Items tagged "Trademark"


Justice Department Renews a Bad Idea

May 15, 2007 DRM , Piracy , Policy Blog , Trademark

The Justice Department has proposed a bill that would criminalize "attempted copyright infringement;" require the government to seize devices used in the copying; and allows criminal prosecution of copyright infringement without the work being registered. The proposal also would require courts to seize and destroy any property used in circumventing DRM, and would grant the Justice Department wiretapping authority to investigate "attempted copyright infringement." Thus, an attempt to download an illegal mp3 joins the ranks of such similar crimes as bribing officials, taking hostages, or "unlawful use of explosives."

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March 21, 2007 Fair Use , Policy Blog , Trademark

I'm left wondering at how much the NAB spent on its print ads opposing the XM-Sirius merger, because their overall effect is, well, priceless.

The ads are patterned after Mastercard's ad campaign–here's an example.

Mastercard apparently isn't too happy about this.

Now, it's no secret that we have a different take on the merger, and disagree on a host of the NAB's other policies. But that doesn't necessarily mean that they're in the wrong on their use of this ad.

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Return of the Fashion Copyright Police – Levi Strauss as a Cautionary Tale

February 1, 2007 Policy Blog , Public Domain , Trademark

We have heard that fashion designers and their lobbyists are already on the Hill seeking copyright protection for fashion designs. You may recall that in the last Congress, a bill introduced by Congressman Bob Goodlatte that would have given fashion design copyright protection for three years died. We opposed the bill and wrote about the issue a lot last summer. Here and here are just two good posts about the issue.

Advocates for fashion copyright protection would be well advised to read a front page article that appeared earlier this week in the New York Times (registration required). The Times reports about Levi Strauss' efforts to protect its trademarked "intersecting arch" stitching on the back of its jeans, as well as its trademarked "Levi's tab," a folded piece of cloth sewn into the vertical seam on the left hand side of the back pocket (one company even placed a label on the right hand side just to avoid a lawsuit). According to the Times, Levi Strauss is now among the 10 most litigious trademark holders in the country, coming in below Lorillard Tobacco and above Baskin-Robbins at number 7. The company has been successful in many of these trademark infringement suits, which have been brought against companies such as Von Dutch, Jones Apparel and Fossil.

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The Latest Good Idea From Linden Labs, The “Proceed and Persevere” Letter

January 23, 2007 Fair Use , Policy Blog , Trademark

It's rare that I am so taken with an idea that I feel the urge to shout it from the rooftops in both my Tales of the Sausage Factory blog and here. At least I usually try to say something different.

But I am so taken with the latest innovation from Linden Labs that I want to give it as much coverage as possible. Dubbed the "proceed and persevere" letter, it offers an extremely valuable tool for trademark holders who wish to permit specific uses of their mark without the risk of losing control of their rights.

To summarize: a fellow by the name of Darren Barefoot created the one-page parody of the popular Second Life called Get A First Life. Rather than respond with a cease and desist letter, Linden Labs, the creators of Second Life, responded with a comment explaining that they understood the difference between a non-infringing parody and a genuine infringing use:

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Protect Your Digital Freedom!

October 25, 2006 Analog Hole , Broadcast Flag , DRM , Fair Use , Trademark

The Digital Freedom Campaign was launched today, and I was delighted to join my colleagues from the Consumer Electronics Association, the Media Access Project, Computer and Communications Industry Association and The Electronic Frontier Foundation at a press conference to talk about the campaign. My statement is here.

The purpose of the campaign is to build grassroots support for copyright laws that protect, rather than limit, creativity, innovation, free speech and competition. While attempts by the content industry to strengthen copyright further through increased penalties, government technology mandates and lawsuits is nothing new, the past several months have seen perhaps the greatest onslaught of legislation and litigation since Public Knowledge was founded five years ago. You can read about those initiatives here, here and here. These efforts have been particularly irksome because the industry won the Grokster case at the Supreme Court (and just recently at the district court), has been successful in its lawsuits against individuals, got Congress to pass the Family Entertainment and Copyright Act, which gives the industry special protection for "pre-release" works, and has entered into agreements with ISPs to pass on warning notices to individuals they believe to be engaged in illegal file sharing. So to paraphrase the immortal words of Howard Beale – We're as mad as hell and we are not going to take it any more.

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McDreamy, Podcasts, and Trademark Dilution

September 25, 2006 Policy Blog , Trademark

The Trademark Dilution bill is unfortunately set for passage on the floor schedule (it's currently number 27).

Trademark is an interesting animal in the intellectual property kingdom: Instead of being used as a limited monopoly to promote the sciences and useful arts, trademark can be a perpetual monopoly used to help consumers identify goods and services. A more recent flavor of trademark that cuts against its general consumer-protectiveness is dilution. Traditional trademark is changed by asking if the use of a mark, even in non-competitive markets, causes the mark to lose its association with a singular source or company, regardless of consumer confusion. Thankfully the US Supreme Court has up-to-now interpreted dilution narrowly, by saying the trademark holder has to show that actual dilution has occurred.

You may recall that this bill makes it much easier for trademark holders to receive court injunctions against another who's use of a mark is:

"likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury."

If you think it sounds like a rather weak standard, you're probably right. Even worse, originally, limitations like fair use didn't apply. We worked with folks like the Public Citizen, ACLU, and the EFF and with a little help from McDreamy (1,2(PDF)), an exclusions provision to allow for fair and non-commercial uses, was added to the bill.

Great, so the problem was fixed, right? We wish…

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I love your content, let me help promote it

August 30, 2006 Fair Use , Policy Blog , Trademark

Transformers screen clip

I recently came across a preview (also see the YouTube version below) for the live-action movie version of the Transformers. I grew up with the toys and the television cartoon, so the thought of a “real-life” portrayal of the inter-galactic battle between the Autobots and Decepticons unfolding before me on the big screen next year really has me excited. Yes, thank you, I am a dork.

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Intellectual Property Responsibility #2 — Don’t Use Your Copyrights and Trademarks to Try to Stifle

August 25, 2006 Blog Posts , Trademark

Here's my second suggestion for an Intellectual Property Responsibility: IP owners shouldn't try to use their copyright and trademark rights to stifle criticism of their product. A good example is the unfolding saga of Barney the Dinosaur.

Barney, as you probably know, is that tubby, purple PBS dinosaur who loves everybody. Some kids find him charming; most adults find him annoying. Some adults go somewhat further in their dislike. One is Stuart Frankel, who maintains a website arguing that Barney is the source of all evil. Here's a sample of Mr. Frankel's work:


All in good fun. But not apparently to Lyons Partners, a firm which owns the IP rights in the Barney character. Lawyers acting for Lyons Partners fired off a bunch of cease and desist letters to web sites critical of Barney, including Mr. Frankel's. "It is unlawful…to use this property without the permission of Lyons Partnership," the lawyers wrote. "These materials must be immediately removed."

That ain't right. The fair use doctrine gives wide latitude toward parodic uses of copyrighted works, and Frankel's use is certainly parodic. As for trademark law, there is no likelihood that Frankel's parodic use of the Barney character would cause consumers to mistakenly believe that the "real" Barney character was involved. And in any event, it turns out that Barney has priors. In 1999, the Fifth Circuit threw out trademark claims made against The Famous Chicken, a sports mascot who had taken to beating up a Barney-like character at baseball games. The opinion deserves to be read in full, but here's an excerpt (internal citations removed):

This case involves a dispute over the use of the likeness of "Barney," a children's character who appears in a number of products marketed to children. Barney, a six-foot tall purple "tyrannosaurus rex," entertains and educates young children. His awkward and lovable behavior, good-natured disposition, and renditions of songs like "I love you, you love me," have warmed the hearts and captured the imaginations of children across the United States. According to Lyons, the owner of the intellectual property rights for Barney and the plaintiff in the suit below, the defendants–Giannoulas d/b/a The Famous Chicken and TFC, Inc. ("TFC"), the owner of the intellectual property rights to the Chicken–sought to manipulate Barney's wholesome image to accomplish their own nefarious ends.
The Chicken, a sports mascot conceived of and played by Giannoulas, targets a more grown-up audience. While the Chicken does sell marketing merchandise, it is always sold either by direct order or in conjunction with one of the Chicken's appearances. Thus, the Chicken's principal means of income could, perhaps loosely, be referred to as "performance art." Catering to the tastes of adults attending sporting events, most notably baseball games, the Chicken is renowned for his hard hitting satire. Fictional characters, celebrities, ball players, and, yes, even umpires, are all targets for the Chicken's levity. Hardly anything is sacred.
And so, perhaps inevitably, the Chicken's beady glare came to rest on that lovable and carefree icon of childhood, Barney. Lyons argues that the Chicken's motivation was purely mercenary. Seeing the opportunity to hitch his wagon to a star, the Chicken incorporated a Barney look-alike into his acts. The character, a person dressed in a costume (sold with the title "Duffy the Dragon") that had a remarkable likeness to Barney's appearance, would appear next to the Chicken in an extended performance during which the Chicken would flip, slap, tackle, trample, and generally assault the Barney look-alike.
The results, according to Lyons, were profound. Lyons regales us with tales of children observing the performance who honestly believed that the real Barney was being assaulted. In one poignant account related by Lyons, a parent describes how the spectacle brought his two-year-old child to tears. In fact, we are told, only after several days of solace was the child able to relate the horror of what she had observed in her own words–"Chicken step on Barney"–without crying. After receiving such complaints from irate parents who attended the Chicken's performances with their children, Lyons sought to defend this assault on their bastion of child-like goodness and naiveté.
Giannoulas offers a slightly different perspective on what happened. True, he argues, Barney, depicted with his large, rounded body, never changing grin, giddy chuckles, and exclamations like "Super-dee-Dooper!," may represent a simplistic ideal of goodness. Giannoulas, however, also considers Barney to be a symbol of what is wrong with our society–an homage, if you will, to all the inane, banal platitudes that we readily accept and thrust unthinkingly upon our children. Apparently, he is not alone in criticizing society's acceptance of a children's icon with such insipid and corny qualities. Quoting from an article in The New Yorker , he argues that at least some perceive Barney as a "pot-bellied," "sloppily fat" dinosaur who "giggle[s] compulsively in a tone of unequaled feeblemindedness" and "jiggles his lumpish body like an overripe eggplant." [. . .]
Perhaps the most insightful criticism regarding Barney is that his shows do not assist children in learning to deal with negative feelings and emotions. As one commentator puts it, the real danger from Barney is "denial: the refusal to recognize the existence of unpleasant realities. For along with his steady diet of giggles and unconditional love, Barney offers our children a one-dimensional world where everyone must be happy and everything must be resolved right away."
Giannoulas claims that, through careful use of parody, he sought to highlight the differences between Barney and the Chicken. Giannoulas was not merely profiting from the spectacle of a Barney look-alike making an appearance in his show. Instead, he was engaged in a sophisticated critique of society's acceptance of this ubiquitous and insipid creature. Furthermore, Giannoulas argues that he performed the sketch only at evening sporting events.
The sketch would begin with the Chicken disco dancing. The Barney character would join the Chicken on the field and dance too, but in an ungainly manner that mimicked the real Barney's dance. The Chicken would then indicate that Barney should try to follow the Chicken's dance steps (albeit, by slapping the bewildered dinosaur across the face). At this point, Barney would break character and out-dance the Chicken, to the crowd's surprise. The Chicken would then resort to violence, tackling Barney and generally assaulting Barney. Barney would ultimately submit to the Chicken and they would walk off the field apparently friends, only for the Chicken to play one last gag on the back-in-character naive and trusting Barney. The Chicken would flip Barney over a nearby obstacle, such as a railing.

Sounds fun! In any event, Lyons' lawsuit got nowhere, but that didn't stop them from sending out nasty letters ordering Frankel and other parodists to cease and desist. But now they may be hoisted on their own chutzpah (does that make sense?). The Electronic Frontier Foundation and the very able Akin, Gump IP lawyer Elizabeth Rader (my former colleague at Stanford Law School's Center for Internet and Society) have filed a complaint against Lyons in federal court in New York. The complaint asks the court to declare that Lyon's IP claims are groundless.

That's a good first step. But here's another. How about we establish as Intellectual Property Responsibility #2 that IP owners refrain from sending meritless cease and desist letters in a bid to squelch criticism of their product — here, the Barney character. We live in an open society with a First Amendment, and IP law shouldn't interfere with our ability to make social criticisms.

So how about it? Can we agree just to let people talk about Barney? It's not as if any of these parodists are competing with Barney. If they succeed in turning people off the character, it's because they will convince people that he's loathsome. That's fair, right?

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WBHM covers Trademark Dilution: Technology and Trademarks

May 15, 2006 Policy Blog , Trademark

Steve Chiotakis down at WBHM in Birmingham, Alabama did a great job making sense of the obscure issue of trademark dilution.

You can find more details about the specifics of HR 683, The Trademark Dilution Bill here.

You can also listen to the audio of his report here.

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So there is quite a bit going on on the Hill that PK has its hands in, let’s take a look at some of the issues:

  • Broadcast Flag and Digital Audio Flag: All the Hill is abuzz on rumors about the broadcast flag—again. The thing just won’t die. This time, it sounds like the MPAA is pairing up with the RIAA to push a super-flag bill in the Senate Commerce Committee. The MPAA wants Congress to authorize the FCC to implement a broadcast flag scheme, but they leave it open as to exactly what “regulation” gets implemented. What would happen if it was the broadcast flag, but without the 13 incompatible “approved technologies,” or if MPAA was part of the approval process? The RIAA wants to add a provision that the FCC itself ended-up slapped down to allow for copy-protected digital radio—a broadcast audio flag—if you will. The vehicle for all of this is rumored to be a separate DTV bill. More on that later…

  • Senate Grokster Hearing: The Senate Judiciary will finally be getting back to that hearing on Grokster they originally scheduled before the US Supreme Court nominations. It hasn’t been posted to their website yet, but it’s supposed to take place next Wednesday, Sept. 28. There will likely be a webcast, so keep your eyes on the Senate Judiciary website if you want to look in on it. No official witness list, yet.

  • Telecom Bill: I’ve posted on it here and here, but the Telecom Bill will be the big issue for at least the next year.

  • Trademark Dilution: The issue of dilution of a trademark is an interesting one, that many don’t know about. If you start with the basics of trademark—a system rooted in consumer protection as opposed to copyright or patent which stems from promoting innovation by establishing limited monopolies for creators and inventors—then you should really question the concept of dilution. Trademark is supposed to be used to prevent consumer confusion. The theory of dilution changes traditional trademark law by asking if the use of a mark, even in non-competitive markets, causes the mark to lose its association with a singular source or company, regardless of consumer confusion. Learn more about HR 683: The Trademark Dilution Revision Act of 2005. Here’s what the US Supreme Court had to say on the issue.

  • WIPO Broadcast Treaty: Although PK hasn’t had much action in the international sphere, we want to point your attention to EFF’s action on the WIPO’s Treaty on the Protection of Broadcasting Organizations. You can find out more about it here

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