Trademark

Back in January, we began rolling out the Citizen Media Law Project's Legal Guide. So far, we've published major sections of the guide covering Forming a Business and Getting Online, Dealing with Online Legal Risks, Newsgathering and Privacy, and Access to Government Information. This week we are excited to announce that we've published the section on Intellectual Property, which explains various intellectual property concepts, including copyright, trademark, and trade secrets, and provides practical advice about how to use the intellectual property of others and protect your own work from exploitation.

To give you a feel for what the Intellectual Property section contains, we've pasted the Trademark overview below:   read more »

Bill McGeveran, a University of Minnesota law professor and friend of the CMLP, has published his article, "Four Free Speech Goals for Trademark Law" in the Media & Entertainment Law Journal, volume 18 (available at SSRN). The article makes a compelling case that, while courts in trademark cases ultimately tend to reach results that protect free speech against trademark overreaching, they do so in a muddled way that makes it hard to resolve cases quickly and cheaply and leaves speakers vulnerable to bullying through cease-and-desist letters.

We've had a copy of this article for a while, and I've been using it to get my head around how trademark law might affect the speech activities of bloggers, citizen media creators, and other online publishers. We are launching the intellectual property sections of our legal guide at the end of this month, and a number of the new sections take up the intersection between trademark law and freedom of speech. Professor McGeveran's article has been extremely useful, but also -- um -- slightly disheartening:   read more »

I was sure that this was an April Fool's joke. But alas, it's true. Deutsche Telekom, the parent company of T-Mobile, sent Engadget a letter a few weeks ago, requesting that the popular tech blog stop using the color magenta in the logo for its Engadget Mobile news blog. Here are the two logos side-by-side (courtesy of Engadget):   read more »

Last Thursday, a federal court in Georgia handed down a big win for free speech when it ruled that Wal-Mart could not use trademark law to stop a critic from disseminating his virulently anti-Wal-Mart views over the Internet. From Public Citizen's press release:

In rejecting the company’s claim of trademark infringement, the U.S. District Court for the Northern District of Georgia in Atlanta found that Charles Smith’s parody Web sites (www.walocaust.com and www.walqaeda.com) and related novelty merchandise were protected speech and that a reasonable person would not confuse their use with Wal-Mart’s legitimate trademarks. The court also rejected Wal-Mart’s claim that it has trademark rights in the “smiley-face” that Smith used in one of his parodies.

Public Citizen and the American Civil Liberties Union of Georgia Foundation defended Smith after Wal-Mart sued the Conyers, Ga. man in 2006, claiming he infringed on its trademark by creating parody logos and Web sites built around the “Walocaust” and “Wal-Qaeda” concepts,including the image of an eagle clutching a yellow smiley face, similar to the one Wal-Mart uses in advertising. Smith also put the design on T-shirts, bumper stickers and other items that he sold on CafePress.com.   read more »

Eric Goldman published an interesting post yesterday about a new case, Lifestyle Lift Holding, Inc. v. Real Self, Inc., which is a trademark dispute involving RealSelf.com, an interactive website with forums that let consumers discuss their experiences with cosmetic and plastic surgery procedures and vote on whether a procedure was "worth it" or "not worth it." Lifestyle Lift owns the trademark "Lifestyle Lift," which it licenses to doctors who perform facelift procedures under that name. A number of RealSelf users have written negative reviews of the Lifestyle Lift procedure, with 55% of users currently saying that the procedure was "not worth it."

The complaint, filed in federal district court in Michigan, alleges federal trademark infringement, unfair competition, and a violation of the Michigan Consumer Protection Act based on the website's use of Lifestyle Lift's trademark. Goldman writes about the case:   read more »

The curtain appears to be closing on a what has been a humorous episode in the annals of "cyberlaw." Ron Coleman and Eric Goldman report that Eric Menhart has amended his application with the United States Patent and Trademark Office, which previously sought to trademark the term "CyberLaw" in connection with legal services. Menhart is no longer seeking ownership of the (almost certainly generic) term "Cyberlaw" itself, opting instead for registration of his firm's stylized logo:

(The CMLP and this website are in no way affiliated with the CyberLaw firm. You can find the CyberLaw firm's website here. We are using the mark for purposes of news reporting and criticism.)

Limited in this way, Menhart's application is no longer quite so ridiculous and no longer poses a threat to lawyers and scholars specializing in Internet law (not that it was ever much of a credible threat). Not content to swallow his pride and acknowledge his mistake, Menhart went out with this final swipe in a statement to the Baltimore Sun:   read more »

Our very own Sam Bayard popped up today in a New York Times article about the Subway v. Quiznos lawsuit, humorously named: "Can a Sandwich be Slandered?" The article does a good job highlighting the complicated issues involved in the case (and implicated by company sponsored competitions for "homemade commercials" generally).

The case itself is quite fascinating. In late 2006, Quiznos and video-sharing site iFilm co-sponsored a nationwide contest, “Quiznos v. Subway TV Ad Challenge,” inviting members of the public to submit videos comparing a Quiznos sandwich to a Subway sandwich using the theme "meat, no meat." Contestants submitted their videos to www.meatnomeat.com, and iFilm published entries on its website, where they remained following the end of the contest and selection of the winner.

Subway sued Quiznos in federal court in Connecticut, and it subsequently amended its complaint to include a claim against iFilm. Only one count of the complaint related to the Ad Challenge, and that count alleged false and misleading advertising in violation of the Lanham Act.

As the New York Times reports:

The dispute over an ad is fairly standard — companies often sue one another over advertising claims — but the video contest raises a novel legal question: Quiznos did not make the insulting submissions, so should it be held liable for user-generated content created at its behest?   read more »

Yesterday, Best Buy sent a cease-and-desist letter to Scott Beale of Laughing Squid for reporting on an "Improv Everywhere" prank and their sales of T-shirts mocking the Best Buy logo. Best Buy claimed the post infringed its trademarks and copyrights by "promoting" sales of a T-shirt that mocked the Best Buy logo. Laughing Squid promptly posted the C&D, where it was picked up by BoingBoing and Slashdot. But Best Buy seems to have learned from the hubub, and sent its apologies a day later:

We appreciate your clarification of the nature of your posting. We do object to sales of T-shirts or other products bearing a logo which violates our trademarks or copyrights or other misuse of our logo in commercial ventures. However, we do not object to fair and accurate reporting of facts, and respect the First Amendment rights of Laughing Squid and other bloggers to provide articles or commentary on current events. Now that we have a better understanding of your website, we regret sending you the demand letter.

It's good to see a company recognize the distinction between reporting and trademark infringement and drop its threats. We have to say, though, the T-shirts give "trade dress" claims a whole new meaning.

I blogged about Orthomom's victory on Friday. Here's another big win for a blogger recently. Last Monday, the United States District Court for the District of South Carolina granted summary judgment to Philip Smith in the lawsuit brought against him by BidZirk, LLC, Daniel Schmidt, and Jill Patterson. The decision contains a handful of rulings that could be helpful to bloggers faced with lawsuits in the future. Most significantly, the court held that Smith's blogging activity fit the "news reporting and news commentary" statutory defense to trademark dilution liability under 15 U.S.C. § 1125(c)(4)(C).

In January 2006, Smith published a four-part article, entitled "Special Report: You Gotta Be Berserk To Use An eBay Listing Company! The Whole Story." In the post, Smith depicted his negative experience with BidZirk and his interactions with the company's president, Daniel Schmidt. In the course of this discussion, Smith reproduced BidZirk's logo and made snarky comments about it. He also discussed more generally the positive and negative aspects of using an eBay listing company, such as BidZirk, and provided a checklist for readers to consult in deciding whether to do so. Additionally, he linked to an article on another website that discussed Schmidt and Patterson's upcoming wedding and contained a photograph of them.   read more »

It's a musical week in the blogosphere. 

Two brothers from New Jersey, Mark and Matthew D'Avella, spent the summer working for the A&P supermarket in Califon, New Jersey. They made the best of what could have been a boring situation by creating parodic rap songs with supermarket themes under the name "Fresh Beets" (here's their myspace page).  Their songs including gems like "Always Low Prices" and (their masterpiece) "Produce Paradise," which is a nod to Coolio's 1995 "Gangsta's Paradise," which in turn drew on Stevie Wonder's venerable "Pastime Paradise."  Mark and Matthew made a video of "Produce Paradise" in the A&P store (after hours) and posted it to YouTube and their website, fakelaugh.com, along with some blog commentary.  You've got to hear and see this one to believe it:

A&P's parent company, The Great Atlantic and Pacific Tea Company, Inc., filed a lawsuit against the brothers in New Jersey Superior Court seeking $1 million in damages.  The complaint, filed Friday, August 24,  includes counts for defamation, business and product disparagement, and federal trademark infringement and dilution.  It alleges that "Produce Paradise" depicts the brothers "performing their rap song in various recognizable areas of the Califon A&P, including the fresh produce department, the corner bakery, the stock room and the employee bathroom," and that "at least one defendant is wearing a hat with a recognizable A&P logo [during the video]."   read more »