Wish Me Luck.

I don't really believe in luck. Ah, but mazal -- that's different! Let's hope our mazal is good for this one:

I am beginning a trial tomorrow (Monday) morning in federal court in the District of New Jersey (Camden vicinage). So, as the Professor says, "blogging will be light." Of course when he says it, he is saying it to stadiums full of people. Whereas me, not.

But if you do pop in, have me and my partner Nancy Exumé, who is riding shotgun, in mind. We are for sure on the side of the angels tomorrow.

Linker from a Grok Land

Doing my morning website traffic analysis, I noticed an extraordinary traffic spike, not to the blog, but to our firm website. What gives? Thankfully, my terrific hosting company, Capalon in Baltimore, provides great tracking tools. Turns out that we got a link from the ultra-impressive GROKLAW website. (That makes two grok-based threads this week. Grok that!)

Couldn't figure it out at first, so I searched on the site for my own painfully common last name (#82 -- could be worse; my first name's #21). No links to articles about Mr. Olympia, barbecues, blog-hating silver-spoon-in-mouth newspaper columnists, U.S. Senators, misspelled movie stars, gubernatorial wannabes, thankfully. So it was easy to find this article, posted yesterday, about depositions taken pursuant to Federal Rule 30(b)(6), citing in turn a piece I wrote a few years ago and which is found on our web site.

The link on Groklaw generated no less than 627 hits in one day alone! That is massive traffic, far more than my little Instalanche of a couple of weeks ago at the blog. What does it get me? Well, for heaven's sakes, now 627 more people know that they are responsible to prepare corporate talking heads to give responsive, substantive answers when they are presented for Rule 30(b)(6) deps.

If you love the law, what else do you need?

The Parody Bomb Goes Off

When it rains, it pours. Via Andrew Sullivan (and reported here too) a report that Volkswagen is going to sue-- in the UK -- the pair who made that tasteless mock commercial circulating around the Internet in which a suicide bomber detonates himself but the explosion is contained by the well-built Volkswagen. I don't know anything about UK law on parodies, and I am not sure whether this would be a trademark suit for use (or dilution?) of the Volkswagen trademarks (which would probably lose here) or a copyright suit based on some similar commercial which I have not seen (which theoretically could win here). (See our discussion on what does and does not qualify as a parody here.)

If you're Volkswagen, you may have to sue first and ask questions later. There are times when, as long as there is a colorable claim (i.e., the markholder does not believe the complaint violates legal ethics or Federal Rule 11 as frivolous) -- even though it's not a likely winner, you've got to file to protect the brand and make a public statement where there's the risk of public outrage. The lawsuit is a way to distance yourself from the use of the mark.

That's when it's not frivolous. And it's when we're talking about a morally outrageous use of the mark, as opposed to a commercially or politically, religiously, philosophically competitive use -- or one where you just plain resent that your property is part of the picture and you weren't cut in on the profits.

Slippery slopes? That's why lawyers are paid to exercise judgment.

Hooters Overreaching on Trade "Dress": You can look but you'd better not touch

IP News Blog at Pierce reports that the high-class joint Hooters has lost an attempt to claim trade dress rights in the colors worn by their high-class waitresses. What was this "trade dress"? According to Randall Zidones, who posted the item, "The girls at [competitor] Winghouse wore red shorts and white tank tops, similar to the orange shorts and white tank tops of the Hooters Girls."

Orange shorts and white tank tops, "trade dress"? When will it end?

When judges stop it. Looks like one did.

UPDATE: She really did, bless her heart. According to the original news report picked up by Zidones, U.S. District Judge Anne C. Conway actually entered a directed verdict after Hooters put in their case! Not only that, but the defense's counterclaim went to the jury and Hooters got socked with a $1.2 million jury verdict that the Hooters was in breach of an earlier agreement between it and Winghouse to settle all trademark claims. Terrific legal work by a gent named Don Conwell, a leader in the technology litigation bar, who practices in Florida.

The Great Copyright Crackup

ASCAP Launches Infringement Actions against Establishments Performing Copyrighted Music without Permission: The beginning of the end? I'm not saying they're not entitled. I'm not saying the law's not on their side. I'm saying the big-money copyright ownership gang -- the ASCAP's, the RIAA's, the MPAA's -- gives the distinct impression of Japanese kamikazes. They're suing everyone and everything, they've lost consumers... it's quite a thing to see.

Update: Who Rolled the Stone Away?

Courtesy of Best of the Web Today, we learn that Rolling Stone magazine has repented of its earlier sins and has accepted the Bible ad.

Funny how a little publicity can put the fear o' God in ya!

More to Google*

Now Instapundit links to this New York Times story:

Google and Yahoo are introducing services that will let users search through television programs based on words spoken on the air. The services will look for keywords in the closed captioning information that is encoded in many programs, mainly as an aid to deaf viewers.
* * *
A Google spokesman, Nate Tyler, said the service would include "most of the major networks," including ABC, PBS, Fox News and C-Span. Mr. Rosenberg said Google did not think it needed the permission of network and program owners to include them in the index but would remove any program or network if the owner requests it. He declined to discuss any business arrangements between the program owners and Google.

Are these guys great for IP lawyers, or what? Why isn't this just a springload for litigation? I can see no way they can cover all the issues with these mysterious "business arrangements," and the hedging -- "we don't need permission anyway" -- tells you where they think they're going. (When you draft that copyright infringement complaint, try this angle: The utilization of dialogue or other spoken words from television programming as a search term constitutes a derivative work. What say?)

By the way, apropos my earlier Google post, Frédéric Glaize of the Canadian-language blog Le petit Musée des Marques (they speak Montrealese but they're from France, oddly enough) emails with news that an English translation of the December 16th French opinion (well, of the abstract) is available here. If you speak the language, which I don't, the Musée appears to be a very worthwhile trademark blog. After all, it's the blog that said about this blog:

Ce blog contribue à justifier (a posteriori) le choix de Dennis Kennedy pour ses Legal Blogging Awards :
4. Best Legal Blog SectorsWinner: The Intellectual Property Blogs

For that, I don't need Babel Fish.

UPDATE: Evidently we go over very well in the Romance languages sector. Here's a nice comment in Mexican, in an item reporting on the Media Bloggers Association and other blog-active developments:

Sin embargo, en Estados Unidos los sucesos se precipitan. Al ya aludido The Bloggers’ Rights Blog como defensa laboral del blogger, se suman ahora varias iniciativas interesantes como Electronic Discovery Law, bitácora de recursos legales del bufete Preston Gates & Ellis LLP; Likelihood of Confusion, del prestigioso abogado Ronald Coleman ...

Prestigioso, eh? Claro, prestigioso!

* "To Google" -- Obviously something our friends at Google have to worry about is the bane of all great brands, which is becoming a victim of one's own success. Cardinal rule of trademark maintenance: NEVER USE TRADEMARKS AS VERBS. (Coleman's Corrollary: Never use "trademark" as a verb. Maybe I should Xerox that one and send it around... or did they trademark that too?)

Centerfield: Blog Name Theft

Very interesting brouhaha beginning over on the Center Field blog published by a group of self-described political centrists. (I had hoped it would feature commentary by Andruw Jones and Bernie Williams.) The question is the same one everyone has asked himself when registering for his first ever blog: What if someone steals a blog name?

Bob Cox of the Media Bloggers Association asked me to weigh in semi-officially on the Centerfield: Blog Name Theft colloquy. Here's what I wrote:

I am the general counsel of the new Media Bloggers Association, whose leadership has asked me to "weigh in" on this. This is not legal advice, nor have we researched the question, but because we're on Internet time the MBA has asked me to shoot from the hip from a legal / intellectual property point of view and get it out there.

My take is that under certain circumstances there could be a claim of (common law) trademark infringement under state and federal law for "blog name impersonation." A blog is a service; it is may be (depending on the facts) provided "in commerce." And "infringement" probably causes likelihood of confusion. The complaining blogger would have to prove that his blog has "secondary meaning" -- that the public (not necessarily the whole world, but the relevant "public") identifies the blog name in question with a particular source (i.e., his blog).

Doubtless the brand names in this field are worth a considerable amount of money, and I would not want to be the one to rip off "Instapundit" or "Daily Kos" with a similar blog name. Note that it need not be identical; even if it is similar, readers could well be confused by the implication of sponsorship, affiliation or origin. It is not necessary to have a gold-plated blog to make such a claim but, again, the less well-known the blog, the harder it will be to prove secondary meaning. Certain blog names may also be too descriptive to qualify for trademark protection. The question of whether personal names used as blogs may be trademarks is less clear.

The presumed goal of a court action would be to seek an injunction requiring that the name not be infringed. Few blogs would be able to prove monetary damages. Attorneys' fees are theoretically available in certain cases of purposeful trademark infringement, but are seldom awarded and even less seldom collectable.

Having said all this, I am not aware of any such claim that has been made in a court. The UDRP deals with domain names and registered trademarks only, so there is no recourse there. Most bloggers are, it appears, lawyers or law professors (this is a humorous aside), but those who aren't may have trouble affording counsel -- which is one of the reason the MBA was founded. Whether this or some other bloggers' group would want to be involved in adjudicating such disputes or representing offended bloggers remains to be seen.

Again, this is not legal advice for any particular person nor is it the position of the MBA, but it is our first take on the question.

See Dick Win. Pay, Defendant, Pay.

By now you must have heard about the dustup involving Yiddish with Dick and Jane. The irony for me is that not long after I was learning to read English with the original Dick and Jane at P.S. 225, I was learning Yiddish from an essentially identical book for little secular Yiddishists (it turned out handy later at the Chaim Berlin yeshiva, but I digress) with "Motl" and "Gitl" standing in for Dick and Jane.

In any event, and after discussing this case with my friend, IP lawyer Ben Manevitz, this case seems to be pretty much out of the "fool's parody" playbook -- "fool's" as in "fool's gold." It looks like a parody, but it isn't. The case to look at here is the "Cat Not in the Hat" case out of the (here it comes) Ninth Circuit (getting one right). Here the Circuit Court followed the rule set out a few years earlier in the "Pretty Woman Parody" case and applied it to a book, written in the style and format of Dr. Seuss's The Cat in the Hat, to tell the story about the O.J. Simpson murders in which Simpson is "the cat not in the hat." (Tastefulness was not a basis of the decision.) The court correctly distinguished between a real parody, whose target is the plaintiff's work, and what I am calling a "fool's parody," which merely utilizes (or as Ben says nicely, "leverages") the extant work as a way to parody some other thing.

Now it's possible that the target of the parody here is the gentile world, of which Dick and Jane are supposedly emblematic. (Of course many argued they weren't even emblematic of that.) The problem with such an argument is that it's too broad of an exception. No, that Spot won't hunt.

UPDATE: I stumbled on some terrific and contrary commentary on how to read the Cat Not in the Hat and Pretty Woman cases from, guess who, Marty Schwimmer, here wearing his Blawg Channels hat last year. Under his interpretation, the "broader commentary" would in fact fly, to which I say he has thereby crafted an exception that swallows the rule. As I said to some friends recently, I remain pretty right-wing on copyright -- despite being bloodied (and significantly enlightened) online years ago by the crew at the CYBERIA-L -- but on trademark I'm a freethinker...

Survey: Users Confuse Search Results, Ads

Speaking of my post from yesterday, below -- wow. Survey: Users Confuse Search Results, Ads. Hard to see how this doesn't have some effect on any settlement discussions in the Google / Geico case.

Of course, this survey has not met, and presumably would not meet. the Daubert standard for admissibility in federal court. But it does require me to change my post below to read, "whether a search engine is or is not causing likelihood of confusion under the Lanham Act by delivering results utilizing key word searches that happen to be someone's trademark is essentially a metaphysical one -- which is to say that judges are making policy decisions, which Congress is supposed to do."

Yes. And the reason I believe it remains a question, or should be, is because I am dubious in the extreme -- as everyone who has ever met me knows -- about the cooked-up concept of "initial interest confusion." (I wrote about my discontent here.) This doctrine, never contemplated by Congress, is what is driving all these cases. If somebody doesn't address this full-on (and the Seventh Circuit has already someone let me down -- see the article), it won't be the end of the world. But it will be world we never voted to create.

UPDATE: Via Marty Schwimmer, here's a transcript of the proceedings in the Geico case in which the court and counsel address the topic of designing the appropriate survey.

UPDATE: Crack IP attorney David Nieporent from my office took a close look and confirms that far from meeting the Daubert standard, this survey wouldn't even meet the Dilbert standard. Not only was it a phone survey, but it essentially consisted of asking the subjects whether they knew what "sponsored results" and other terms meant -- terms that most people who are not involved in Internet marketing or IP wouldn't know. That's a long way, however, from saying they would be confused if actually presented with these different results on the screen.

Google Plaintiffs Start Here

It may or may not be true that sooner or later, everyone in intellectual property law will be suing Google.

Well, it's almost certainly not true. But there's no question that this dominant player in the Internet (yes, I own a few shares!) (to be exact: four. or five.) is starting to present a ripe target for many a frustrated trademark or copyright owner that is miffed about having its IP properties diced and sliced the Google Way. (UPDATE: And some others.)

As a service to the IP bar, and via the No Watermelons Allowed blog, here's the first order of business: Coming to a coherent technical understanding of how Google works, courtesy of the Computer Society of those rapscalions at the Institute of Electrical and Electronics Engineers.

Be sure and give me a head's up when you find someone who has abstracted this into English. But frankly, who wouldn't like to see more heavy-lifting, drawing on this sort of nuts and bolts technological insight, in the many judicial opinions that brush so very broadly on the issues that will have a vast impact on the Internet and the economy to which it has given birth. For nearly a decade now judges have been ruling on critical cases involving the Internet and IP, trade law and other areas of law without evincing much proof of having gone beyond their own hunches (and maybe those of their clerks) as average Internet Explorer users.

In reality, Congress should be making these calls, not the courts. The question, for example, of whether a search engine is or is not causing likelihood of confusion by delivering results utilizing key word searches that happen to be someone's trademark is essentially a metaphysical one -- which is to say that judges are making policy decisions, which Congress is supposed to do. There is no right or wrong answer to whether someone searching for Coke, and getting the Pepsi website, should be protected from such "unfair competition." Congress has the horses to get people knee-deep into articles such as this one, to utilize their hard-care technology expertise, and to make appropriate legislative recommendations.

This is all starting to matter too much to be left up to District Court judges in the most overturned Circuit in the country. Or have you heard what I am told is the latest bit of waggery among certain sectors of the bar: How does a typical U.S. Supreme Court opinion now begin? "This case is on certiori from the Ninth U.S. Circuit Court of Appeals. The other grounds for reversal are as follows...."

Isn't it possible for the legal-political-commercial regime to make some attempt to manage, rather than be managed by, the development of the law of the Internet?

(By the way, don't have a cybercow. I said manage development of the law of the Internet -- not "manage the Internet" or "manage the development of the Internet.")

No Holy Rollers for Rolling Stone

CNN is reporting that Rolling Stone magazine has turned down an ad for a new "with it" Bible edition for young people. "We are not in the business of publishing advertising for religious messages," said a spokesman.

This is a truly silly statement. No one suggested Rolling Stone was "in the business of" publishing advertising for religious messages. It is presumably "in the business of" publishing a stale, hung over People magazine focusing on "youth culture" and paying for it by running advertisements. Ironically, that "business" kind of stinks for the magazine; ad pages and circulation have been in a steep decline since forever, despite a recent very modest uptick. Evidently, they believe they have more to lose than to gain by taking a "religious message" as an advertisement.

No, it isn't censorship. Every publication has the right to accept or reject advertisements from anyone, for any reason. But it does bespeak narrow-mindedness, and it displays something far short of what we might call cultural self-confidence.

What a slimy, mossy mess.

Standing Shmoe to Shmoe

The author of this weblog was quoted in USC Annenberg's Online Journalism Review in an article entitled "Tsunami Video Alliance Portends Future Distribution for Amateurs" last week. (It's about the Media Bloggers Association.) I don't mind saying that I powerfully enhanced the sterling image of attorneys as high-minded and articulate preceptors of the public with the following quote, responding to the question of blogger liability for carrying other peoples' videos (particularly tsunami videos). Here's the excerpt, essentially unchanged from what appears to be the original Yiddish:

It's not for nothing that they're [i.e., other peoples' works are] protected by copyright. There is no non-profit or 'hobby' exception to the copyright laws. Attorneys' fees and costs could even be available to the copyright holder, if he registered his copyright with the Library of Congress -- not likely but not impossible. I think linking to some other shmoe is the ticket here.

That sounds a little zhlubbier than I meant it to be. Let me clarify: At some other point during the interview I am sure I mentioned the fact that ultimately linking to that shmoe is not all that helpful, legally speaking, if you are aware (or should be aware) that he is himself infringing someone's copyright. And now I'm saying so in print. So, nu.

The Blogola "Scandal"

Last week Instapundit took the unusual step of opening comments on the ethics of Blog-payola. I wrote this:

I am pretty agnostic on this. I think it is hopeless to anticipate a standard of behavior in Blogovia. It won't happen, and I am not sure it should. No one is free from bias of some sort or another. Being paid to express an opinion is not so different from being affected by your likelihood of getting tenure, or a promotion, or maintaining your anonymity, or getting a choice committee assignment, or for that matter stroking or offending the right or wrong people in the world of blogs, politics, one's profession or with N.Z. Bear.

The only real difference I can see is that one form of blogola is liquidated, but the other sources of bias can be and of course are in some cases far stronger.

Consumers of blogs have to simply be skeptics. Those who disclose more, and more accurately, will be more trusted on that account. At the end of the day, all you have is your persuasiveness, your intellectual honesty, and -- in my case -- a good looking picture at the top of your columns.

Okay, I know -- not everyone can have such a picture. But you work with what you have. You get my point?

Comments to EFF: Sod Off

This is an update on my earlier item about the EFF's ACLU-like position in the Apple / PowerPage lawsuit. Apparently everyone (all five of 'em) who was motivated to comment on the EFF's position in this matter (which I will paraphrase as "other peoples' information wants to be free once someone violates their duty of confidentiality and blabs it") agrees with Likelihood of Confusion. As we all know, rectitude is solely a function of who wins the vote, so you have to like this trend.

How would EFF climb down from this one? And assuming they don't, how would it ever enforce any non-disclosure agreements it may have with its own employees, contractors and others?

I Have a Dream (C)

The online Globe and Mail has an important item on how documentary filmmakers and others are being slammed by the IP equity grab, called "How Copyright Could be Killing Culture". Okay, maybe "killing culture" is a little over the top. I suppose if more rigorous enforcement of copyright would throw a speed bump in front of the likes of Michael Moore, our modern Leni Reifenstahl, that would put a little chill in the air -- but is that killing "culture"?

The point of the article, flagged by Tech Law Advisor, is nonetheless well taken. On the road yesterday morning, I listened to the entirety of the "I Have a Dream" speech on the Imus show (and, indeed, wondered about permissions -- or does Imus need them?). The speech is breathtakingly beautiful, compassionate, stirring, patriotic; it is a truly appeal to America's better self. (What a contrast to the self-parodic tropes of King's imitators.)

The Eleventh Circuit Court of Appeals ruled in 1999 that the speech was not "generally published" for purposes of waiver of copyright, and that the King estate had the right to enforce its copyright in the speech. It is interesting to learn that King himself filed the copyright for the speech (albeit a month after he gave it -- one of the issues in play in the case). According to the Globe and Mail article, however, for the makers of the King documentary Eyes on the Prize to renew their copyright clearances, they would need between a quarter and a half a million dollars. Evidently they won't or can't do it, so untold numbers of schoolchildren (who, please God, are prevented from listening to Imus's show) won't be exposed to the documentary, the speech, or this compelling version of the MLK story.

John Fund of the Wall Street Journal wrote a powerful opinion column on this topic two years ago. Here's a fairly disturbing excerpt:

Many civil-rights leaders believe the King family has stepped out of bounds in merchandising Dr. King's memory. In 1997, Dexter King negotiated a multimedia deal with Time Warner that the company said could mean as much as $10 million in royalties on books, Web sites and CD-ROMs. While schools may use Dr. King's speeches free, family lawyers hunt down scholars who would use his words. "Eyes on the Prize," the PBS documentary on the civil-rights movement, was delayed until the producers made a $100,000 payment to the King family. Julian Bond, head of the NAACP, says the price of his civil-rights textbook went up by at least $10 a copy because he had to pay to include four King documents in it.
"The family hasn't done itself a lot of favors with its insistence that somehow they have to profit," says Mr. Bond.

No, copyright won't "kill culture," but is it all worth it to ensure the Mickey Mouse franchise for perpetuity?

Mustang Has a Trademark In It

The Associated Press says Lance Gilman bought the famous pink stucco bordello known as the Mustang Ranch and thought he'd gotten a bargain. Which, in that business, is not easy to find.

A variant of the oldest rule in trademarks applies to the oldest profession: When you buy a building, even a really famous one, you don't necessarily buy the good will of the business that was done in it. It's a pretty good bet you didn't buy the trademark good will where -- as here -- you bought the building at auction from the government after the business went down the tubes. Especially when you've hitched it to a semi-wide and moved it closer to home, or, rather, to your "adult resort and spa." (Don't ask -- there must be a children's spa somewhere.)

A federal judge, not surprisingly, has entered an injunction preventing the use of the Mustang Ranch mark by the new owner pending a final trial.

IP Blogs Get Out of Bloglines

Now this is going to be interesting. Kevin Heller's superlative TechLawAdvisor blog has a story about how Marty Schwimmer (going for three links from here in one week, only one of which is an outright ripoff on my part) has loudly disconnected himself from Bloglines, an aggressive RSS feed aggregator. Marty is annoyed, and rightfully, that what the company is doing amounts to a 21st-century version of the old "framing" conundrum of the '90's. (See here for a scaredy-cat but thorough [natch] treatment.)

Kevin updated and wrote, "more complicated than I thought," linking to an article just a day earlier on Dennis Kennedy's tech law website. He has the same problem although, each man true to form, he writes (and analyzes) a lot more than Marty and doesn't, as far as one can tell, bail out of Bloglines. (I haven't either.)

Well, I'll say it's more complicated. Not only does Dennis Kennedy have a "twin" on Bloglines, he has a twin on DennisKennedy.com, too -- either that or maybe there is a "technological solution" to the question of how he is writing about himself ("Prominent Lawyer Blogger"! yes!) in the third person!

UPDATE: Marty explains that it's not the "framing" -- it's the prospect of his content being repackaged for sale to his own competitors (other trademark law firms). That and what he describes as a "disingenuous" response from the Blogline boys to his inquiry. Evidently, he's getting linked aggressively on this. It will be this week's "inside blogball" story, I think.

Brand Me Infantile

Reuters reports that U.K. regulators have once again slapped the wrist of the French Connection clothing company for their jejune FCUK ad campaign ("French Connection UK," get it?). Last February Brand Channel reported on this business, which has managed to attract the unwelcome (or perhaps not?) attention of the American Family Association. (The AFA is no more a "self-appointed" guardian of public morality than you or I. They have a right to be offended and to act on it within the parameters of the free speech and the free market.)

The fact is, it's almost impossible to say what legal basis there would be in the U.S. to prevent the widescpread promulgation of this clever, adolescent joke on outdoor advertising throughout your neighborhood, on your kids' classmates' backpacks and jeans pockets and, of course, throughout the media. Unlike the U.K., the last few decades of First Amendment jurisprudence have eviscerated public obscenity law in the U.S. In contrast, it appears that the U.K. possesses a trademark office which does not suffer from a shortage of tools either. (No, not at all.)

The AFA's efforts notwithstanding, there are, according to TESS, nine active FCUK trademarks or trademark applications in the U.S, including a registration issued exactly one month ago today for FCUK AT HOME.

January 28th - DC Seminar on Intellectual Property and Sovereign Immunity

If you're going to be in or around DC on January 28th, the Federalist Society is hosting this seminar that will examine

the Supreme Court's June 1999 rulings in a trio of cases which, taken together, articulate perhaps the broadest statement of the sovereign immunity of States in American history. Two of these cases denied relief for alleged trademark and patent infringements, respectively . . .

When you consider how much of American business equity is sunk into or dependent on intellectual property, this topic is not so esoteric -- especially if that IP equity is yours.