Archive | Trademark

Did The Dark Knight Rises Infringe a Trademark When Catwoman Was Offered a Program Called “Clean Slate”?

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

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Can You Tebow(TM)?

The AP reports:

The New York Jets backup quarterback is trademarking “Tebowing,” the move in which he goes down on one knee and holds a clenched fist against his forehead while praying during games. . . .

The devout Christian says his representatives filed on his behalf not for financial gain, but “to just control how it’s used, make sure it’s used in the right way.”

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The Knockoff Economy: How Imitation Sparks Innovation

First, many thanks to Eugene and the rest of the VC team for inviting us to guest-blog this week.

The Knockoff Economy is about copying, and specifically about how copying, copyright, and creativity mix in a set of somewhat unusual industries—from fashion to food to football. Though our main focus is copyright, we also talk a bit about patent and other forms of intellectual property (IP).

As most VC readers know well, the American system of IP is not aimed at fairness or generally grounded in moral rights. It is a government intervention into the market aimed at precluding some forms of competition—those based on copying other innovations. Competition via copying is barred (or severely limited) as a way of ensuring that originators have a strong incentive to innovate in the first place.

We should say up front that we generally agree with this approach. We think that IP laws are necessary. The interesting and important question is how much IP protection is necessary to spur creativity and innovation.

In some cases, we argue, the answer is very little. And that has big implications for our IP policy, which has tended, over the last 200 years, to get ever-stricter and broader.

Now, savvy readers will recognize that law professors (especially liberals like us) criticizing IP law is right up there with dog-bites-man as a news story. What we do in the Knockoff Economy that is different is that we approach this issue in, what we believe, is a novel way.

Rather than look at how, say, copyright works (or doesn’t) in the publishing or film industries, we look at creative industries where there is no copyright protection, or where that protection is, for practical reasons, not used. And what we find is that in many of these industries, creativity [...]

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Court Refuses Ron Paul Campaign’s Attempt to Subpoena Identity of Video Author

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

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Penn Law School Rejects Louis Vuitton Nastygram

A Penn student organization put on a fashion law symposium, and created the following poster:

The top part of the poster echoes the Louis Vuitton design, but with copyright and trademark symbols worked into it. You can see Louis Vuitton’s cease-and-desist letter, and the Penn Office of General Counsel we-won’t-case-or-desist response. The Penn response strikes me as quite persuasive — I think the use of the marks can’t qualify as dilution, is unlikely to confuse, and is likely to be a fair use in any event, for much the same reasons that the Penn letter gives. And I’m glad that Penn is refusing to go along with Vuitton’s demands. [...]

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Elf on the Shelf v. Elf off the Shelf

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. [...]

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Electronic Arts Has Right to Refer to John Dillinger in Its Video Games

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. [...]

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New York Stock Exchange Claims Publishers May Not Reproduce Photos of the Exchange Floor (At Least in Articles Not Directly Related to the Exchange)

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 [...]

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For the ‘Too Good To Be True’ File

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] [...]

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Going Rogue, Going Rouge

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 [...]

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Domain Bullying

A posting over on the Big Government blog details recent attempts by the American Federation of Teachers (AFT) to shut down the website at (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 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 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 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 —, for instance, or; 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 [...]

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