Trademark

eBay Shines in Tiffany Trademark Fight

Wendy Seltzer — Mon, 14 Jul 2008 14:28:54 -0400

In Tiffany v. eBay, decided today, the Southern District of New York gives helpful bounds to secondary liability for trademark infringement, saying eBay is not liable for its use of the term "Tiffany" nor for its sellers' sales of counterfeit goods. Judge Sullivan's careful analysis leaves the path clear for online marketplaces to flourish, putting enforcement burdens, where they belong, on trademark claimants.

First, the court finds eBay's advertisement, through "Tiffany"-keyed adwords on Google and Yahoo! searches, to be "nominative fair use." Some eBay sellers are offering genuine Tiffany merchandise, as trademark law recognizes is legitimate, and eBay has the right to use the brand name to identify them, rather than "absurd circumlocutions ... [such as] 'silver jewelry from a prestigious New York company where Audrey Hepburn once liked to breakfast.'" Even if search keywords are "use in commerce," therefore, the court finds them non-infringing.

Second, the court holds eBay not liable for the infringements of its users, under either direct or secondary liability theories. Instead, its contributory liability test looks much like the notice-and-takedown regime that the DMCA sets up for copyright: only specific knowledge of infringement can trigger liability, a "showing that a defendant knew or had reason to know of specific instances of actual infringement"; not the "generalized" knowledge of counterfeiting Tiffany would like to attribute to eBay. The court does not impose any prior monitoring obligation, implying only that a defendant must take appropriate steps after being notified of claimed infringement. (The court helpfully notes several times that Tiffany's "Notices of Claimed Infringement" are just claims, not proof, and that some listings have even been reinstated after incorrect claims.)

"[T]he fact remains that rights holders bear the principal responsibility to police their trademarks." Trademark holders are best situated to assess the provenance of their branded goods and to weigh the costs and benefits of enforcement. The marketplace benefits from a rule that leaves lawsuits to the endpoints, keeping intermediaries relatively safe and clear.

Finally, the ruling suggests that trademark law continues to function effectively in the Internet era. While trademark holders might like greater control, and (some) sellers might like greater leeway, trademarks serve as indications of origin even without enlisting intermediaries in the fight. Yet further reason why ACTA's proposed "update" to anti-counterfeiting trade law should not put liability on Internet intermediaries.

cross-posted from Legal Tags.

Appeals Court Rejects Trademark Claims Against Parody Website

Sam Bayard — Mon, 09 Jun 2008 13:58:25 -0400

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.

The controversy revolves around a website created in 2003 by Allen Wyatt, the webmaster and vice president of the Foundation for Apologetic Information and Research (FAIR), an organization that reponds to criticisms of the Mormon Church. Wyatt's website parodied the official website of the Utah Lighthouse Ministry (UTLM), an organization that publishes books and other materials critical of Mormonism. The parody site deliberately imitated the design elements of the UTLM website and replicated certain aspects of its textual layout, with slight modifications to convey a critical message. Wyatt placed no disclaimer on the site indicating that it was not affiliated with UTLM.

The Wyatt site contained no advertising and sold no goods or services. It had a number of external links to the website of a pro-Mormon organization at Brigham Young University, to the official website of the Mormon Church, and to articles on the FAIR website that were critical of the founders of UTLM. One link went to FAIR's homepage, which in turn linked to FAIR's online bookstore. Wyatt also bought ten domain names and redirected them all to his parody website. The domain names included www.utahlighthouse.com, www.uthahlighthouse.org, and others including the personal names of the founders of the UTLM.

UTLM sued Wyatt, FAIR, and others in federal court in Utah for trademark infringement, unfair competition, and cybersquatting. (For details, see our database entry, Utah Lighthouse Ministry v. Wyatt.) The district court granted summary judgment for the defendants, dismissing all the claims. The Tenth Circuit affirmed, with three important holdings coming out of the decision:

Federal trademark infringement and unfair competition claims require a "commercial use" of the plaintiff's trademark -- in the language of the statute, a use "on or in connection with any goods or services." In this case, Wyatt's use of the "Utah Lighthouse" trademark was not commercial because the primary purpose of the parody site was expressive and it hosted no advertising, offered no goods or services for sale, and did not link to commercial sites (the link to the FAIR bookstore from FAIR's homepage was too "roundabout and attenuated"). The court expressly rejected UTLM's argument that the Wyatt site was commercial because it prevented Internet users from accessing UTLM's own goods and services, and its argument that using a trademark as a domain name is inherently commercial.

A successful parody weighs heavily against a likelihood of confusion, a key element a trademark infringement claim. In this case, the court applied several of the traditional "likelihood of confusion" factors in light of the special goals and requirements of parody. For instance, the court found that Wyatt's intentional use of the plaintiff's trademark did not weigh against him because the benefit he derived from such use arose "from the humorous association, not from public confusion as to the source of the marks." The court also concluded that, as a general matter, a successful parody does not cause confusion because it "relies upon a difference from the original mark to produce its desired effect."

For purposes of the Anticybersquatting Consumer Protection Act (ACPA), use of a trademark in a domain name for a noncommercial website aimed at criticizing a trademark owner generally does not constitute "bad faith intent to profit." This holding is in line with two other federal appellate decisions interpreting the ACPA -- TMI Inc. v. Maxwell, 368 F.3d 433 (5th Cir. 2004), and Lucas Nursery & Landscaping v. Grosse, 359 F.3d 806 (6th Cir. 2004). What is unique here is that Wyatt registered ten domain names. Registering multiple domain names is a factor that ordinarily weighs in favor of "bad faith," but Wyatt's expressive motivation for doing so clearly won the day.

Overall, this is a fine result, and it is good to see influential appellate courts protecting expressive activities against encroachment by zealous trademark owners. On the other hand, this court's interpretation of the "commercial use" requirement -- like that of the other courts to address this requirement -- leaves websites that host advertisements vulnerable to trademark claims based on criticial speech unrelated to advertising, promoting, or selling a product or service.

Maybe I'm wrong, but I don't think that a court would find an op-ed in the New York Times to be a "commercial use" for purposes of trademark law just because the newspaper sells advertising space. (If anyone knows of a trademark case dealing with this issue, we'd love input in the comments.) Why should it be different for an online platform that relies on advertising? Courts should look at the character of the speech itself, not the medium in which it is found. So far, however, this view has gotten little traction.

Consumer Advocate's Free Speech Rights Upheld in UDRP Trademark Proceeding

Sam Bayard — Tue, 27 May 2008 15:27:12 -0400

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.

Many readers may be unfamiliar with the UDRP, as Arkow probably was when he received the SCRRA's complaint back in March 2008. When you register a domain name, at least with ICANN-approved domain registrars, you automatically agree to be bound by the term of the UDRP, which creates an administrative procedure for resolving trademark-related domain name disputes. ICANN adopted this policy to provide a cheap and efficient way to resolve cybersquatting disputes without resorting to the courts of any one particular country. (Not a bad idea given the potential international dimensions to these disputes.) The procedure is sort of like an arbitration, meaning that a private actor renders judgment, rather than a government official like a judge. The procedure is streamlined compared to a lawsuit because the decision-maker relies soley on the written submissions of the parties, and the whole thing can take place remotely. The decision-maker only has the power to cancel or transfer ownership of a domain name; it cannot order the loser to pay damages, and all UDRP proceedings are subject to review by courts.

Importantly, a UDRP decision-maker does not apply U.S. trademark law, so the First Amendment protections (discussed in detail in Using the Trademarks of Others) won't necessarily help you out in a UDRP proceeding. Besides cheapness and efficiency, this may be another reason why a trademark owner would choose the UDRP route rather than a traditional lawsuit. To win, a complaining trademark owner must show three things:

your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
you have no rights or legitimate interests in respect of the domain name; and
your domain name has been registered and is being used in bad faith.

This is similar to what is required to establish a violation of the U.S. Anticybersquatting Consumer Protection Act (ACPA), but the ACPA requires a "bad faith intent to profit," not just "bad faith." This potentially makes noncommercial websites more vulnerable under the UDRP.

In Arkow's case, the UDRP decision-maker determined that he had a legitmate interest in using the "metrolinkriders.com" and "metrolinksucks.com" (registered after the SCRRA threatened litigation) domain names for purposes of commentary and criticism. The opinion gave weight to the fact that Arkow was not a competitor of the SCRRA, that his site was noncommercial (i.e., it had no advertising), and that the dispute involved parties from the U.S. where "judicial decisions tend to support criticism websites against trademark infringement and cybersquatting claims on constitutional First Amendment grounds." For similar reasons, the decision-maker concluded that Arkow did not register the domain name in bad faith, noting in addition that he had refused the SCRRA's offer to purchase the domain name from him and that he included disclaimers on the website making clear that it was not official. It concluded that "something more than criticism is required to establish illegitimacy and bad-faith for purposes of the [UDRP]."

Congratulations to Bob, who represented himself in the proceedings, for his big victory! LA Weekly has lots of details about the underlying dispute. See our database entry for links to the parties' written submissions.

A&P v. D'Avella Update: "Produce Paradise" Lawsuit Settles

Tuna Chatterjee — Wed, 21 May 2008 09:46:20 -0400

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.

In early May, the Courier News reported that A&P and the D'Avella brothers had agreed to settle. Although the terms of the settlement are confidential, the Courier News was able to confirm independently that A&P would not pursue its $1 million lawsuit if the brothers removed the "Produce Paradise" video from the web. Alas, the video has disappeared from YouTube and fakelaugh.com. But if you missed it the first time around, all is not lost. YouTube user "newsfast" posted a clip of a Fox news story about the case, which intersperses portions of "Produce Paradise" between the reporter's commentary.

I won't pretend to be thrilled about the outcome as I agree with Sam's analysis that A&P had no colorable claims against the brothers, but it could be worse. As it stands, the world can still see portions of the video on YouTube; A&P can ponder whether its legal maneuvering was worth the negative publicity; and the brothers can return to normal life and work on new projects for fakelaugh.com without bankrupting themselves or dealing with the hassle of litigation.

(Thanks to Wendy Seltzer at Chilling Effects for tracking down newsfast's YouTube clip of the Fox news story.)

CMLP Launches New Legal Guide Section on Intellectual Property

CMLP Staff — Fri, 02 May 2008 14:56:20 -0400

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:

Trademark

A trademark is a word, phrase, symbol or other indicator that identifies the source or sponsorship of goods or services. If an individual, business, or other organization uses a trademark to sell or promote its goods or services, then it can gain the right to use the trademark and to exclude others from using the trademark in connection with similar goods or services. Owners of famous trademarks, like "Windows," "McDonald's," or "Google," may also stop others from using them in connection with dissimilar goods or services. Trademark law is a branch of intellectual property law that is governed by both federal and state laws. By far the most important trademark law is the federal Lanham Act; because state laws generally follow the Lanham Act, this guide focuses on it exclusively.

A basic understanding of trademark law is important to your online activities for two reasons. First, as a provider of goods or services (e.g., online publishing, educating the public, news reporting), you may want to use trademarks to identify your work to the consuming public. In that case, you'll want to understand how to protect your legal rights, so that others do not unfairly take advantage of your reputation and the positive association you've built up between your trademark(s) and your work. Second, you should understand how you can properly make use of someone else’s trademark for purposes of news reporting, commentary, criticism, and like activities. This overview page and the more detailed sections that follow will help you get a grip on both of these important aspects of trademark law.

Common examples of trademarks include "Yahoo!" in its characteristic red font, YouTube's slogan "Broadcast Yourself," and the venerable "New York Times."

Many trademarks use a stylized font or a particular combination of a logo and a product or business name, but a trademark can be as simple as a word in plain text, like "iPod," or a domain name, like "gmail.com," so long as the trademark owner uses it to identify its products or services. The crucial element is that the word, phrase, symbol, or design element act as a source-identifier for goods or services. If you want more information about what qualifies as a trademark, consult the section on What Trademark Covers.

To acquire rights in or "ownership" of a trademark, you simply need to use the trademark in commerce in connection with your goods or services. You do not obtain trademark rights through use in commerce, however, if your use is confusingly similar to someone else's prior use of the trademark. You may choose to register your trademark, but you are not required to do so in order to bring a lawsuit to protect it. Registering a federal trademark puts others on notice that you are using the mark, which may discourage them from adopting a similar trademark or business name in the future. It also helps you make out your case if you ever file a lawsuit to vindicate your trademark rights. Registration is fairly expensive, however, and you will want to consider whether the benefits of registration justify the expense. If you are interested in obtaining trademark rights, registering a trademark, or protecting your rights once established, see the Trademark Ownership page. In addition, we provide specific information about choosing a name for your website, blog, or organization in the section on Trademark Law and Naming Your Business.

The primary goal of trademark law is to protect consumers from confusion about the source or sponsorship of goods and services. It does this by allowing a trademark owner to prevent others from tricking consumers into buying a product or service they mistakenly believe comes from the trademark owner. Stated differently, the law helps consumers identify with accuracy the products and services that they want to buy and protects them from deceptive market practices. To see how this works, imagine a consumer - Sally. If Sally buys a computer that is labeled with the distinctive Dell logo, she can be pretty sure that the computer was made by Dell Inc. and nobody else. She can take Dell's reputation into account without worrying that a knockoff company is making shoddy computers and selling them with the Dell logo on them; trademark law prohibits this kind of confusing commercial activity, and it gives Dell the right to sue for trademark infringement if someone does so. In recent years, Congress has expanded the scope of trademark law to encompass harms other than consumer confusion, including dilution and cybersquatting, that we discuss below.

Federal trademark law protects against three distinct unlawful activities:

Trademark Infringement: Trademark infringement happens when you use a trademark owner's trademark or a similar mark in a way that is likely to confuse the public into believing that the trademark owner is the source or sponsor of your products or services. This is the most common type of trademark claim, and it effectuates trademark's primary purpose of avoiding consumer confusion. See What Trademark Covers for details.

Trademark Dilution: Trademark dilution happens when you use a trademark owner's famous trademark in a way that is likely to weaken its capacity to identify the trademark owner's goods or services or to tarnish the wholesomeness of the mark. The trademark owner need not show that you created consumer confusion, and dilution may occur even if your goods or services are completely different from the trademark owner's. Because of dilution law, it's probably not a good idea to call a blog "Kodak News" or "McDonald's Blog," unless it is actually about Kodak or McDonald's (in which case you should read Using the Trademarks of Others carefully). For details on trademark dilution, see What Trademark Covers.

Cybersquatting: Cybersquatting happens when you register, use, or sell a domain name with the intent to profit from someone else's trademark. Congress passed the Anticybersquatting Consumer Protection Act in 1999 to stop speculators from buying up multiple domain names and selling them at exorbitant prices to the legitimate owners of the associated trademarks. If your use of a trademark owner's trademark in a domain name does not fit this stereotypical model, you should be able to avoid cybersquatting liability. For details, see the Cybersquatting section.

Although trademark law provides trademark owners with a powerful tool for protecting the integrity of their trademarks, the law does not permit them to silence legitimate reporting, commentary, criticism, and artistic expression. As one court put it: "Trademark rights do not entitle the owner to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view." L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 29 (1st Cir. 1987). Because of the important role that trademarks play in our cultural vocabulary, "much useful social and commercial discourse would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to a person, company or product by using its trademark." The New Kids on the Block v. News America Publ'g, 971 F.2d 302, 306 (9th Cir. 1992).

The good news for citizen media creators is that the courts have therefore consistently protected the public's right to use the trademarks of others in order to engage in criticism, commentary, news reporting and other forms of noncommercial expression. This point is of special importance not only to journalistic sites, but also to gripe sites that focus criticism on particular companies and often use the companies' trademarks in their domain names. While the law is solicitous of your rights of free expression, the legal doctrines in this area are complicated. For this reason, it may be difficult to understand just how the law protects your use of a trademark in a particular act of reporting, commentary, criticism, and the like. If you want to make use of another's trademark in the course of these kinds of activities, you should consult the section on Using the Trademarks of Others.

Finally, if you host user-generated content, such as user comments, you'll want to consider whether trademark law will hold you responsible for materials posted on your website or blog by your users. Unfortunately, the protection provided by the "safe harbors" of the Digital Millennium Copyright Act and section 230 of the Communications Decency Act generally do not protect you from trademark claims. For details, see Trademark: User-Generated Content.

This guide is not a full treatment of trademark law, but it does provide what we hope is a good understanding of how to deal with the legal issues surrounding trademarks.

How Trademark Law Casts A Dark Cloud Over Free Speech

Sam Bayard — Thu, 24 Apr 2008 14:09:36 -0400

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:

If you have ever tried to counsel a client who wishes to use a trademark for expression then you have confronted the deeply muddled state of the law governing such uses. There are many routes to final adjudication, but none is clear and it is difficult to know in advance which ones a court might employ. I'd even speculate that the tangled nature of the doctrine may discourage attorneys from offering pro bono help that might otherwise be available to some of the artists and parodists who most need advice.

Professor McGeveran is refering here to the tangled state of the law regarding what, for lack of a better name, might be called free-expression-related defenses to trademark claims. These include exceptions to liability for "descriptive fair use," "nominative fair use," "noncommercial use" (at least two distinct types), and "news reporting and commentary" (dilution claims only), as well as, in McGeveran's words, "[s]everal different flavors of 'First Amendment' defenses." Not to be discouraged, we are trying to hash all this out for our readers on a page called "Using the Trademarks of Others," which is, alas, still very much forthcoming.

Hat tip to Media Law Prof Blog.

(Note: Bill McGeveran is a former fellow of the Berkman Center for the Internet & Society, which hosts the CMLP.)

T-Mobile Asks Engadget to Stop Using the Color Magenta

Sam Bayard — Thu, 03 Apr 2008 10:33:52 -0400

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):

The letter, which is available on Engadget, states that T-Mobile has been "using the color magenta as a company identifier and core branding element for years," and that "the company therefore holds trademark protection for the use of this color in connection with its products and services in many territories around the world." The letter goes on, in an uncommonly polite tone for a C&D, to indicate that customers might be confused about T-Mobile's relationship to the blog. Even more diplomatically, it continues: "we would therefore appreciate if you would replace the color magenta in the Engadget Mobile logo and discontinue using the color in a trademark-specific way on your website." The letter concludes with a request that Engadget "respond with any comments" within two weeks. T-Mobile's public relations folks deny that this is a cease-and-desist letter at all (which is a plausible reading), indicating instead that it was meant to "open a dialogue." It's no surprise that T-Mobile is treading lightly. Not only is its trademark claim weak, but Engadget has potentially significant influence with mobile phone customers.

For its part, Engadget doesn't see the letter as a request or invitation to dialogue, but as a demand (also a plausible reading). And the blog is responding accordingly -- posting the letter, publicizing T-Mobile's overreaching, and adding a healthy dose of ridicule:

A bunch of other tech and mobile phone bloggers have "gone magenta" in solidarity with Engadget (here, here, here, and here).

I don't know what the T-Mobile lawyers were thinking. This is not quite as bad as some recent cases, where plaintiffs have tried to use trademark law to silence criticism, like in Wal-Mart v. Smith and BidZirk v. Smith (different Smiths). Here, we have just an incredibly aggressive idea of what trademark can protect and a poor argument that any consumer confusion is likely. On top of that, these lawyers should know by now that shooting off a shaky C&D (or whatever it is) to a blog with a large and enthusiastic readership is an invitation to a public relations nightmare.

Hat tip to Ron Coleman.

Court Rejects Wal-Mart's Bid to Silence Criticism Through Trademark Law

Sam Bayard — Mon, 24 Mar 2008 14:39:39 -0400

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.

Smith has quite a colorful way of expressing himself. Some of the examples discussed in the district court's opinion include gems like "WAL*OCAUST: Come for the LOW prices, stay for the KNIFE fights" and two graphics, one naming Hillary Clinton the "Wal-Qaeada Employee of the Year 1986-1992" and the second bestowing on Chairman Mao Zedong the "Wal-Qaeda Human Resource Achievment Award."

Seriously, though, the court reached the right decision in this case, regardless of what you think of the merits of Smith's work. His parodies obviously represent acts of critical commentary and present no risk whatsoever of confusing consumers as to the source of goods or services, which, after all, is what trademark law is meant to protect against. It would seriously undercut freedom of speech if trademark law allowed companies to stop core political/social speech of this kind. Moreover, in rejecting Wal-Mart's trademark dilution claim, the court rightly held that Smith's critical speech was "noncommercial" even though he placed his designs on T-shirts and other goods sold to the public.

Marc Randazza and Ron Coleman have additional analysis on the case. If you're looking for a scholarly point of view on trademark law and freedom of speech, Bill McGeveran has some recent work on the topic. For additional details and court documents, see Wal-Mart v. Smith (Letters) and Wal-Mart v. Smith (Counterclaims).

Lifestyle Lift v. Real Self -- Using Trademark Law to Silence Critical Reviews?

Sam Bayard — Tue, 04 Mar 2008 17:35:10 -0500

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:

No matter how many times I see it--and in the Internet era, I see it all too frequently--I always shake my head in disappointment and frustration when a company uses trademark law to lash out against unflattering consumer reviews. To these companies, trademark law is a cure-all tonic for their marketplace travails, and trademark doctrine is so plastic and amorphous that defendants have some difficulty mounting a proper defense. As a result, all too frequently, the threat of a trademark lawsuit causes the intermediary to capitulate and excise valuable content from the Internet. Fortunately, a defendant has decided to fight back and resist the pressure to succumb to unmeritorious trademark claims. See the press release.

We certainly share Goldman's disappointment when we see intellectual property owners using trademark and copyright law to silence criticism, and there have been no shortage of cases in recent memory that demonstrate this point -- BidZirk v. Smith, Savage v. Cair, and ABC v. Spocko to name a few.

That said, LifeStyle Lift's complaint seems dead set on not pinning the alleged trademark infringement on the user reviews. It complains primarily about RealSelf.com's use of the Lifestyle Lift mark in metadata and its inclusion of a page that incorrectly listed contact information for doctors performing the procedure in Michigan. (Notably, however, one of the exhibits to the complaint consists almost entirely of user-reviews about Lifestyle Lift.)

While this strategy may help minimize the abuse-of-trademark argument, it also leaves Lifestyle Lift with a less than impressive trademark claim. While the caselaw is still mixed, courts have increasingly rejected trademark claims based on metadata, at least when there is no real likelihood of confusion and the defendant website is legitimately commenting on the plaintiff's product or service. RealSelf has already removed the allegedly incorrect contact information page, and it looks like more of a mistake than a bona fide attempt to pass anyone off as a Lifestyle Lift provider.

In any event, Real Self is fighting back. The company filed an answer yesterday, alleging that its use of the mark is a fair and nominative use (the latter defense refers to situations where you need to use someone's trademark in order to discuss or comment on a product or service). It also filed counterclaims, alleging that Lifestyle Lift violated its terms of service (and unfair competition laws) by planting shill reviews in the Lifestyle Lift discussion threads.

Eric Menhart Rethinks Trademark Application; Internet Lawyers Still Laughing

Sam Bayard — Fri, 22 Feb 2008 17:03:16 -0500

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:

"It was very clear that this was not going to be an academic argument, it was going to be more of a shouting match, and I didn't think it was worth my time to get involved in a shouting match with people that were going to shout louder and had more ammunition in their holsters than I had," Menhart said.

Wow. Check out that condescending tone. This self-proclaimed expert still thinks he's right (if only everyone were as "academic" as him!). Eric Goldman's retaliatory quip is elegant in its snarkiness and brevity: "Funny--I would have thought it wasn't worth his time because the application was completely unmeritorious." Ron Coleman's comeback makes for the funniest title of the week -- Wile E. Coyote, Cybergenius.