Posts Tagged: "beth hutchens"

People have been arguing about the Internet since Al Gore invented it (sorry, I just couldn’t resist). One would think this issue would have been well settled by now but it’s not. The courts are starting to move toward some sort of congruency but there is still a very decided split in the decisions. And, as with oh-so-many issues in intellectual property, there is a litany of case law on the subject and not one bright line rule. It all boils down to what we consider a “use in commerce” and if we can call that “use” a source of confusion in the consumer. Briefly, in order to make a claim of trademark infringement stick, you have to show the defendant used your mark in commerce and you have to show that that use likely confused the purchasing public as to which company was actually selling that service or those goods. Since a metatag isn’t technically visible on the web page, federal courts haven’t agreed whether a metatag is “used or displayed in the sale or advertising of a service rendered in commerce or “placed in any manner” on a good transported in commerce”. See Lanham Act 15 U.S.C. 1127 .

Last week, the 8th Circuit handed down a ruling saying that knickknack companies can’t use Warner Brothers’ copyrighted images on their merchandise even if they use public domain elements. Shocking. But for reasons unknown, some Hollywood types took this to mean that “every Wizard of Oz movie is in jeopardy”. Ummmm… no. Granted, the issues deal with one of the quirkier concepts in copyright law but just… no. At the end of the day, my pretties, it all boils down to what is protected by copyright, what is not, and what you can do with that stuff.

Currently, the term for copyright protection is life of the author plus 70 years. To put this into perspective for you, Steamboat Willie initially aired in 1928. The copyright is ruled by the 1909 Act and has a shorter term of protection that the current scheme. Steamboat Willie is due to go into the public domain in 2023 unless Congress extends the copyright term again. I’m not sure if nearly one hundred years is a limited term (almost everybody alive during the initial air date will be dead before they can use it), but I guess Congress and Disney think so.

The Navy filed two applications for trademarks on May 13th. The first is application serial number 85320305 for “Seal Team”. The identified class is “membership in an organization in the Department of the Navy”. By the way, there are 8 Navy SEAL teams that we are aware of, which may be one explanation for the application for just “Seal Team”, as opposed “Seal Team 6”. The other is serial number 85320473 for “Navy Seals” to be used on posters and clothing. Both applications are section 1(a), meaning the Navy is currently using the marks in commerce, and has been for quite some time. The Navy also owns the trademark registration “Seal” (registration no. 3285473), which indicates “membership in an organization of applicant that develops and executes military missions involving special operations strategy, doctrine, and tactics.”

Imagine a world where the dulcet tones of “Inagaddadavida” never graced the airwaves. Gasp you should! According to the artist currently known as, but formerly known as “The Artist Formerly Known as, Prince,” once a song is covered the original artist’s version doesn’t exist anymore. Soooo…Iron Butterfly’s iconic song no longer exists because Slayer remade it in the late 1980s. Yeah, I don’t think so, but let’s explore, because Prince does make an interesting point and he’s kind of right to be miffed, even if it’s for the wrong reasons. He was talking about the compulsory licensing requirements in copyright law and the “original work is banished to music purgatory once it’s covered” argument is his way of explaining his indignation.

I don’t think anyone will disagree that a digital library of this size would provide access to works that would otherwise never be seen, or worse, destroyed. The idea of a digital library is, quite frankly, awesome and one that I thoroughly applaud. More people would have access to works, the knowledge base of humans would increase exponentially, and there would be more availability of audio and Braille books for the hearing and vision impaired. Out of print and otherwise forgotten and falling apart books would be rejuvenated, precious written words would be rescued from certain ruin, and a whole world heretofore unheard of would take center stage. The heavens will part, champagne will fall from the sky, and unicorns will prance gleefully in the tulip fields. Ok, maybe not that last part, but still…

The Trademark act of 1946 specifically allows a person to obtain a trademark in her name provided the proposed name mark meets certain criteria. And the Trademark Manual of Examining Procedure (“TMEP”) tells you what those criteria are. As shocking as it may sound, people trademark their names all the time. It’s pretty much standard operating procedure for celebrities and athletes. Granted, it is a bit uncommon for politicians, but it’s not unheard of. Besides, last time I checked, Governor Palin is no longer serving in public office and is more of a public figure anyway, so what’s with the hullabaloo?

A common misconception is that a website that just advertises your goods or services can be a trademark. It can’t. The domain has to be a unique source indicator all on its own, meaning it has to tell people what your goods or services are on its own. Basically, if your domain name is just an Internet address where your customers can find you, it can’t be registered. It just tells people where to find you. It is merely incidental to your primary business purpose.

The Apple application for “APP STORE” is currently in opposition proceedings at the Trademark Trial and Appeal Board. Here’s the skinny in 4th grade prose. Back in ’08, Apple opened up its first app store. Shortly thereafter, it filed a trademark application for “APP STORE” in the United States Patent and Trademark Office (“USPTO”). The Examiner said “No way! That mark is descriptive!” Apple said “Nu-uh!” Examiner said “Yes huh!” Apple said, “Nu-uh!!!”, and appealed. Examiner said “OK, fine” and published the application for opposition. Then Microsoft said, “No way! That mark is descriptive!”

I am pleased to announce that IPWatchdog.com was selected by the readers of the ABA Journal as their favorite IP Law blog for 2010 ABA. I am also pleased to announce that for 2010 we had over 2,000,000 visits, delivered nearly 11.8 million pages, our homepage was viewed 3.06 million times and we averaged over 67,000 unique monthly visitors! Thanks to all our readers for coming back day after day, and thanks to all of our Guest Contributors!

Copyright trolls are a relatively new beast, and it’s hard to nail down a definition, so I’m just going to fall back on the immortal words of Justice Stewart’s famed copout “I shall not today attempt further to define the kinds of material I understand to be embraced . . . but I know it when I see it . . .” Boy, you said it, Justice Stewart. Of course, he was talking about obscenity and I’m talking about troglodytes. But to me, copyright trolls are like patent trolls. They have very little or no interest in the progress of the arts and brandish their copyright like a sword. They threaten to sue anyone and everyone who even looks at their copyrighted material without permission.

I am pleased to announce that the Editors of the ABA Journal yesterday announced they have selected IPWatchdog.com as one of the top 100 best law blogs by lawyers, for lawyers. Now readers are being asked to vote on their favorites in each of the 4th Annual Blawg 100’s 12 categories. IPWatchdog.com is in the “IP Law” category. To vote, please visit The 2010 ABA Journal Blawg 100.

While Tea Partiers generally oppose federal government intervention, a U.S. judge has agreed to referee a dispute among Florida political activists that questions whether anyone has a trademark or any other intellectual property rights to the “Tea Party” name. Given their anti-establishment fervor, one might also be surprised to hear that a Tea Party group filed for federal registration of a trademark. But in April of this year, Marylynne Cellamare filed an application for TEA PARTY in the USPTO (serial number 85011226). The Examiner rejected the mark in an Office action a month later because the mark was merely descriptive. Ms. Cellamare has not responded. And there’s an application for TEA PARTY PATRIOTS (serial 77777712) that wasn’t flat out rejected, but the Examiner did require a disclaimer to “Tea Party”. The application is now before the TTAB in opposition proceedings. There are many more of these types of applications ranging from clothing to bumper stickers to political activism.

Dilution by blurring slowly whittles away at a trademark’s distinctiveness whereas dilution by tarnishment is an attack on the reputation and positive image of a mark. Here’s the thing: dilution by tarnishment is an entirely separate analysis from your garden variety Likelihood of Confusion analysis. But before click up your heels and scream “Yahtzee!” you should know that it’s really hard to make a tarnishment argument stick so don’t get all antsy to trot this one out. The standard is all over the place because it’s typically analyzed under a state’s dilution laws (if there are any). And I hate to do that lawyer “well, it depends” thing, but in this case, a tarnishment cause of action really does depend on the jurisdiction.

Did you know that the Tarzan yell is a registered trademark? So is the Looney Tunes theme song. And Homer Simpson’s “D’oh!” Trademarking a sound or series of sounds is really not that hard to do. The Trademark Manual of Exanimation Procedure (“TMEP”) §1202.15 tells us “A sound mark identifies and distinguishes a product or service through audio rather than visual means.” OK. That’s fairly straightforward. We all know that in order to be eligible for trademark protection, a mark has to be unique, arbitrary, or distinctive and it has to function as a source identifier. This means the consuming public will see that mark and automatically know that it is the brand for a particular product.