state then!
What difference does statehood make? None. I just thought it was interesting; but if you don't then how about 'before the modern Olympics'?
That's right, the modern Olympic Games began in 1896, 7 years into the run of the Olympian newspaper.
Now the USOC thinks it has some kind of priority over the name Olympian.

Why would they think that? I mean, the games ante-date the newspaper, and the committee itself wasn't called as such (or really formalized) until 1961. Why would this relative babe in the use of the term claim it had an exclusive right to the name?
Well, the Amateur Sports Act of 1978 is why.
That law was set up to protect the rights of athletes and provide some consistency across national borders. It also gave the USOC the exclusive rights to the trade names "Olympic" and "Olympiad."
In 1998 Congress gave us The Ted Stevens Olympic and Amateur Sports Act. That gave even more power to the USOC, and added some words to the exclusive trademark regime of the USOC - though oddly, it did not add the word "Olympian".
What's even more interesting though is that the Congressional Record (where all the debates in Congress are, well, recorded) includes background statements from at least one Senator explaining why there is an exception in the law for businesses in the part of Washington state around the Olympic Mountains. He (then Senator Slade Gordon) said it would only be fair to let those people keep using the name of their location.
Well, it looks like the USOC no longer wants to play fair.

So what are they doing about it now? In 2006, the Olympian newspaper in Olympia Washington applied for registration of their name as a trademark with the United States Patent and Trademark Office. The newspaper tried to register their mark and the USOC is trying to stop them, claiming "Olympian" is so similar to "Olympic" or "Olympiad" that consumers will get confused.
Yeah, I know I hate it when I want to buy tickets for a biennial sporting event and instead end up with a newspaper covering western Washington state.
The two are so similar.

Seriously? Confusion? And this hasn't come up in the past 100+ years the two entities have been operating?
This is actually pretty standard fare for the USOC. In preparation of a possible Chicago Olympic Games, the USOC forced Chicago businesses "Olympic Meat Packers" and the "Improv Olympic Theater" to stop using the names (now they are Olympia Meat Packers and iO Theater).
Was there really a fear that someone might confuse a side of pork with the Olympic Games?

USOC is acting a lot like the parent IOC (International Olympic Committee).
The IOC has a tradition of greedily claiming everything they can.
The most recent to hit the news being the take down letter sent to Richard Giles. (IOC Letter)
Seems they are not too happy about him taking photographs of their events and posting them on Flickr with a Creative Commons license.
I don't think the IOC has a chance of stopping him. From what I can tell, they seem to be making 2 claims:
1 - Upon entering the Olympic event you agreed to certain terms, including limitations on how you may use any photos you take there.
2 - The Olympic logo is intellectual property and you don't have a right to make a copy of it (say, photographing an Olympics flag) or to distribute said copy.

The second is pretty much a dead claim since there are more fair use exceptions available than there are pictures of barely clad female athletes on Richard's Flickr Page

The first strikes me as more fruitful for the IOC since it's basically a contract claim. The problem is they said he could use his photos for "personal" use, but there's no definition of what that means. I suspect putting your photo up on your Flickr page is personal, even if you let other people take and modify copies.

It will be interesting to see it play out if they do bring a legal action. His deadline to comply was Thursday - and the photos are still there.

Obey the Law? We Don't Roll That Way

2009-09-15T11:02:00.000-07:00

I think in my next case I will take a page from the Ellen DeGeneres show.

Judge: Is there a reason your client did not provide this crucial document during discovery?
Me: Yes, your honor. We don't roll that way.
Judge: Oh, okay. Motion for Sanctions dismissed.

On second thought, maybe not.

I just can't get my head around this. There's got to be more to the story.
For those of you who don't watch daytime television, Ellen DeGeneres is host of an eponymous television show. In my opinion she's actually quite talented and funny, though I don't watch the show except when I'm on vacation. After delivering a monologue each day, Ellen dances from her monologue stage to the interview seating area, accompanied by some hit pop song of the day.
Recording industry people realized that the Ellen DeGeneres Show was playing recordings of those songs, but had not actually paid for a license to play the songs.

So, someone from the recording industry called up the show inquiring why they hadn't bought a license and were told "We don't roll that way."
I'm having a hard time envisioning that conversation. Here's how it plays in my mind:

RI person: Hi, is this the producer of Ellen?
EDS person: yes it is.
RI person: Well we just realized you did not buy the inexpensive and easily obtainable license to play recorded performances of the songs you use each day. We own the copyrights and wonder why you didn't pay for permission to use them.
EDS person: We don't roll that way.
RI person: but . . . it's required. It's the law.
EDS person: that's whack! *click*

No, doesn't sound right, does it. All we get from The Complaint is the infamous "we don't roll that way" line.

There's another little puzzler. The Show bought licenses for the compositions, but not for the sound recordings. You see, here's a very rough idea of how it works. A composer writes a song. He or she gets someone to record it, either by contacting a musician (it's very common in country music for someone to write a song and mail it to their favorite performer) or if he/she is a musician, by renting studio time.
When that happens there's now a new work: the sound recording (or phonorecord).
The Show paid for the composition. That means they can perform the piece, just like how a Kiss cover band can play their own version of "Calling Dr. Love" but if they want to play the tape of Kiss performing it, they need a different license.
So they clearly knew they needed a license. It's a really hard thing to think someone as sophisticated as Warner Brothers, who owns the production company behind the Ellen DeGeneres Show - and who also spawned the now independent Warner Records* - would not know they needed a license. It will be fun to see how this one plays out.

*That's right, Warner Records is suing Warner Brothers Entertainment, it's momma.

Identifying Frogs

2009-09-05T13:42:00.000-07:00

Can someone tell me how to identify this frog? He hopped out of my oregano plant as I was watering it this morning.
I'd really like to know if he's a native.

California Hates Breasts

2009-09-03T13:02:00.000-07:00

You've seen the "Got Milk?" ads all over the place. Did you know they are the product of the State of California?
Specifically the California Department of Food and Agriculture.

You've probably even seen some spoof of them: Got Beer? Got Tunes? etc.
Well if you haven't there's a Texas company selling several spoof stickers on the "Got ____" motif. (these stickers are designed for vehicle windshields)
But this time they've gone too far! - according to the state of California.

The California Department of Food and Agriculture has filed a lawsuit against the Texas sticker company for violating its trademark. Funny, they didn't think "Got Beer?" was similar enough to cause confusion (or to defame) but this one they do.
What does the nefarious sticker say?
Got Breastmilk?

I guess because it starts with "Got" and ends with "milk?" it's confusingly similar.

Personally I think it's ridiculous. Obviously the California Department of Food and Agriculture is not trying to promote or encourage the sale of breast milk. How could anyone think "Got Breastmilk?" has anything to do with the California Department of Food and Agriculture I couldn't guess.
But apparently I'm alone. The USPTO actually issued a denial to someone trying to register the t-shirt logo "GOT BREASTMILK, I DO". The reason for denial?

Applicant had appropriated the GOT MILK slogan "for use with a service that is closely related to the goods sold by registrant and the type of promotional services offered by applicant as well. These similarities in goods and services, make it highly likely that those familiar with applicant’s goods and services, will conclude that registrant is now putting its slogan on t-shirts so as to promote milk."

Exactly what goods and services would a woman wearing this t-shirt be selling that is so close to what California is promoting?
Unfortunately the applicant did not fight to continue the application in the PTO and the application was deemed abandoned. I think she would have won.

Now oddly enough, there is something I find meritorious in the suit.
For one thing, it hurts the "Got Milk?" mark because after seeing this, I'm less inclined to buy milk. But beyond that, there is possible Dilution of a famous mark.

I don't think there's any arguing that "Got Milk?" is not famous.
Dilution is basically using a mark (or an extremely similar mark) on some OTHER product than what the mark holder is selling. The mark is diluted because it loses its strength for selling a product. People may start associating the mark with something else and the mark/product association in the minds of consumers won't be as sudden and as strong.
So, I do see the "Got Breastmilk" sticker as possibly making the "Got Milk?" mark less associated with the California Milk Processor Board. But the same I think would be true for "Got Beer?".
I guess they just thought this was a closer link and therefore a better fight to pick.

Two final things about the Texas Sticker company.
1 - what's with them and newborn babies? They have a sticker that says "MECONIUM HAPPENS".
2 - apparently just filing the suit worked. The "Got Breastmilk?" sticker is no longer available at their website.
source

I never thought lime in beer was a good idea, much less worth suing over

2009-09-02T11:10:00.000-07:00

Anheuser-Bush sues a little Canadian brewery over the use of limes and the color green to sell beer.

Seriously.

I know you American Corona drinkers shove a bit of lime in the bottle (it's my understanding this is rare in Mexico) and call it yummy but that's just wrong. And where's the salt?

Anyway, this can't be a serious lawsuit. They put lime (or lime flavor) in the beer and put a picture of a lime and use the color green (the color of ripe limes, duh) on the label. Now they think they can stop anyone else who puts lime in the beer from using a picture of a lime or using the color green?
I hate to say this, but I believe this is not a real issue, but just AB trying to use its deeper pockets to dominate the field by misuse of the legal system.

A term cannot be a trademark unless it is distinctive. AB may be the first to market this way, and they may have put a lot of money into marketing to make their product and label known, but in the end it's descriptive. It tells you what flavor is in the beer. A descriptive term can't be a valid trademark unless it has established a secondary meaning. When you see a picture of a lime and the color green, is your first thought really "Oh, Bud Light!" ? Didn't think so.

But those crafty Canadians aren't just using the logical descriptive of limes on their lime beer, they are also allegedly copying AB's advertising.
"Anheuser also objected to Brick’s use of a Web site saying like its own Web site for Bud Light Lime, it used pictures of young, attractive people wearing bathing suits."

That's right! Women in bikinis to sell beer! Ingenious! I bet nobody ever thought of that before.

Seriously, Anheuser Bush, don't you have anything better to do?
one newspaper source

free rider infringement

2009-06-19T06:24:00.000-07:00

One of the basic principles of American Trademark law is that you can't make something that looks or sounds like someone else's product or service. The problem that would cause is someone might want to buy product A, get confused by the look-alike, and buy product B by mistake. B then unfairly benefited at the expense of A on A's brand recognition.
Thus one question immediately asked in a trademark case is "is there a likelihood of confusion" among consumers.

Well not so in Europe it seems.
The European Court of Justice has just ruled that likelihood of confusion is not necessary to find trademark infringement.
It seems "unfair advantage" is the key in European trademarks.
news source

The "free rider" problem is one economists tackle all the time. It's when one party benefits from the actions of another or others, but doesn't participate in that action. One example is the person who doesn't pay taxes. That person still uses the roads, is still protected by the military, but doesn't pay for any of those services and gets a free ride off others paying. Another example would be the anti-vaccination person. If 90% of the kids are vaccinated, the odds of your kid getting sick though not vaccinated are slim. He benefits from the herd immunity resulting from everyone else getting vaccinated (the problem there is if vaccination rates drop to say, 80-85%, herd immunity is lost and you get epidemics).

So in Europe, if you intend to ride someone else's coat tails, but you aren't fooling anybody, you are still guilty of infringement.

What really bugs me is the judgment specifically said this is infringement even when there is no harm to the trade mark owner! In other words, it's a victimless crime. Consumers have access to a product they might not otherwise have. A different market segment is served. Everyone wins, but for some reason it's a bad thing. Now they are saying you can't indicate that your product is an imitation of another product, even if that's exactly what you are doing.

I'd hate to see this reasoning come across the pond.

Out of their minds

2009-06-19T05:50:00.000-07:00

How does this happen?

Insanely large judgment

I understand willful infringement of copyright is a bad thing. Illegally downloading songs knowing you are doing so should be penalized.
But $80,000 per song? How is that in any way justified?
What happened to the principle of proportionality where the punishment matches the crime? There is no way one copy of one song can cause $80,000 in harm to the record label.
Perhaps it's the old Lincoln addage: "the best way to get rid of a bad law is to enforce it."

I love her reaction though. Reminds me of a quote from the Who. Pete Townshend I think.
Remember, this was the early 1960s so money meant a lot more then. The Who had a bit of shtick where they would smash their instruments at the end of the show, along with much stage equipment. One day they were called into their manager's office to be informed they were 100,000 pounds in debt. Their reaction was to roll on the floor laughing. Pete (I think) said something along the lines of "when you're 10,000 pounds in debt you worry because somehow you've got to pay that off. But you know you're never going to pay off 100,000 pounds so it's just laughable."
Of course their story ended better, with them becoming world-wide blockbuster stars and easily paying off everything.

And now they stand on the side of the creditor, demanding payment from mom for her downloads. (though I doubt she downloaded the Who)
That brings up another thing though: I bet dollars to donuts not a penny of that judgment will go to the artists. Do the artists get the nickel on the dollar off the judgment that they would have gotten off a paid-for download? Probably not, though I would be interested to find out.

Toughen up you "Pussy"

2009-05-22T08:29:00.000-07:00

One week ago the US Patent and Trademark Office's Trademark Trial and Appeal Board upheld an examiner's decision not to register a trademark for a new energy drink. The proposed mark is a stylized phrase, "PUSSY NATURAL ENERGY." The TTAB didn't like the word "pussy".

The Decision

HOW CAN THEY REFUSE?

The Trademark Act Section 2(a), 15 U.S.C. § 1052(a), permits the USPTO to deny registration of a mark on the grounds that the mark “consists of or comprises immoral or scandalous matter.”
So the examiner found the word "PUSSY" to be scandalous and the TTAB agreed.
In fact the examiner found the word to be a term for female genitalia that is "vulgar, offensive, taboo, obscene and coarse".
The decision provides a list of interesting terms, some deemed scandalous (Bubby Trap brasiers), others deemed not scandalous (Big Pecker T-shirts). So even if a mark is unique and not descriptive or suggestive, registration can be denied if it is too vulgar.

BUT NOT ALL MEANINGS ARE VULGAR

True that there are other meanings, such as a cat or a pussywillow, etc. But what the PTO has to decide is whether it has a vulgar meaning to a substantial group. For instance if there's a word with one meaning to most people, but in a particular ethnic minority community it bears a different, offensive meaning, the PTO can refuse registration. In this case the PTO decided to a large number of people the term would signify something vulgar and offensive.
But that's true for Big Pecker too. The difference is Big Pecker included a picture of a chicken with a gigantic beak. It was permitted because it held an obvious double meaning. The double entendre was the clear message. The PTO and TTAB rejected out of hand any argument that "PUSSY" has a double meaning in that context.
On that I disagree with them. In the context of an energy drink I think the meaning of a "weak or cowardly man" is clearly playing along side the obvious vulgar jokes around having a beverage called "pussy". I think the TTAB was wrong to dismiss it so readily, but I'm not sure the decision was wrong. "Pussy" as a term for a "weak or cowardly man" derives from the chide that the object is not really a man but is in fact a woman. In other words, along with being a vulgar reference to female anatomy, it carries a wealth of negative female stereotypes. If anything I would think such a meaning is worse.

BUT WHAT ABOUT FREE SPEECH?

It seems they should not stand in the way of him using the name despite its vulgar quality, and guess what; they aren't. He is still perfectly free to sell his drink and call it whatever he wants to (provided he's not making false claims about it). Trademark registration is a tool that helps a mark holder to exercise the rights he gets through use of the mark. He can go ahead and sell his drink, and judging by all of his foreign registrations, looks like he will.

At the end of the day, my problem lies with the statute itself. Whether or not something is scandalous is so subjective and so clearly changeable. I don't think the federal government should be making moral judgments about the content of a mark. As long as it is distinctive and exclusive, that should be enough. So, while I think this is a bad law, I think the TTAB was correct in interpreting that bad law.
The history on the statute is scarce, and the courts have determined that the purpose behind it was not to legislate morals, but merely to prevent the government from spending time, money and providing services for objectionable material. (In re McGinley, 660 F.2d 481)
Of course, how is refusing to provide services based upon the offensive quality of the material not legislating morality? There is no difference between providing a benefit to everyone but those you deem immoral and penalizing those you deem immoral. Plus, I suspect more money and time are spent in fighting over denial of registration than would have been provided if registration had been approved.

So Scalia was simply wrong when he said Lawrence v. Texas spelled the end of morality-based state action.

Taking Off

2009-05-15T12:39:00.000-07:00

Introduction:

I have decided that 2009 is the year I go solo.
I will be recording my progress here, as well as my general thoughts of the law.
Some of my posts will be humorous, some will likely be made in anger.
This is part business and part expression.

Lyon Legal is a firm seeking to focus in Copyright and Trademark litigation.
I have more than 4 years of experience as a litigator. I have appeared for clients in cases in District and Circuit Courts in Maryland and in the local courts of the District of Columbia. I have also appeared for clients in the United States District Court for the District of Maryland and the District of Columbia.

I also maintain a license to practice in Oklahoma, where I have many family and friend connections, though I have never practiced law there.

In addition to this blog I have a twitter presence
http://twitter.com/VincentLyon

and I am on facebook:
http://www.facebook.com/VincentTLyon

Background:

I was born and raised in Oklahoma City.
I went to Rosary Catholic school for primary school, and Northwest Classen High School.
My college education began with 2 years at St. Gregory's College (now St. Gregory's University) where I acquired an Associate's Degree in Natural Sciences.
I went on to obtain a Bachelor's Degree in History from Cornell University.
Returning to Oklahoma for personal reasons, I received a Masters Degree in Museum Studies from the University of Central Oklahoma.
After a few years working in that and related fields I realized my great interest in property rights of artists and authors.
In 2004 I graduated from the George Washington University law school.
I was licensed in Maryland in December of that year and in the District of Columbia the following year. Two years after that I became licensed in Oklahoma.

My practice has been diverse. I have handled bankruptcies, divorces and child support cases, contract disputes, personal injury, and of course copyright and trademarks.
I set out on my own, inspired by President Obama's inaugural address and look forward to the fulfillment of being my own boss.