Trademark

In late May, the United States Court of Appeals for the Tenth Circuit issued an opinion in Utah Lighthouse Ministry v. Foundation for Apologetic Information and Research, 2008 WL 22043807 (10th Cir. May 29, 2008). With this decision, the Tenth Circuit joins an expanding group of federal appeals courts holding that federal trademark law does not prohibit a noncommercial website's use of a trademark for purposes of commenting on or criticising the trademark owner. See, e.g., Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005); Taubman v. Webfeats, 319 F.3d 770 (6th Cir. 2003); Falwell v. Lamparello, 420 F.3d 309 (4th Cir. 2005). The case is not your usual "gripe site" case, but instead involves a more subtle parody of an ideological opponent's website.   read more »

Back in 2006, Robert Arkow, a self-styled consumer advocate who played a role in establishing the California (and then federal) Do Not Call lists, created a website at "metrolinkriders.com." The site hosts a forum for users and employees of Metrolink, the local commuter railway service in southern California, to comment upon Metrolink's services and policies. A small group of readers frequent the site, contributing on topics like possible fare increases and customer service issues. The Southern California Regional Rail Authority (SCRRA), the government authority that runs Metrolink, took umbrage and ended up initiating an administrative proceedings against Arkow under the Uniform Domain Name Dispute Resolution Policy (UDRP). Recently, Arkow won his case.   read more »

David's post yesterday got us thinking about one of our favorite cases, A&P v. D'Avella. As some of you will recall, the case involved two brothers who worked at an A&P supermarket in New Jersey and created parodic rap songs with supermarket themes under the name "Fresh Beets." Their crowning achievement, of course, was a video called "Produce Paradise," which they made in the A&P store (after hours) and posted to YouTube and their website fakelaugh.com. A&P was not amused and sued the brothers for trademark infringement and dilution, defamation, and trade libel. To put it mildly, the supermarket's legal claims were questionable (see Sam's August 30th post on the case for details). Through a little digging, I've learned that the parties have settled the case, bringing to a close one of the more humorous episodes chronicled in our legal threats database.   read more »