In Da House

Thanks to in-house guy gone native, Jeff Gussis at InhouseBlog, for listing us as one of four blogs in-house counsel should consult to help stay on top of developments in trademark. His suggestions are so good we're going to steal the whole post:

Guide to Trademark Blogs

Do you manage your company's trademark portfolio or routinely deal with
trademark-related issues? You should consider signing up to one or more blawgs
that focus on trademark law. Here are a few suggestions:

1. The Trademark Blog
   (trademark news/issues)


2. Likelihood of
   Confusion (trademark and other IP)


3. The TTAB Blog (focusing on the
   Trademark Trial and Appeal Board)


4. The Advertising Law
   Blog (advertising law with frequent TM postings)

Know of others? Let us know.

More Trouble for Google from the French

Reuters "news service" reports that "Agence France Presse has sued Google Inc. (GOOG), alleging the Web search leader includes AFP's photos, news headlines and stories on its news site without permission. "

The French news service is seeking damages of at least $17.5 million and an order barring Google News from displaying AFP photographs, news headlines or story leads, according to the suit filed on Thursday in the U.S. District Court for the District of Columbia. . . .

AFP said it has informed Google that it is not authorized to use AFP's copyrighted material as it does and has asked Google to cease and desist from infringing its copyrighted work. AFP alleged that Google has ignored such requests and as of the filing date of the lawsuit "continues in an unabated manner to violate AFP's copyrights."

Google is more than a search engine, it's dad-blamed litigation engine! While it's hard to believe the allegation that it ignored communicatinos from AFP, if that turns out to be true here, it would be inexcusable.

But that is a distraction. Google's epoch-making business and technology is shaking lots and lots of IP and other trees. I for one hope its business can survive making all this law for the rest of the world -- win, lose or draw.

Geekzone: "Things Are Looking Good"

Says here that GEEKZONE is now a registered trademark in New Zealand.

No word whether MIT (or any fellow travelers) entered an opposition to the registration due to its own prior and well known use of the term "geek."

... and Europe Strikes Back: Google Loss Upheld by French Court

A friend painfully close to the case forwarded this link reporting that Google has lost its appeal of a judgment for "trademark counterfeiting" against the French travel companies Luteciel and Viaticum:

GOOGLE LOSES FRENCH TRADEMARK APPEAL
A French appeals court upheld a ruling against Google's advertising policy in a decision published Wednesday, ordering the Internet search engine to pay 75,000 euros in damages to two companies whose trademarks it infringed.
The court found that Google was guilty [sic] of "trademark counterfeiting" and ordered it to pay the damages originally awarded to French travel companies Luteciel and Viaticum, as well as costs.

(Why "sic"? Because in civil cases, there is no such thing as "guilt" -- only findings of liability or non-liability. Even in Europe. Even in France. I felt you should know that.)

Here are some key points in the decision, translated rather clumsily on the site linked to above:

• "[I]t is necessary to point out that its liability is only sought with regards to the second capacity and this capacity alone" In other words, this is solely an issue of secondary, i.e., contributory, trademark infringement.
• "Considering that no circumstances of force majeure existed that may exempt it from liability, where and insofar as it is proved that two other service providers in the field of paid positioning, the companies OVERTURE and ESPOTTING were faced with the same problem and managed to resolve it promptly and that GOOGLE FRANCE also managed to do so, although with some delay" This again goes to the killer point that middleman-type providers have here: The claim that "we can't police the whole world" is (a) not credible when others do and when (b) you manage to do it when you really, really, really have to and (c) you're making a mint.
• "Considering that . . . GOOGLE FRANCE, even if it had legitimately not been aware that the companies were the holders of the contentious marks, could not offer the purchase of the words 'bourse aux voyages' or 'bourse de voyages' or even 'bdv com' in its keyword suggestion tool, on the pretext that they were high among the most often requested key words, without carrying out a serious study of the potential rights of third parties over these words " It's not only a matter of what the U.S. courts call "willfull blindness" (which can result in a third party such as an auction site or a flea market being held contributorily liable for infringement) -- there's evidently an affirmative duty on the part of providers of services such as Google to inquire, at least under certain facts, if there are trademark issues.

No, this is not the applicable law in the U.S., but it matters for a few reasons. One is that the factual findings here will undoubtedly influence Google's posture in future U.S. litigation. Another is that Google will have to make changes in the way it does business -- which it already has begun to do, anyway -- and this will affect both its overall service platform and its ability to say what it can, can't, will and won't do in the U.S. And the other is that, as is well known, there's really no such thing as U.S. law, anyway. (And in a Googled-up, wired-up, hyperlinked world, isn't that really what we all want?)

Okay, that might be bit much. But then, evidently, was Google's share price in early February. Buying opportunity tomorrow, gang! I'm riding the stock all the way -- when you got a position like I do (ten shares), you don't want to go and panic the market...

Victory for US GI's Over Europe

"Geographic Indicators," that is. The USPTO reports today that:

the World Trade Organization (WTO) has released a panel report affirming the United States’ assertion that European Community (EC) regulations discriminate against foreign owners of geographical indications (GIs), and that the EC cannot deny trademark owners their rights. . . .

The United States objected to the EC’s Agriculture regulation, on several grounds, including the following: . . . The EC Regulation creates a system for registering and protecting geographical indications for agricultural goods sold in the EC market. But while the Regulation allows EC rightholders to apply directly to register and protect their GIs for EC products, non-EC nationals must rely on their government to apply for the protection in the EC on their behalf, as well as to object to GI applications in the EC. . . .

Under the EC’s Regulation, foreign governments must adopt a system of GI protection that mirrors the EC’s and that provides reciprocal protection to EC products in order for their foreign rightholders to be considered for benefits of the EC Regulation’s protections.

The WTO Panel found that these aspects of the GI Regulation – the requirement for government-level intervention as well as the requirement of reciprocal protection for EC products and equivalent systems of protection – discriminate in favor of EC products and EC GI rightholders and against the GI rightholders and products of other WTO Members. . . .

On the trademark claim, the United States argued that the EC GI Regulation would not permit certain trademark owners to enforce their trademarks -- that is, they would not be able to stop the confusing uses of similar GIs, which is one of their rights under the WTO TRIPS Agreement. The TRIPS Agreement requires that the owner of a registered trademark be able to prevent all others from using identical or similar marks or signs, which includes GIs, when consumers would be confused by the later uses.

The Panel agreed with the United States but clarified that the EC could provide for a very limited exception to trademark rights for certain trademarks with respect to later-registered GIs. The exception is very narrow in that, according to the Panel, GIs that are likely to create confusion with prior trademarks are unlikely to be registered as GIs in the first place. Further, the Panel noted that only a few people are allowed to use the GI that conflicts with the prior trademark, and the exception only applies to certain trademarks that do not have reputation or renown.

But more importantly, the Panel found that the GI Regulation could only protect GI names as registered, and not translations of the GIs where those translations as they appear on labels in Europe cause confusion with European trademarks owned by U.S. companies. The panel agreed with the United States that this would present concerns under the TRIPS Agreement.

I assume we get reparations.

Don't Tread on "T"

Via yesterday's Best of the Web Today, a link to story in the online edition of the Indianapolis Star reporting that Fort Wayne Community Schools officials violated a high school student's free-speech rights when they suspended him for wearing a T-shirt bearing the likeness of an M-16 rifle and the text of the Marine Corps creed.

Likelihood of Confusion is no free-speech radical when it comes to students' rights to "express themselves" in a school context. That right -- unlike those of an adult on his own time -- is generally circumscribed by bona fide school administration concerns. Frankly I wouldn't let any students wear t-shirts to school; let them dress like menschen.

But if t-shirts are allowed, schools can't be overbroad in their regulation of what "disturbing" t-shirt messages will be forbidden. Here a sort of political correctness or heightened (over-)sensitivity seemed to be the culprit, not order, much less law, in the school. The policy the student had violated prohibits students from wearing clothing depicting "symbols of violence." Evidently the brutal local murder of a student was still on the mind of a lot of students, teachers and parents in and around Elmhurst High School. That, however, was not enough to prevent Griggs from being allowed to wear the shirt which, after all, had nothing to do with murder.

The judge wrote, ""Griggs'[s] shirt has no relation to the (school) board's legitimate concerns about school violence, nor is it likely to disrupt the educational process." That sounds about right.

Jurisdiction Argument Worth Zippo

This is an important decision, called Heidle v. The Prospect Reef Resort, Ltd. and reported by the fine Internet Cases website. Read Evan Brown's treatment. The bottom line: The mere fact that someone has an Internet website in a given jurisdiction doesn't mean that you pull out the well-known analysis in Zippo Manufacturing Co. v. Zippo Dot Com, Inc. and start figuring whether that website is passive," "active," or "interactive."

Not if it's just a personal injury case, as it was in Heidle.

In other words, the widely held (not widely held by lawyers with an Internet practice but among others) belief that a Web presence gives rise to essentially world-wide jurisdiction for almost any other thing takes another hit. Not surprising, because the issue of personal jurisdiction is a constitutional one. Some of the Constitution must still be left.

Other People's Information Doesn't Want to be Free

Last night Santa Clara County Superior Court Judge James Kleinberg ruled in the Apple case that "reporters who published 'stolen property' weren't entitled to protections. "

B-b-b-b-b-b-but even if they're reporters?!

Yes. Even if they're reporters. This is not a First Amendment issue. Just ask The Nation.

Five Will Get You Ten

Very amusing colloquy at Balkinization arising from Jack Balkin's prediction that the Supreme Court will "split" on the Decalogue case in a decision per Justice O'Connor that "upholds five, strikes down five."

One interesting bit: A commenter called "Farnsworth" (author of the famous treatise on contracts?!) reports a New York Times article, excerpted to wit:

Justice David H. Souter asked whether a tablet containing only the last five commandments, the injunctions against killing, stealing and so on, might be constitutional because, unlike the first five, they did not necessarily imply religious belief.

That would be a harder case, Mr. Chemerinsky replied, but such a tablet would still be unconstitutional because it would still convey the Ten Commandments' message.

Ultra-depressing. Remember, I'm against the use of the Big Ten as judicial bric-a-brac, but in the process of getting there I see Establishment Clause jurisprudence in utter tatters here.

Missing Link in Constitutional Devolution

Mike Bates,who should know, links to a story involving yet another cease and desist letter -- this time sent by Fox News Channel, according to the story, demanding the "delinkage" of an "unauthorized link" to a Bill O'Reilly column on line.

I don't know Bill O'Reilly, but it does seem that he has a tendency to attract awful intellectual property claims on his own behalf, doesn't it?

The Ether vs. the Ethereal

Running an ad on Instapundit called God is Still Speaking: The Ad the Networks Don't Want You to See, the United Church of Christ invites sympathetic Internet users to "click here" and sign onto a petition and complaint to the FCC, the ultimate purpose being to "to register an Informal Objection to the renewal of broadcast licenses for CBS station WFOR-TV (BRCT-20041001AJQ) and NBC station WTVJ-TV (BRCT-20041001 ABM) for failing to operate in the public interest."

There's no real risk of these stations not getting their licenses renewed. But the pre-written email they want you to fill in and click-send to the FCC says, "The Federal Communications Commission's own rules clearly state that it gives free access to the public's airwaves to individual stations only when "the station has served the public interest, convenience and necessity. . . . Refusing to air 'controversial' messages from paid advertisers that do not fit within a narrow religious agenda and include messages of inclusion clearly does not serve the 'public interest.'"

Gosh, this is silly. But it's part of the game that will continue to be played as long as we maintain the fiction that broadcast television and radio are part of the "ether" that is owned by the "people," which makes them obviously subject to government control in a way that newsprint and shiny magazine paper isn't and that blogs may or may not be soon. At least they didn't cry "censorship"!

UPDATE: Beldar says, "Bring 'em on!"

This is Not Censorship

Editor and Publisher reports about the canning ("resignation" following a "suspension") of the tasteful gent who ran that front-page story that New Yorkers saw staring out of newspaper boxes: “52 Funniest Things About the Upcoming Death of the Pope” in the New York Press, "New York's Premier Alternative Newspaper." Hey, what happened to the Village Voice?! The Voice, it appears, is actually "New York's most influential must-read alternative newspaper." Both papers (the premier and the must-read) are free.

Anyway. Guy was fired because the publisher needed a goat to sacrifice when the story blew up. (I was about two blocks from St. Patrick's Cathedral when I first saw the paper. There are over a million Catholics in New York City.) That's the publisher's right. No government made him do it; the First Amendment is not implicated. So let's just don't go there.

2004: A Year of Musical Chairs for IP Law Bigshots

There's a very good roundup of the major changes in the landscape of the big-time IP (read: pretty much patents) practice, including the evaporation of pillars such as Pennie & Edmonds and Fish & Neave, in this article from IP Law & Business. This sentence just about says it all:

In January, just five days after Barry Shelton's firm, Gray Cary Ware & Freidenrich merged to become part of 2,700 lawyer megafirm DLA Piper Rudnick Gray Cary, the patent litigator left to open Fish & Richardson's two-lawyer Austin office.

You really have to respect reports who can keep that sort of thing straight. This one is Tamara Loomis, who seems to know the territory well.

2,7000 lawyers in a firm called DLA Piper Rudnick Gray Cary. As a 1988 law school graduate, I'll be among the last to remember an era when such a concept -- an awful, clunky, soul-less name featuring meaningless initials and the names of two very good (but not necessarily great) American law firms now featuring a website with spellings like "organisation" and constructions such as, "The global organisation, DLA Piper Rudnick Gray Cary, does not itself provide (directly or indirectly) any legal or other client services. These services are provided solely by such of its members as are described as Practising Entities in the Organisational Statement."

Wow. Lawyers outsourcing our very souls to Euroweenies!

My Old Kentucky Ho

When you think of the term "the world's largest whorehouse" -- and who among us doesn't? -- do you think of Kentucky? I guess I just don't get around enough. The AP Reports on this chap, who preaches the "Gospel Truth" on his website about what a, er, "whorehouse" that big old state is. Natch, the State of Kentucky is threatening to sue him, because he's parodying their cute little logo, which usually says "Unbridled Spirit." (Whorehouse vs. unbridled spirit -- so different already?)

Bart McQueary, the guy in question is evidently quite a character, though not much of a trademarks man. Neither is the AP reporter or his or her editor: "[McQueary] said the state cannot legally force him to pull the logo because he does not use it for commercial purposes. . . . While McQueary doesn't appear to be using the logo for profit, 'he certainly would have needed to inquire regarding permission or authorization prior to use of that mark,' [a state lawyer] said."

Not a state trademark lawyer, if there is such a thing. The AP did find one, though -- one of the best (and a good friend of the blog), New York's David Bernstein. "What he is doing is not trademark infringement," he (correctly) said, according to the article. "People who are familiar with the logo and who know Kentucky know the state is not saying 'Come visit Kentucky, we're a whorehouse.'"

Thanks, David. Remember: The test is likelihood of confusion, okay?

Ah, but there is the matter of the "commercial purposes" issue, no? Neither McQueary, the AP or the State of Kentucky evidently gets it. Trademark infringement does not require commercial use, strictly speaking. (But see overstatement to the contrary here.) Trademark dilution does (kind of a sore spot with me -- but it's healing!). There's no dilution claim here because their logo is apparently not registered nor is it likely"famous," as required by the federal dilution statute.

So McQueary should be okay, at least on the trademark front. He seems to be quite a religious man, though -- in his own special way -- so it's a little surprising to read in the AP article that this busy bee is also one of the plaintiffs in one of the Ten Commandments cases. He says, "[H]ow do you think the Almighty feels about [the Ten Commandments] being used as a wall decoration in a courthouse?" Well, actually, that's a pretty good question.

No, I wouldn't say McQueary and I are soulmates. (I, for one, gave up my dreams of a pro wrestling career.) But hell, even a broken clock is right twice a day. So too with McQueary. When it comes to the use of powerful symbols to make political statements, we seem to have two small things, oddly in enough, in common. But, I think, probably just those two.

MAIL, WE GET MAIL: McQueary writes in:

Thank you for your insightful commentary on the AP story concerning my website.

Let me first say that my name is not an alias per se (my legal first name is Bartley, but how many people use their legal first names anyway?) Who ever reported that originally in Wikipedia was incorrect.

I also want to point out that [Kentucky's lawyer] Ellen Benzing also knows what you and Mr. Bernstein know. She just didn't think that I did. It is called bullying tactics and most anyone else in my position would have gotten that certified letter and [soiled] themselves!

This is the original (and best) version of the story by Mr. Greg Kocher as it appeared in the Lexington Herald Leader on the front page, above the fold. http://www.kentucky.com/mld/kentucky/news/11057930.htm You may want to update your link with this superior story.

Please take care.

He sounds a lot different in email than on his website. Food for thought.

I Read Dead Peoples' Email: UPDATE

Remember this item? Michell Malkin reports on new developments. Like her, though for different reasons set out in my original post, I'm lukewarm about this move.

UPDATE TO THE UPDATE: Deeper treatment of this issue, and specifically the Justin Ellsworth case, continues apace. Here's one piece in IP Law & Business (the article is not available on line for free yet) by Mark D. Rasch, formerly headed the Department's efforts to investigate and prosecute computer and high-technology crime. He recommends the creation of an '"Internet Living Will" designating who can have access to your electronic assets in the event of death or incapacitation, and the scope of their authority to act on your behalf."

Also, Jonathan Bick, a lawyer in New Jersey who's an adjunct professor at Rutgers and Pace law schools, writes in the New Jersey Law Journal, available at Law.com (registration required here, too) that there's an analytical article by . He agrees with the argument of my interlocutor Paul Gowder in the comments to my original post (above) that this stuff ought not to stay private: "[D]efending nondisclosure of information after a person has passed away on the basis of privacy would present significant legal difficulties. A typical result was found by the district court in New Era Publications Int'l v. Henry Holt & Co., 695 F. Supp. 1493 (S.D.N.Y. 1988), aff'd, 873 F.2d 576 (2d Cir. 1989), when it dismissed a privacy argument by noting that the author of the copyrighted work was dead, thus eliminating his privacy interests. This would also be the likely outcome should a privacy argument be present in the Yahoo! matter."

I think it's the wrong decision. Expectations, expectations, expectations!

Philosopher Kings to Rule on Ten Commandments

My new linking buddy (shout out to my dawg!) Joe "The Moderate Voice Thrown Across the Room" Gandelman reports that SCOTUS is going to consider the constitutionality of the practice of placing the Ten Commandments in courthouses. (Remember that the First Amendment is one of our topics here.) A few thoughts:

I wrote on this a few years ago in a somewhat purple essay for the Federalist Society. My point there was that the use of the tablets as symbols of law may be objectionable not from the "civil libertarian" point of view but from the religious pont of view -- because our legal system is so morally distant from that Law. A little harsh, maybe, but it has the virtue of being a somewhat different take.

To some extent the point raised in the New York Times article linked to by Joe by Jay Sekulow, counsel for an evangelical Christian-oriented group that supports the retention of the Ten Commandments in the courts, backs up this point. He says:

The Ten Commandments have acquired secular as well as religious meaning, he said, and have come to be "uniquely symbolic of law."

Mr. Sekulow noted that the marble frieze in the courtroom of the Supreme Court Building itself depicts Moses, holding the tablets, in a procession of "great lawgivers of history." (The 17 other figures in the frieze include Hammurabi, Confucius, Justinian, Napoleon, Chief Justice John Marshall and Muhammad, who holds the Koran.) "Does the Supreme Court now issue an opinion that requires a sandblaster to come in? I think not," Mr. Sekulow said.

He's got a nice point. But from my perspective, Moses and John Marshall don't belong in the same statuary. I would just as soon do without the rest of these "great lawgivers, " too -- remember, Jay, Moses was unique among the prophets, and believe me, Napoleon and Justinian were no prophets. In other words, while I appreciate the idea of giving "props" to Moses, if you really take Moses seriously it's sacreligious to use him, or the profound religious symbols that are the Ten Commandments, as part of a theological / historical potpourri of "players." There's already plenty of confusion. Quite a bit.

And, in any event, the frieze at the Supreme Court building arguably bespeaks a conception of religious pluralism -- unlike the Ten Commandments displays at these courthouses. I like the Ten Commandments. I keep them every day. But they aren't, really, the business of the secular courts, and while I am generally in favor of more, not less, religion in the public square, I don't think these displays bring anyone closer to God. So here's one right-wing vote "against."

Billings Don't Only Matter to Lawyers

And trademark law does't evidently matter all that much to the Billings Gazette. What a mess this story is! Here are some of the trademark law howlers in this one piece about a fairly routine trademark dispute:

• "Actually, the Burkhartsmeiers have only filed for the trademarks. The federal government hasn't granted them yet. " NO! The government doesn't "grant" trademarks. It protects them via the legal system and may even grant you a trademark application for your trouble. But trademarks are established by use, not by the government.
• "After registering Coffee Mill and Coffee Mill Espresso & More in Montana, Morgan started filing for national registration last June. However, her computer crashed and she got caught up in running for the state Legislature. Now she's trying again to protect her business names. " NO! Business names are not trademarks! They can be trade names, but they may not be entitled to trademark protection.
• "To truly protect a business name, a company has to register at the federal level and in each state for trademarks, trade names and service marks. " NO! Truly ridiculous, and in some states, truly irrelevant.

Remember, I'm a media blogger. Someone's got to speak trademark truth to power!

Osama Kin Back in Brand Equity Play?

Joe Gandelman reports about a trademark story relating to the protection of the Bin Laden family name in Europe.

No, not that Bin Laden -- it's about his evidently decent half brother, one of the 54 siblings and semi-siblings who didn't blow anything up. The family operates the Bin Laden Group, which is a construction company, but this half-brother wants to go into something a little less butch: fashion and fragrances.

Nota bene: Under U.S. trademark law, what Mr. Binladin (how he spells his name now) did in Switzerland would not be hardly anything like a trademark, at least the way it has been reported. Put simply, business names are not trademarks in and of themselves. Neither are surnames. And, of course, here trademarks are earned by use and the development of secondary meaning, not registration (which only enhances the protections available to trademarks). You can file what is called an Intent to Use trademark application here, but Binladin is quite clear that he has indeed no intent to use the name.

All of which means that if you want to open the Bin Laden Café, roll out a line of Bin Ladin Dental Floss, or start hawking Bin Laden Beer, this Swiss development in and of itself shouldn't necessarily scare you off. Other things might, but I just provide the legal advice.

Not All First Amendments Are Equal

Instapundit writes, in reference to the Ward Churchill affair: "Eugene is right, of course, that the First Amendment prevents even untenured people being fired simply for 'anti-Americanism,' and he's very right that academic freedom, given the political tenor of most campuses, does more to protect politically-incorrect people than the reverse. "

The First Amendment does all that for an at-will employee? Not exactly. Here's what Volokh says:

The Supreme Court has held that even government employees, including ones who are untenured, have a right to free speech; and courts have applied this especially strictly to scholarship and speeches by public university professors (and professional standards have generally reinforced this rule and applied it to private universities). If you're untenured, you may be fired for any reason except your exercise of your constitutionally protected free speech rights (and your race, sex, religion, and the like).

Ah, government employees -- that privileged caste! Essentially, the courts have added a constitutional dimension to the civil service reforms of the late 19th century. Whereas most of us can indeed be fired for expressing an opinion that an employer does not like, or that it fears its customers may not like, it's much harder to can a civil servant (let's not say bureaucrat) on the same grounds.

Here's a good explanation per a website called Exploring Constitutional Conflicts by Professor Doug Linder at the University of Missouri-Kansas City Law School:

Does the First Amendment allow the government to use a public employee's speech as the ground for discharge or denying a promotion? The Supreme Court's answer to this question was at one time a simple "Yes." Justice Oliver Wendell Holmes wrote in 1892, "There may be a constitutional right to talk politics, but there is no constitutional right to be a policeman." The so-called right/privilege distinction was maintained even as late as 1952 when, in Adler v Board of Education, the Court said, "You have a constitutional right to say and think as you will, but you have no constitutional right to work for the government."

By 1967, however, the Court would note that "the major premise of Adler has been rejected." In its place was a new premise: that the government ought not to be able to do indirectly what it cannot do directly. The Court took the position that public employment cannot be conditioned on a surrender of constitutional rights. The problem for the Court then became how to balance the government's interest in maintaining an efficient public workplace against the individual employee's interest in free expression.

Live and learn. I've been going on and on about how journalists don't have their own little First Amendment, and it turns out, no, they don't -- but government employees do!

Professor Reynolds is a gummint employee, working as he does for the University of Tennessee. So we forgive him the imprecision -- and so much more. But if you're in the "private sector," for heaven's sake, don't go and say something stupid!

Oklahama! OK!

Is it still "mainstream media" if the guy isn't wearing a tie?