LIKELIHOOD OF CONFUSION®

Last week Marc Randazza touted Congressman Steve Cohen (D-TN)’s Citizen Participation Act, a federal anti-SLAPP statute. It’s been boosted elsewhere as well. Randazza is absolutely [neato] on First Amendment issues — he has more fun than should be legal eviscerating opponents of free speech. I was happy to hear his call to make March “National SLAPP month,” and remain happy even after Patrick explained to me that it doesn’t mean I actually get to hit anyone. But I’m not entirely with Marc on Rep. Cohen’s bill.

First things first: for those not in the know, an anti-SLAPP statute protects litigants from meritless and/or frivolous lawsuits attacking protected speech. The statutes differ substantially among the few jurisdictions that have them, but they all share the same core idea: when plaintiffs sue defendants for certain types of speech, defendants should be able to force the plaintiff to convince a judge that they have a case before they force defendants to incur ruinous litigation costs. Some anti-SLAPP statutes are vigorous and effective, like California’s. I’m very fond of California’s anti-SLAPP statute, under which a judge recently ordered a plaintiff to pay my client nearly $35,000 in attorney fees. Other states, however, have narrow, weak, or ineffective anti-SLAPP statutes — take Maryland, for instance. Many jurisdictions have no anti-SLAPP statutes at all. There’s no existing federal anti-SLAPP statute, though federal courts have sometimes applied state anti-SLAPP statutes to pendant state claims or state claims in diversity cases.

Ken is right:  There are some serious problems with anti-SLAPP laws.  I have been so under water that I haven’t had the chance to respond to the original email that went out urging that we post on this topic, and the movement sort of moved on without me (amazingly!).  But while so many of my clients have been wrongly harmed, or even destroyed, by what could definitely be described as SLAPP suits — which in theory this new law would “solve “– at least one of them has been beat up pretty good by misapplication of the California version of this law, too.   All of which goes to show just how “solutions” consisting of more law so often end up doing exactly the opposite of what they were meant to do.

In the one particular case where this happened, my client — the “famous” S & L Vitamins, here sued under another business name, “Body Source” — was the defendant in a case brought by California Tan, a maker of indoor tanning salon goop.  This was the first “tanning lotion case” in that series of litigations in which the tanning lotion companies threatened to file, or in this case did file, complaints that were rafts of specious intellectual property claims meant to stop my client from competing with the companies “authorized” distributors despite their legal right to do so.

In other words, for those of you who are not regular readers and hence already sick of the topic, these cases were nothing more or less than a business strategy to financially break companies that had the temerity to sell merchandise online without permission of the manufacturer.  Eventually these companies ended up being owned by one big fat one now called, quite ironically for the Dark Lords of indoor self-immolation, New Sunshine LLC.  And eventually they found that judge who was willing to shut S & L Vitamins down under a unique theory of liability (i.e., aggravated filing of legal arguments the Court does not understand).  But in 2004, this process was just beginning.

Creative as ever, among our counterclaims in the “Cal-Tan” case was a charge that the plaintiff was — as ultimately all the tanning lotion companies under this umbrella did — using meritless trademark infringement actions, and the threat of them, as a form of unfair competition itself.  This is not, as demonstrated below, a novel proposition under the cases; and as a matter of common sense, it is pretty self-evident.

Plaintiff’s California Über Alles response, however, was to go out and hire a specialty law firm that handles mainly SLAPP cases, substitute them into the case for the general counsel, and make a motion to dismiss, and for sanctions, under California’s SLAPP statute based on this counterclaim.

We fought vigorously.   Read More »

Originally posted 2005-02-17 00:04:00. Republished by Old Post Promoter

Bill Heinze’s I/P Updates blog reports about a trademark registration you can see at the erstwhile movie pirating website LokiTorrent.com. You get a message that says “There are websites that provide legal downloads. This is not one of them.” The site is the property of the good people at the MPAA. And it ought to: Downloading someone else’ movie is just plain stealing. Even if the MPAA is against it.

Clients sometimes ask whether the infringing website they’re steaming about can ever fall like an overripe fruit into their hot little hands. Yep. It can.

Colin Samuels’s Infamy or Praise posts its unofficial Blawg Review, Number 23 in the “Round Tuit” series.  So you go right over there are read it.  Also the official Blawg Review, up this week at Law Shucks.

I was struck by Colin’s roundup regarding the musings of bloggers about where to put what in which blog, and what blog to start, and what blog to shut:

The legal blogosphere may be kicking harder in Texas, but it seems to be at least alive and kicking everywhere else as well, according to Kevin O’Keefe, whose LexBlog group has completed another “State of the AmLaw 200 Blogosphere” report. This isn’t to say that the legal blogosphere isn’t subject to ebbs and flows as bloggers — a thoughtful and self-critical bunch by nature — assess and reassess, as two noted bloggers did this week. Prompted by a comment by Bob Ambrogi, Venkat Balasubramani, who blogs at Spam Notes and guest-blogs regularly at Eric Goldman’s blog, wondered whether the broadening of his legal interests over the past three-and-a-half years of blogging suggest that he should “make a clean break” from his focused personal blog and start a different one; he weighs the pros and cons in a thoughtful post. Coming full circle, Bob Ambrogi took to heart Balasubramani’s discussion (prompted by his own comment) and added his own thoughts about shuttering his venerable LawSites blog in favor of a new one which covers the breadth of his interests:

The question for both of us is: Does it make sense to make a clean break from one blog and start anew with another? For both Venkat and me, the question is complicated by the fact that our blogs have achieved some degree of recognition and regular readerships. My blog has even won some awards, including twice being named one of the ABA Journal’s Blawg 100. …
What was most striking to me about Venkat’s post was his comment that this question “literally weighed me down.” I know precisely how he feels. It seems almost silly to spend so much time pondering the fate of a blog. Perhaps it shows that both Venkat and I remain passionate about blogging, if uncertain about our blogs.

Interesting to me, yes, considering that I faced such a question myself once… answered it… and have answered it again by, effective yesterday, retiring from active posting on my quasi- but not-so-legal Likelihood of Success blog, as discussed, implicating many of the very same thoughts and issues, at this last post yesterday.

So much interesting stuff to read and say.  How ever do we get a Round Tuit?  (And that’s my point, I guess.)

My own moments of snark notwithstanding–no, you don’t even get a link; if you missed it, then good–I am pleased to announce that the very bestest blog on fashion IP is back on track after an utterly inexcusable fashionable hiatus from posting: Susan Scafidi’s Counterfit Chic!

Now I have to go back to checking, but it will be a pleasure as I:

• Read about Marc Jacobs’s sartorially incorrect stitchwork!
• Delve into online fashion discount website Gilt Groupe’s struggle with the dark side!
• Touch lightly on the name, the shame and the fame game for Joseph Abboud (which I did a little more footwork on here–just saying)!
• Nod my head knowingly with respect to lefty fave and gold-plated phony John Edwards’s cad-like fashion-label switcheroo!
• Get schooled on what Susan calls a “trendlet” of the use of trade dress claims as fodder for copycat lawsuits among designers!  (This is a big story, by the way!)

Oh there’s more, more, more, which is how we like it.  Get Counterfeit Chic back on your short list!

Originally posted 2007-07-20 13:24:32. Republished by Old Post Promoter

Out of the bottle

Originally uploaded by Ron Coleman

The ad man or woman who wrote this ad for Solgar focused on the market-encroaching challenger — vitamin-enriched soft drinks — while ignoring common sense:

Get your vitamins from an amber glass bottle. NOT a can of diet cola.

Really? Is getting your vitamins from food not an option?

Here’s what I have been chirping about lately:

• RT @ArsLaw: Tenenbaum: $675K stat. dams absurd; I caused $21 in losses | Ok, even I don’t buy that math.
• RT @CopyrightLaw: Exclusive Rights: “11th Cir. finds medical forms lack sufficient originality; rejects Feist standard”
• RT @CopyrightLaw: Goldman: “Rare Ruling on Damages for Sending Bogus Copyright Takedown Notice–Lenz v. Universal”
• RT @internetcases RT @ernieattorney: Judge sides w/mom who used Prince cut in background of YouTube video /via @cyberlaw
• RT @overlawyered @petewarden: Anyone with $ can sue anyone with less $ and put him out of business | Pretty much.
• RT @smbayard: ABA Journal on recent PA decision refusing to unmask anonymous news site commenters - Nice props
• RT @InternetLaw: Court says Apple doesn’t own the letter ‘I’”

Yes, a big couple of weeks for copyright to followers of the profound @roncoleman 140-gauge stream–but that Apple decision this week does bring up the rear nicely on trademark news.  Either way, it’s good to hang around smart people, because contrary to popular belief to the contrary, it can make you look smart, too!

Have a great weekend!

Originally posted 2007-01-12 10:36:59. Republished by Old Post Promoter

Got my genuine, secondary – meaning – generating TTABlog Floating Key Chain in the mail yesterday — just for being me! I knew I’d float to the top in this profession eventually. Now my keys will float as well, and perhaps some of my arguments before the TTAB will, too.

Originally posted 2006-03-03 10:32:03. Republished by Old Post Promoter

Explosive story:  Looks like some trademark trouble for an evidently fissionable material girl.

UPDATE:  Resolved in a most unexplosive way:

The company claimed to own the international rights to the name, which it estimated to be worth $5.25m (€4.3m) – but has axed plans for a costly court case.

Director Ladislav Lehky says: “Madonna uses the name for pure promotional purposes. We can’t really prove that we suffer a loss from that.”

Oh, puh-lease!  Merely dropping a trademark infringement suit because you “can’t really prove that [you] suffer a loss”?  No wonder they use those funny symbols for their money (what are those € thingies, little Guinness harps or something?) instead of real American dollars!

Originally posted 2008-01-31 11:43:10. Republished by Old Post Promoter

Ann Althouse:

Starbucks used to seem like a luxury brand, and now it feels like a fallback when you can’t get to the real thing.

Ouch. (Via Instapundit.) Ann sees it happening in the automated coffee machines in the shops. But could it have to do with branding incoherence typified by this?

Originally posted 2007-07-25 01:01:52. Republished by Old Post Promoter

Boing Boing reports that the English have done something impossible in our own country: Turned back an effort to extend copyright for, all practical purposes, ever — 95 years:

This is the first time that I know of, in the history of the world, that any country has given up on extended copyright terms. In the US, the Supreme Court found that 98 percent of the works in copyright were “orphans” with no visible owner and no way to clear them and bring them back into the world. Extending copyright dooms nearly every author’s life’s work to obscurity and disappearance, in order to make a few more pennies for the tiny minority of millionaire artists like Cliff Richards (and billionaires like Paul McCartney).

It gives one hope. (On the other hand… Cliff Richards?)

I’ve been known to sound the alarm about the rush to register trademarks, and all the more so to register anticipated trademarks.  I argue that — oh, forget it, even I’m tired of saying this over and over again.   Here’s what I said, one of the times I said it:

Yes man?

For well over nine out of ten new businesses, the odds of your idea sinking or swimming on the strength of a trademark are slim indeed, and slim too is the war chest most entrepreneurs bring to the battle of free enterprise. Prove to yourself and the world that you have a business plan, a product or service that people want, the ability to deliver it and to scale it up, the capitalization to fertilize all that and the smile of Providence on your efforts. If in the process you develop something worth protecting as a trademark, that mark has already been storing up goodwill and secondary meaning and is enforceable as against infringers under state law and Section 43(a) of the Lanham Act. If it would be a good, business-justifiable use of what is still early-stage capital to register your trademark at this point, by all means do it.

So there’s that.   On the other hand, what exactly kind of advice is … this?!:

Some lawyers will get all excited and encourage (demand!) that you register your trademark. This involves paying a bunch of money, filing a bunch of forms and earning an ® after your name instead of the ™. While the ® does give you some benefits by the time you get to court, it doesn’t actually increase the value of your trademark. And you can wait. So, when you come up with a great name, just ™ it.

It doesn’t sound so different, does it?  Well, it was written by the icon, human trademark Seth Godin™, famous on the Internet for being famous, whose name I hear all the time and seems to be a guru of some sort though I missed class the day when they taught us why.   Well, I think Seth Godin™ is pretty much just about right there.

But Seth Godin™’s bit of advice comes to me via my very agitated friend Steve Baird at the Duets Blog, who is not at all happy with Godin on Trademark.  Steve promised, in fact, to have at that last excerpt in a later post (which he did do — here).  But for the moment, it suffices for him to take umbrage, and hard, at the suggestion by Godin that trademarks are a tad overused here on the Internet:

If we’re in the idea business, how to protect those ideas?

One way is to misuse trademark law. With the help of search engines, greedy lawyers who charge by the letter are busy sending claim letters to anyone who even comes close to using a word or phrase they believe their client ‘owns’. News flash: trademark law is designed to make it clear who makes a good or a service. It’s a mark we put on something we create to indicate the source of the thing, not the inventor of a word or even a symbol. They didn’t invent trademark law to prevent me from putting a picture of your cricket team’s logo on my blog. They invented it to make it clear who was selling you something (a mark for trade = trademark).

“Misuse”?!  Steve says like this:

While there are certainly some greedy trademark lawyers in the world, and some that overreach on behalf of their client brand owners, even honorable and ethical trademark attorneys worth their hourly rate know that federal protection against dilution for truly famous marks was added to U.S. trademark law about fifteen years ago. At least for marks satisfying the difficult fame standard, these kinds of trademarks come darn close to owning the brand name in gross, that is, in connection with any goods or services.

Yes, Steve is more accurate than Seth Godin™, who seems to be more editorializing when he says “misuse” than he is describing the actual state of the law.  Steve makes an important point.  It’s one that he made in the seminar on LIKELIHOOD OF CONFUSION in which we both participated (and to which he invited me–thanks again!)(UPDATE:  PowerPoints here!) last week in Minneapolis, and which kind of made me lose the color in my face (the color in my hair is already gone) when I heard him say it:

With respect to what trademark law was designed for, and while I don’t consider this to be a news flash any longer, well prior to dilution protection being added, U.S. trademark law was amended to make clear that much more than confusion as to source is covered. All the way back in 1962 the Lanham Trademark Act was amended by striking language requiring confusion, mistake or deception of “purchasers as to the source of origin of such goods and services.” Moreover, a much broader scope of confusion protection was codified in 1989 in Lanham Act Section 43(a), which protects against trademark likelihood of confusion not only as to source, but as to affiliation, connection, sponsorship, association, and/or approval. This additional scope of trademark protection makes perfect sense given the current commercial realities of trademark licensing, franchises, co-branding, affiliate marketing, and OEM relationships.

He’s right, again.  No, it’s not a news flash, but sometimes… Steve, you’ll see.  When you get old, you … you forget, sometimes.  But indeed, today’s trademark law, both in the statute and in the cases, truly reflects “the current commercial realities of trademark licensing, franchises, co-branding, affiliate marketing, and OEM relationships.”

But of course I got my color back.  (The face color only.)  Because to make his legal point, Steve makes Seth Godin™ and LIKELIHOOD OF CONFUSION®’s policy point.  And when I read his words closely, the pondering of them brought me back to that golden mean between Steve and Seth Godin™ … which I mean is probably closer to the latter. Read More »

But can you, really, dance to it?  Alan Wexelblat says yes, but the copyright part?  Some pretty complicated steps:

I think that modern dance music, particularly the mash-up [based on DJs who use various technologies such as turntables, mixers, and effects boxes to produce sounds using two or more original recordings], is one of the most Copyfight-challenging and lively art forms out there. And since it has hit the mainstream media, finally, I expect to see more public culture clashes over it this year. . .

The notion that DJ/remixers are just blindly copying or reusing without innovation is just flat-out wrong. Apprentices may copy without much added skill, much as apprentice painters sit and copy masterwork paintings for hours on end to learn their craft. But as they learn they also learn to add their own creative elements and styles, producing new works that are based on the source material in the way so many art forms of past decades have done.

Alex makes it clear in this post that he’s planning an extensive exploration–musical as well as legal–into this mashy business.  (If he’s already begun that beguine I can’t find it on his blog, which is to blog navigation what I am to Terpsichore.)

I hope he tells us when it’s over, and what the answers are.

Originally posted 2007-01-25 00:10:33. Republished by Old Post Promoter

Michael Atkins explains how ads that reinforce geographic indicators have their limitations.

Originally posted 2006-12-18 20:43:18. Republished by Old Post Promoter

… of brand managers, gang aft agley.

UPDATE: But wait, there’s… more?

Michael Atkins asks the musical question:  Where have all the good (rock band) names gone?

P.S:  Not here.

Originally posted 2007-05-21 18:21:57. Republished by Old Post Promoter

Ben Manevitz updates us on the Diane van Furstenburg “you stole my smock” litigation. Ben’s take: “As a litigator, I’m going to give everyone involved in any litigation the secret! the best piece of advice ever! Ready? Here: Shut Up!”

Easy advice to give, but darn it, I like to say “smock”!  Smock, smock, smock, smock, smock, smock.

Originally posted 2009-04-14 11:20:40. Republished by Old Post Promoter

Only Marco Randazza can put certain things in certain ways — and on those occasions when he’s actually right (like when he’s discussing law and not politics! ), man, he’s right on. Well, he’s right on today.

As Marco explains in his not-quite-safe-for-work post, a man called Morgan, whose name only ironically reminds us of an investment bank, posted what is at best a lame, and at worst a tinfoil-hat-special, gripe site about our benevolent rulers at Goldman Sachs. Morgan’s “mistake” — actually, the smartest thing he ever did by virtue of the big – firm, big – institution ham – handedness demonstrated here — was registering the domain names www.goldmansachs666.com and www.goldmansachs13.com — Goldman Sachs plus The Beast, of course, and Goldman Sachs plus unlucky-13 — so they would forward to his rant-a-thon. Let’s pick it up from the middle and relatively quotable part of Marco’s post:

With Morgan’s blog plodding along in obscurity, enter John A. Squires of Chadbourne and Parke, LLP. Now this guy has an impressive background: He was top of his class in law school, on his law school’s moot court team, on law review, and an Order of the Coif inductee. Sounds like a pretty smart guy, no? Smart enough to become co-chair of the intellectual property practice at a major law firm. Smart enough that he “is widely recognized in both the financial services and technology sectors as one of the country’s top experts on the issue of patent-eligible technologies.”

Nevertheless, he put his name to one of the dumbest trademark demand letters I have ever read. Go ahead, click it. If you practice trademark law, don’t drink any liquids while reading or you’ll shoot them out your nose as you’re laughing and then you might have to change your shirt.

This letter seems to anecdotally confirm two things I’ve preached for years:

1) Patent guys don’t necessarily know trademark law,

2) A lawyer who doesn’t understand public relations is only half a lawyer.

I’m just guessing here, but I’m reasonably certain that Mr. Squires did know better. This demand letter just screams “reluctantly written to shut a client up.” Patent lawyer or not, the guy had to know that his trademark claims were just plain stupid.

Not just “public relations,” but the magic of Internet-threat-letter-negative-leverage!

When will they ever learn?

More good stuff at Marco’s place, plus, in the comments, interesting insight on the legal career paths of the rich and famous.

UPDATE: “As of April 17, GoldmanSachs666.com has received more than 236,000 hits.’

Originally posted 2007-09-10 20:59:34. Republished by Old Post Promoter

Blawg Review #125 is at, and about the concept of, “Real Lawyers Have Blogs.”

A little pointy-headed? Maybe. Bit of the old inside baseball, perhaps? Perhaps.

But if you’re considering dipping a toe into the blawgy muck, there is some good larnin’ to be had.

Louis Vuitton Malletier and its lawyers demonstrate how to make sure a few seconds of what they say is trademark dilution get a lot less diluted–they’re suing Hyundai over this commercial played at the Super Bowl.  Now, concentrate (UPDATE:  it’s gone from YouTube; this the copy I downloaded, pursuant to the Copyright Act — for who among us did not anticipate that eventuality? — which may be slower on your end than if it were being served by YouTube):

I’m not trying to hide the ball.  Far from it; take a look below and to the right–there’s your tort right there.  Now Marty Schwimmer, who also picked up this story (and who has posted a copy of the complaint), demands of readers, “Spot The Lawsuit In This Commercial — (‘)(‘) <- me rolling my eyes.”  Is Marty right?  Is this civil action just an air ball?

The complaint is easy to make fun of, both as a legal matter and on sort of flat-footed “common sense” grounds.  (Come on, it’s just a second or two on the screen!  Come on, now everyone’s going to just see the commercial over and over again!)  But that’s not entirely the same as saying it’s indefensible.*  In fact, I think that while LVMH is shooting aggressively from beyond the three-point line, it is doing what it has to make sure its trademark rights don’t fade away.

Tarnishment -- Something might rub off?

First, though, let’s put the two dilution claims (federal and New York), which are the real meat here, aside.  As I will urge below, there is a colorable, and arguably very winnable, argument for them.  But first, the shootaround:  Yes, it is time for me to put on my Professor Pendatic hat, unable as ever to resist needling good lawyers who have clients I’d also like to have and fully aware of my own lack of game, about the double-dribbles in their submissions.

The technical foul here is the fact that, besides trademark dilution, LVMH also sued Hyundai on three other legal theories:  false designation of origin under Lanham Act’s section 42; common law trademark infringement under New York law trademark law; and infringement of LVMH’s registered trademarks.

A little practitioner’s hint:   The last count in a multi-count commercial complaint can be viewed as meritless, mere ballast, about 95% of the time.  I don’t believe in ballast, but lots of lawyers (about 95% of them) do.  And as a trademark litigator who often represents defendants, when I see that the registered trademark infringement claim is the last one in the complaint, that tells me, “Oh, good, so there’s no trademark infringement here, at least.”  And of course there isn’t; Hyundai doesn’t sell or offer either cars or basketballs bearing anything likely to be confused with an LVMH registered mark, plus a million other reasons.

Hey, wait though–what about the other two trademark claims?  How about the section 42 and New York unfair competition claims, which are counts three and four?  Well, sorry kids, but you can’t have three last counts!  Only one can be the lastest.  And big-boy trademark registration infringement, being usually the proudest and loudest thing you can sue an infringer for, as a matter of dignity obviously insisted on being discreetly tucked away at the end–damned to sitting next to the ad damnums but at least not exposed to the glare up front.

But if that’s the case, then why still throw in the other two non-registration-based trademark claims at all?

To answer that question, children, you’ll have to ask one of the other 95% of lawyers.

Now, having said all that, we are left with the dilution claims.  So what justification can there be for filing this lawsuit at all?

Well, what is dilution, after all?   Read More »