Attorney Evan Brown

April 18, 2008 Miscellaneous

World IP Day coming up on April 26th, 2008

Saturday, April 26, 2008 marks the ninth annual World Intellectual Property Day. Begun in 2000 by the World Intellectual Property Organization, World IP Day aims to illustrate the benefits of and cultivate respect for IP. WIPO’s Director highlights this in a message noting that IP development and protection contributes to new technologies and an overall richer human experience for everything from the means to tackle global warming to watching the world wide broadcast of the Olympic games, and that IP nurtures human creativity, while fostering cultural, economic, and social development. From the telegraph to the Internet, IP increasingly connects the world.

Each country celebrates World IP Day in its own way, and a list of scheduled activities can be found here; a list of suggested activities such as concerts, essay-writing contests, and general awareness-building activities can be found here. A gallery of past and present artwork celebrating World IP Day is available here (this year’s poster here).

April 14, 2008 Cybersquatting, Trademarks

Former band members’ use of service mark is not so Chic

Rogers v. Wright, No. 04-1149, 2008 WL 857761 (S.D.N.Y. March 31, 2008)

The U.S. District Court for the Southern District of New York has issued a permanent injunction restricting the use of the service mark CHIC in connection with musical performances by two former members of the musical group of the same name.

Plaintiff Rogers (founder of the music group Chic) claimed that Defendants Wright and Martin (former Chic singers) infringed his rights in the service mark CHIC for music and vocal entertainment services. Rogers formed the group in 1977 and obtained service mark registrations for the band name in 1982 and 2004.

Chic

Wright and Martin, who previously performed on Chic albums and in live televised performances, had been performing in the U.S. and abroad since 2003. At various times, and without permission, they operated a Web site at www.ladiesofchic.com, and billed themselves as “First Ladies of Chic”, “Chic”, “The Original Ladies of Chic”, “Chic: Live!”, and “Les Chic”. They were billed by one venue as “original artists singing all the original hits.”

The court first found that Rogers had valid rights in the CHIC mark — regardless of whether those rights arose from the 1982 or 2004 registrations or from common law rights. The court then found a likelihood of confusion between Rogers’s mark and Wright and Martin’s use of the same using the 8-factor Polaroid test.

Specifically, the court found: (1) the CHIC mark was “at least moderately strong” in that it had created a tendency in the minds of consumers to associate it with Rogers’s band; (2) the defendants’ uses of the Chic mark (as noted above) were “sufficiently similar” to cause confusion; (3) the parties competed directly in the same market; (4) an analysis under “bridging-the-gap” was not required because of the third factor; (5) there was some evidence of actual confusion; (6) the defendants intended to take advantage of the plaintiff’s reputation and good will in adopting their various uses of his mark; (7) there was little evidence of the quality of defendant’s product; and, (8) similarly, there was little evidence of the sophistication of the relevant consumer group, i.e., concert attendees or promoters. Taking all of these factors together, the court found “little difficulty” in finding Defendants’ use of Plaintiff’s mark was likely to cause confusion.

The court was not persuaded by the defendants’ attempted fair use defense. The defendants had certainly used CHIC as a mark (and not, for example, mere comparative advertising or other descriptive purposes – see, e.g., Playboy Enters., Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002). Moreover, the defendants’ promotional materials used the CHIC mark in a prominent manner. The court was similarly unpersuaded by the defendant’s argument that the Lanham Act did not apply to acts outside of the U.S.

April 13, 2008 Uncategorized

On Shyftr and copyright infringement

Over the past few days a discussion has erupted about the recently-noticed RSS feed aggregator slash social networking site called Shyftr. The gist of the discussion — which can properly be characterized as a controversy — is about how Shyftr republished entire posts from others’ RSS feeds without obtaining prior consent. Rather than try to link to all the great posts out there addressing the issue, just go to this del.icio.us page to see my collection of links on the subject.

A lot of the discussion addresses the concern of Web publishers (mainly bloggers) about where feedback should reside. Services like Shyftr and Friendfeed provide the mechanism for users to comment (and thereby engage in a conversation) within those services, without any way for the original publisher to be directly notified of that disscussion. Brian Solis, whose post about Shyftr was the first to make me aware of this issue, addresses the conundrum by observing that “the conversation has left the building.”

The other particularly unsavory bit of this Shyftr kerfuffle is the intimation that publishing entire feeds in the manner Shyftr was doing it is content theft. Tony Hung may have expressed that concern best. As an intellectual property lawyer, I read intimations of content theft as intimations of copyright infringement.

For as long as RSS has been around, or at least for as long as I’ve cared about RSS, lawyers have been speculating about where the edge of the envelope is when it comes to the manner of republication of feed content. Denise Howell in particular has artfully, and I think correctly, couched the question as one involving the doctrine of “implied license.”

One of the leading cases on implied copyright licenses is Effects Associates, Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990). The court held that the defendant horror movie producer was not an infringer when he used some footage he’d commissioned from the plaintiff special effects company, because the defendant had an implied license. But there was a real relationship between the parties — the allegedly infringed content was not merely appropriated from a source at large (like the Web). The special effects company “created a work at defendant’s request and handed it over, intending that defendant copy and distribute it.” It was that kind of situation that gave rise to an implied license. And the relation of the parties, along with their actions, was critical.

For this situation, Eric Berlin hits the nail on implied license’s coffin right on the head when he states that:

[A]n RSS feed still has elements of control. Publishers can advertise on their RSS feed for one, readers can click back to the original story to comment, and importantly publishers can track RSS feed subscribers and count those numbers against their overall “reach” in the blogosphere and on the Internet.

Those aspects underlie the intent that an average feed publisher will have when he or she puts content out there in a feed. It’s this intent that drives and defines the conduct of the publisher. Use of a full feed by another that eliminates these aspects of control is contrary to the publisher’s conduct, and in my book could hardly be defensible on an implied license basis.

But it’s a tempest in a teapot. Shyftr has announced on its blog that it is backing off from republishing full feeds. Wise move. Not all of us agree there should be an invitation to steal our content. Copyright protection, regardless of how antiquated some may want to characterize it as, provides some great peace of mind and gives a valuable means of control.

Shyftr’s change in course has probably been due in part to rumblings of DMCA takedown notices on the way. Interestingly, though, Shyftr doesn’t look like it has cared to try to put itself in the DMCA safe harbor. As of the time of this post, it does not provide any information on its site about a designated agent for receiving DMCA takedown notices. (See its Terms of Use and About pages.) Cavalier or just precarious?

April 8, 2008 Fraud/Misrepresentation, Trademarks

Apple vs. the Big Apple charity over apple-shaped logos

Apple, Inc. is seeing red over New York City’s attempts to register a trademark for green-friendly services, and the dispute challenges one of Apple’s trademark registrations for its ubiquitous logo.

Apple comparison

Apple has filed an Opposition (No. 91/181,984) with the United States Patent and Trademark Office’s Trademark Trial and Appeal Board against NYC & Company, Inc.’s attempts to register the “Infinite Loop Apple” design mark (shown above at left). Apple asserts that use of NYC’s mark would likely cause confusion with Apple’s famous logo (shown at right) especially given the presence of Apple’s flagship Manhattan retail location.

NYC’s application states the mark is to be used for, among other things, promoting “education on environmentally friendly policies and practices of the City of New York” (See Application Nos. 77/179,942 and 77/179,968). Apple claims that confusion would be likely because of the similarities in appearance and commercial impression between the marks, and because certain of the goods and services recited by NYC are identical or highly related to goods and services offered under the Apple mark.

NYC answered the Notice of Opposition and filed a Counterclaim seeking to cancel Apple’s registration for the logo as used in connection with “mugs, dishes, drinking glasses, and wine glasses.” NYC claims that Apple procured the registration through fraud, because it knowingly misrepresented that it was using the mark in connection with those goods on its Declaration of Use and Renewal Application under sections 8 & 9 of the Trademark Act, when it fact no such use was being made. If the Board finds such fraud, Apple faces cancellation of its entire registration for those goods. Fraud has been a recurring issue before the TTAB of late, as evidenced by this recent post from John Welch’s TTABlog.

Apple, of course, denies the allegations of fraud. In any event, if the cancellation is successful, Apple’s most important marks (i.e., for computer hardware) would remain intact.

Time will tell whether Apple’s efforts to protect its mark will bear fruit. The company probably feels even more incentive to keep others from trading on its reputation and goodwill after hearing about this recent study, which found that people who see the Apple logo may feel more creative.

April 3, 2008 Section 230, Uncategorized

How the Roommates.com decision is good for Section 230

Earlier today the Ninth Circuit, en banc, issued its opinion in the case of Fair Housing Council of San Fernando Valley, et al v. Roommate.com, LLC. It is a long and detailed opinion, authored by Judge Kozinski, and as characterized by my friend Michael Erdman, leaves Roommates.com largely unprotected by immunity under 47 U.S.C. 230. To learn everything you need to know about the majority opinion without actually reading the case, read Michael’s post here. There’s no need for me to duplicate efforts in summarizing the case, as there’s little I could add in that regard.

This case is pretty big news in Internet law circles, and more than one person has asked me today what my take on it is. I actually don’t have much to say about whether the Ninth Circuit got the legal analysis right. They probably did. Judge Kozinski and his colleagues in the majority are brighter hungover than I am at full stride, so I’m in no real position to critique their analysis. Instead, my take on the case is a pragmatic, and I shudder to say, a political one.

I hope you’ve taken my suggestion and read Erdman’s summary of the case before getting to this point in this post, because you need to know what the facts are. The subject matter dealt allegations of violation of the fair housing laws. That’s a touchy issue, involving race, religion, sexual orientation, family status, etc. Smart people don’t touch those kinds of issues with a ten foot pole.

Had the Ninth Circuit ruled in Roommates.com’s favor, think about the ways that outcome could have been spun. Imagine, shall we say, a “progressive” Congressman standing up in Washington and saying, hey, with this Section 230 scheme, we give a license to Web site operators to run hate mills, build up bastions of bigotry, and sanctuaries for racism. In short, a Roommates.com victory could have given a battalion’s worth of ammunition — in the form of emotional, irrational rhetoric — to Section 230’s critics. Some in Congress would have called for its head.

This didn’t dawn on me until the other day when I was talking with a very liberal colleague. He knew nothing of Section 230 other than what I had explained to him in the previous five minutes (including a mention of the Roommates.com 3-judge panel decision), and he said something to the effect of, “wow, when it starts touching on issues like fair housing, Congress is bound to step in and not give the Web sites a free ride.”

So maybe you see where I’m going with this. Whether it’s right or wrong from a legal analysis standpoint, today’s decision stands for the proposition that online systems alleged to facilitate the violation of some touchy rights don’t always get a free ride.

The real irony, and for me the “take” on the case, is that although Section 230 immunity appears to be diminished a bit by the decision (look at how few circuit court opinions there are where the defendant lost), the defense loss is really a bullet dodged. By declining to hold that Section 230 provided immunity, the Court kept Section 230’s neck off the political chopping block. What a tragedy it would be, indeed, for political issues to cause our Congress to roll back a provision that has been so integral to the development of the Internets.

April 2, 2008 Trademarks

Blackberry and Twitter in a trademark tussle?

In April 2007, Twitter, Inc. filed application no. 77166246 to register the trademark TWITTER with the U.S. Patent and Trademark Office. (Twitter is the ever-more-popular tool that enables “friends, family, and co–workers to communicate and stay connected through the exchange of quick, frequent answers to one simple question: What are you doing?” It’s fun. You should try it if you’re not using it already. And you can start by following me.)

Anyway, in February the application reached the point where it was published for opposition. That means that any other trademark owner out there who feels it would be damaged by the TWITTER mark being registered can oppose the application in the Trademark Office.

On March 14, 2008, Research in Motion (of Blackberry fame) stepped up and requested an extention of time to oppose the TWITTER application. I ran a quick search for registered marks owned by Research in Motion (you can do that yourself here), but didn’t see anything close to “Twitter”. Can anyone think of an unregistered mark that RIM owns that is similar to TWITTER? Or any other reason why RIM would want to oppose this application? Comments are open, as they have been for some time.

April 1, 2008 Section 230

No CDA immunity for adult-oriented Web site in right of publicity case

Doe v. Friendfinder Network, Inc., — F.Supp.2d —-, No. 07-286, 2008 WL 803947 (D.N.H. March 28, 2008)

Plaintiff Doe learned that a nude image and some biographical information about herself had been used to set up a bogus profile on the adult-oriented personal-ad Web site Adult Friend Finder. She sued the operator of the site alleging a number of claims, like defamation and intentional infliction of emotional distress. She also alleged misappropriation of her right of publicity under state law, and false designation of origin and false advertising under the federal Lanham Act.

Adult Friend Finder moved to dismiss the claims, arguing that the Communications Decency Act (“CDA”) at 47 U.S.C. 230 immunized the site from liability for the information provided by someone other than the site operator. The court agreed with Adult Friend Finder as to the majority of the claims, holding that the claims were barred by the CDA where the plaintiff sought to impose liability on the site as the publisher or speaker of the information.

But the court held that the CDA did not immunize Adult Friend Finder from Doe’s state law claims for violation of the right of publicity, or for violation of the federal Lanham Act.

Section 230(e)(2) provides that “[n]othing in this section shall be construed to limit or expand any law pertaining to intellectual property.” You may recall that last year the Ninth Circuit [in Perfect 10, Inc. v. CC Bill, LLC, 488 F.3d 1102 (9th Cir. 2007)] held that 230(e)(2)’s restriction on immunity only applied to federal claims involving intellectual property (leaving state law claims barred).

The court in this case disagreed with the Ninth Circuit on this point, looking at the plain language of the statute and finding no meaningful distinction between state and federal causes of action involving intellectual property, especially given the presence of the word “any” when decribing “law[s] pertaining to intellectual property.”

March 31, 2008 Trademarks

1-800-SKI-VAIL found not to infringe VAIL ski resort mark

Vail Associates, Inc. v. Vend-Tel-Co., Ltd., — F.3d —-, 2008 WL 342272, (10th Cir. February 7, 2008)

[Brian Beckham is a contributor to Internet Cases and can be contacted at brian.beckham [at] gmail dot com.]

Vail Associates, owner of the incontestable service mark VAIL (which is used in connection with a wide variety of skiing and resort-related services), sued Vend-Tel-Co, the operator of the “1-800-SKI-VAIL” phone number, for infringement. After trial, the District Court entered judgment in Vend-Tel-Co’s favor, and Vail Associates sought review.

The Court of Appeals for the Tenth Circuit affirmed the lower court’s judgment, holding that use of Vend-Tel-Co’s “1-800-SKI-VAIL” mark (registered in 2001) was not likely to cause confusion with Vail Associates’s VAIL mark (registered in 1989).

Key to the appellate court’s decision was witness testimony from the proceedings. Vail Associates’s vice-president of marketing and sales testified that customers dialing the phone number would mistakenly think they were reaching Vail Associates, but acknowledged “hundreds of uses of the letters V-A-I-L in the names of [other] businesses in the Vail Valley.” As for the descriptive term “ski,” testimony from another witness revealed ownership of no less than 23 vanity phone numbers incorporating that term. Also important was the testimony of a travel agent who fielded calls to the number 1-800-SKI-VAIL. She testified that the typical caller would ask questions of a general nature (e.g., about products, directions, lift prices, ski conditions, etc.).

Vend-Tel-Co’s main witness, trademark attorney Kenneth Germain, testified that in the context of ski resorts, the VAIL mark was a “world renowned” strong mark, but that in the context of goods and services offered by businesses in the Vail area, it was weak (being geographically descriptive). Germain further testified that he did not deduce an intent to infringe (Vend-Tel-Co’s advertising materials promoted area businesses), and that use of the VAIL mark was a necessary, good faith component of the Vend-Tel-Co’s marketing activities.

Viewing the evidence in the light most favorable to the Vail Associates, the Court of Appeals was satisfied that the District Court did not err in finding that consumers perceive the VAIL mark as referring to a particular geographic location, namely, a Colorado skiing destination. It held that Vail Associates failed to prove consumers associate the word “Vail” exclusively with its resort services.

As to the likelihood of confusion factors, the court found none favored Vail Associates. It observed that (1) Vail Associates offered little evidence of actual confusion, and the testimony reflected that consumers recognized Vail as a destination, not a specific service provider, (2) despite some showing of secondary meaning, the VAIL mark was found to be “not particularly strong”, (3) Vail Associates did not prove that in creating the phone number Vend-Tel-Co intended to deceive the public, trade on Vail Associates’s goodwill or reputation, or infringe its mark, (4) the marks were not similar in sight, sound, or meaning, (5) the parties’ services were not similar, but rather “symbiotic”, and were not marketed in a similar manner, or with similar connotations, and (6) consumers exercised great care in purchasing Vail Associates’s services which the court termed “first class accommodations at first class prices” in contrast to dialing a toll-free number.

The dissenting opinion offered that: (1) the marks were confusingly similar (indeed, the additional “1-800-SKI” elements furthered consumer confusion), (2) Vend-Tel-Co intended to trade on the goodwill and reputation of Vail Associates, (3) there was ample testimonial evidence of actual confusion (namely the travel agent’s testimony), (4) the services and their marketing “appeal to exactly the same class of consumers,” (5) despite care exercised by consumers in purchasing ski packages, there was significant, uncured initial interest confusion, and (6) VAIL is an incontestible descriptive mark whose strength was proven by evidence of secondary meaning, and that Vend-Tel-Co did not take VAIL out of the ski resort services context; instead, it emphasized that context with their choice of mark.

March 25, 2008 About This Site

New contributor to Internet Cases: Brian Beckham

I’m pleased to welcome Brian Beckham, the newest contributor to Internet Cases. Brian is currently based in Switzerland as a Case Manager with the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center. He’s licensed to practice law in Virginia, and while he was practicing in the states, he focused on trademark law (as well as communications related contracts and licensing and nonprofit law) before joining WIPO in 2007. He holds a degree in philosophy from Ohio University, a J.D. and LL.M. in information technology from the John Marshall Law School in Chicago, and can often be found cycling the Alps surrounding Geneva, Switzerland. Drop him a line at brian.beckham [at] gmail.com. Although Brian works for WIPO, his posts are made in a personal capacity and recap publicly available information. Here’s a link to a more complete bio: http://jbrianbeckham.blogspot.com.

Brian’s first post deals with NASCAR’s unsuccessful attempts to wrangle a domain name from another party using the mark within a domain name.

March 25, 2008 Cybersquatting, Trademarks

NASCAR beat to checkered flag in domain name dispute

[Brian Beckham is a contributor to Internet Cases and can be contacted at brian.beckham [at] gmail dot com.]

Complainant NASCAR filed a complaint under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) against The Racin’ Connection, Inc. over the domain name nascartours.com. In the stock car racing business since 1948, NASCAR is a household name in U.S. motor sports. Its DAYTONA 500 attracted 30 million television viewers in 2007. NASCAR licensed its various marks to over 200 licensees to the tune of USD 2 billion in 2006. An entire industry revolves around providing tickets and packages to NASCAR-sanctioned events. One such entity, The Racin’ Connection, Inc. has provided such tour packages for over 30,000 customers in part through its website at the nascartours.com domain name since 1996.

NASCAR alleged in its complaint that the unlicensed domain name was confusingly similar to its NASCAR mark, that The Racin’ Connection, Inc. had no rights or legitimate interests in the domain name, and that the domain name was registered and was being used in bad faith. NASCAR further asserted that use of its marks in a domain name (as opposed to on a website) was not a fair use, and that such use was intended to “entice…[and] misleadingly divert consumers for [] commercial gain.”

The Racin’ Connection, Inc. argued that the domain name was not confusingly similar to the NASCAR marks, but that its use of the marks was a fair use as part of a bona fide offering of services as a “race package reseller”. It further pointed out that it promoted only NASCAR events and displayed a disclaimer on its website.

Finding the The Racin’ Connection, Inc.’s argument of laches unavailing, the 3-member Panel found that the domain name was confusingly similar to the NASCAR mark. The Panel noted that there is a split in URPD cases regarding whether a bona fide offering of goods or services on a reseller’s (authorized or not) website using a mark in a domain name confers a legitimate interest on the reseller. In this case, the Panel found that The Racin’ Connection, Inc.’s use of the NASCAR mark in its domain name did confer such rights. (The Panel considered several factors from the previous Oki Data case paramount: The Racin’ Connection, Inc. was only offering NASCAR tours; the website disclosed the parties’ relationship; and the respondent did not try to “corner the market” in domain names incorporating the mark). Finally, the Panel found that The Racin’ Connection, Inc.’s sales of NASCAR tours since 1992 and disclaimer on its website coupled with a lack of evidence from NASCAR as to any actual consumer confusion negated a finding of bad faith in its registration or use of the domain name.

Ultimately, despite confusing similarity between the domain name and the NASCAR mark, given the good faith use of the mark in connection with a bona fide offering of services and the rights created thereby, NASCAR was not able to stop the use of its mark in a domain name.

The Full text of the Decision is available at: http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1524.html