Tuesday, November 23, 2010

My 2 greatest loves united!

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.

Monday, November 22, 2010

More News for the Naked Cowboy

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.

"I'm against marriage period"
he's concerned about the "demilitarization of America"
"secular humanism . . . is taking away our traditional values"

Friday, July 23, 2010

Can You Franchise Nudity?

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!

Tuesday, July 20, 2010

The average consumer can't tell Apples from Oranges

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.

Thursday, June 17, 2010

Where was that infringement?

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)

Friday, May 14, 2010

How many things are a foot long?

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.
Kahala Franchise Corp.

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

Wednesday, April 28, 2010

Kung Fu Grip!

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

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.

The Reason for My Absence

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.

Sunday, January 17, 2010

Hail Mary is 35 now

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

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."

Tuesday, January 12, 2010

Does Google Dream of Electric Sheep

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.