Archive | Trademark

Here’s one more brief that the UCLA First Amendment Amicus Brief Clinic submitted last week. This one is on behalf of the Electronic Frontier Foundation, in Fortres Grand Corp. v. Warner Bros. Entertainment Inc. (7th Cir.) (the link is to the decision that is being appealed), and my students Nathan Davis, Sara Liss, and Paulette Rodriguez-Lopez worked on the brief. I quote the brief below, for those who want to read it on the blog, though you can also find a PDF here.

Please note that, in all Clinic cases, the students and I act as advocates for the clients. We are making the best arguments we can for the position we are taking; we are not necessarily endorsing it as the position that we think the law ought to take. (Sometimes you can tell from past posts of mine that I do personally agree with that position, but you should not draw such an inference simply from the filing of the brief.) I should also note that the amicus briefs are designed to be read alongside the parties’ briefs, so they naturally omit much of the factual and procedural background that the parties’ briefs make clear; my apologies if, as a result, some of the material is therefore opaque to other readers.

Here’s a summary of the case, from the opinion below:

Warner Bros. produced the latest Batman film — The Dark Knight Rises — and it includes a handful of references to a fictional software program called “clean slate.” The Plaintiff, Fortres Grand Corporation, manufactures and sells a real software program called “Clean Slate.” Fortres’s theory is that it is in fact trademark infringement when a fictional product bears the same name as its real product. Warner Bros. takes the opposite view and has moved to dismiss

The opinion (Ron Paul 2012 Presidential Campaign Committee, Inc. v. Does (N.D. Cal. Mar. 8, 2012)) also in the process rules — correctly, I think — that signing one’s video “Vote Ron Paul” doesn’t violate federal trademark law, because it’s not a “commercial use”:

Plaintiff argues that it has met the Lanham Act’s commercial use requirement for two reasons: (1) Defendants used a Twitter account to post the video on YouTube and both of these websites are commercial in nature; and (2) the video was intended to frustrate Plaintiff’s fundraising efforts and increase the amount of money contributed to Presidential nominees other than Ron Paul.

The first reason is meritless. Plaintiff essentially argues that any individual who uses a commercial website — whether it is to post a video on YouTube or send an e-mail through Gmail — has automatically satisfied the commercial use requirement under the Lanham Act. While it is true that the websites for both Twitter and YouTube may have commercial purposes, it is Defendants’ conduct that is at issue here. And it is this conduct that in some way must be connected to the sale of goods and services for the Lanham Act to apply. Accordingly, Plaintiff’s first reason does not persuade the Court that Defendants’ own use of Plaintiff’s trademark was in a “commercial or competitive context.” See Stanislaus Custodial Deputy Sheriffs’ Ass’n v. Deputy Sheriff’s Ass’n of Stanislaus Cnty., 2010 WL 843131, at *7 (N.D. Cal. Mar. 10, 2010).

Plaintiff’s second reason requires a closer analysis. The Court agrees with Plaintiff that Bosley [a Ninth Circuit precedent] does not directly address the question of whether an individual who improperly uses the trademarked name of another politician to express an opinion has done so in a commercial context that satisfies the requirements

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 [...]