The Volokh Conspiracy

A new copyright and trademark parody case, CCA and B, LLC v. F + W Media, Inc. (N.D. Ga. Sept. 22, 2011), which finds that defendants’ Elf off the Shelf parody is likely not an infringement of the copyright or trademark in plaintiffs’ Elf on the Shelf. The judge, by the way — Amy Totenberg — is the sister of NPR legal affairs correspondent Nina Totenberg.

See these two interesting opinions from last week, Dillinger, LLC v. Electronic Arts, Inc. (S.D. Ind. June 15) and Dillinger, LLC v. Electronic Arts, Inc. (S.D. Ind. June 16), which involved the Dillinger heirs’ lawsuit over EA’s using the name “Dillinger” for some of the weapons in its Godfather games:

1. The court rejected the right of publicity claim, concluding that the Indiana post-mortem right of publicity statute isn’t retroactive and thus doesn’t cover Dillinger, and that (in light of the First Amendment) the “literary works” exception in the statute should be read broadly enough to cover video games.
2. The court rejected the trademark claim, finding that EA’s use of the name “Dillinger” was protected by the First Amendment, because it had some relevance to the plotline of the game and wasn’t “explicitly misleading” as to any possible endorsement by Dillinger, LLC.

Seems like the right bottom line result to me.

That’s what their letter to TPM says:

[Your] November 23, 2010 article, “‘Eager Beaver’ FBI Agent’s Attempt To Flip Witness Exposed Feds’ Big Insider Trading Case,’ prominently displays a picture of the NYSE Trading Floor despite the NYSE’s complete lack of relevance to, or association with, the underlying story. Misdirecting your audience in this fashion unlawfully diminishes, disparages, tarnishes, and dilutes the NYSE Trademarks (as defined below), causes confusion, violates state and federal laws, and results in trademark infringement.

NYSE owns Federal Trademark rights in one depiction of the Trading Floor and common law rights in the Trading Floor viewed from virtually any angle…. Accordingly, NYSE demands, therefore, that [TPM] immediately cease and desist from any use of its Trademarks and service marks.

The claim is legally unfounded: No-one would think that the TPM article was published by the NYSE or somehow endorsed by the NYSE — just as no-one would think that a newspaper article or a TV program was published or endorsed by the NYSE just because it depicted the trading floor. Nor would the TPM’s actions constitute actionable trademark dilution, for various reasons, one of which is that dilution law generally doesn’t apply outside the context of advertising and merchandising, which is why newspapers and TV shows are generally free to mention company names and display their logos. Copyright law is different, but the NYSE isn’t asserting any copyright claims, likely because it didn’t arrange for this photo to be taken. (Copyrights are initially owned by the photographer, or sometimes the photographer’s employer, not by the owner of the item being photographed. [UPDATE: Josh Marshall of TPM reports that the photograph is indeed owned not by the NYSE, but by a wire services; the TPM licensed the photo from the wire service.])

I’m very glad that TPM is promising not to accede to the NYSE’s demands. For the original TPM story about which the NYSE is complaining, see here. Thanks to Arthur Kirkland for the pointer.

So let me get this straight: according to the Las Vegas Sun, the Fab Four, a Beatles ‘tribute band’ [a lousy generic descriptor for bands like this, imho - how about 'murder band' instead], is suing the Fab 4, a different Beatles ‘tribute band,’ alleging that The Fab 4 is “essentially identical in sound and appearance” to The Fab Four. Imagine that — why, they’re trying to cash in on the popularity of another band!

[Actually, all jokes aside, the Fab Four might have a credible cause of action here -- but only for trademark infringement, I would guess. Insofar as the Fab Four sound just like the Beatles, they have no copyright claim against anyone copying their sound - both because they have no "original" work to protect via copyright, and also because copycats can plausibly argue that they're copying the Beatles, not the Fab Four. But the name "The Fab Four" might well be a protectable trademark, infringed by "the Fab 4."]

[Thanks to Mark McKenna for the pointer]

So here’s a cute little copyright (or trademark?) problem (or, depending on your viewpoint, an outrageous rip-off). According to Entertainment Weekly (and the Gateway Pundit) start-up publisher OR Books has announced plans to publish Going Rouge: Sarah Palin An American Nightmare, a collection of essays about the former Alaska governor with a title — and cover design — remarkably similar to Palin’s upcoming memoir (entitled Going Rogue: Sarah Palin, An American Life). And the OR paperback will be released on Nov. 17, the same day that Palin’s book is scheduled to hit the shelves.

As Thom Geier at EW puts it: “don’t these jackets look too similar to be, well, fully kosher? At the very least, might some hockey-mom-loving conservatives be confused enough to pick up the wrong book? You betcha!” It may not be fully kosher, but it’s not infringement, as I see it — copyright law doesn’t protect people against “confusion,” it protects against copying. There’s a long-standing tradition in copyright law that book titles are not protected, so the going Rogue/Going Rouge similarity is not actionable. And if you look at the two covers carefully, you’ll see that actually not much else (other than the picture of Palin, about which she surely has no copyright complaint) has actually been copied. (And, if there were a viable copyright infringement claim, OR might well have a very strong fair use/parody defense).

A claim sounding in trademark (or its close state law cousin, unfair competition) might have a somewhat better chance of success here. The Lanham Act, the federal trademark statute, imposes liability on:

“Any person who . . . uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . .”

I’m no trademark expert, but I would think there’d be a reasonable case here that the use of the similar title+typeface+coverdesign, plus the release of the book on the same day as Palin’s is intended to (and likely to) cause confusion among consumers as to the “origin” or “sponsorship” of the goods.

[Thanks to Angela Canney for the link]

A posting over on the Big Government blog details recent attempts by the American Federation of Teachers (AFT) to shut down the website at AFTExposed.com (which, as you might guess from the name, doesn’t have very nice things to say about the AFT). The AFT’s General Counsel has sent the operators of the offending website a cease-and-desist letter, demanding “immediate cessation of use of the domain AFTexposed.com or any other variant that includes the acronym AFT.” The asserted grounds: (a) trademark infringement (that use of the AFT acronym is “likely to cause confusion, or to cause mistake, or to deceive”), and (b) violation of ICANN’s Uniform Dispute Resolution Policy (on the grounds that the AFTexposed.com name is “confusingly similar” to AFT’s trademark and was “registered in bad faith.”).

It’s pretty much pure unadulterated nonsense, little more than an attempt by the AFT to silence a critical voice, and I hope that the AFTExposed.com folks don’t cave in to the pressure. The trademark claim is very, very weak; consumers are pretty stupid sometimes, but they are not nearly stupid enough to be confused into thinking that a site called “AFTexposed,” which has as it’s tagline prominently displayed at the top of the site “The website the AFT doesn’t want you to see,” is somehow affiliated with the AFT. [There have been a few cases that would appear to be contrary, but they involved website names that were identical to the trademark -- PETA.org, for instance, or PlannedParenthood.com; in those cases courts held that there was a likelihood of confusion because the domain name itself would be taken by a reasonable consumer to represent the "official" site. Not the case here.] Plus, there is a well-known defense in trademark law for so-called “nominative use” — the use of a trademark to identify the trademark owner. I can’t talk about the Microsoft Corporation without using the trademark “Microsoft,” I can’t talk about the Ford Motor Company without using its trademark, and I can’t talk about the AFT without using its trademark, and courts have recognized that such uses must be permitted less the trademark holders be granted complete control over the ability to comment on a company’s policies or products.

Finally, the assertion that this violated ICANN’s UDRP is flawed as well. The requirement that a domain name be registered or used “in bad faith” before a violation can be found does not cover registration for the purpose of criticism — it was meant to disallow registrations where, in the words of the UDRP itself, there are

“circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or to a competitor of that complainant,” or the registration was undertaken

“to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name,” or the domain name registrant

“intentionally attempted to attract, for commercial gain, Internet users to its web site . . . by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site . . . ”

There doesn’t seem to be the slightest chance that the AFT could prove any of these conditions.

Let me add that my distaste for the AFT (which runs pretty deep) does not really drive my conclusion that they’re just blowing their trumpets here. They’re not the first, nor will they be the last, organization to engage in this kind of domain name bullying; the good folks at chillingeffects.org have been documenting dozens and dozens of cases just like this for years. But that doesn’t make it any more palatable.

[Thanks to Todd Kellert for the link]