We’re in the midst of discussing trademark issues so here’s a timely article for Internet Law students: Trademarks Take On New Importance in Internet Era. The article mentions a challenge to the Pretzel Crisps trademark brought by Frito-Lay. Frito-Lay argues the term is generic–“like ‘milk chocolate bar.'” I think that a trip down the grocery store snack aisle would present trademarks of similarly lukewarm distinctiveness that have acquired secondary meaning, but I don’t have time right now for that trip and the last time I shopped I wasn’t attentive enough to snack trademarks to offer examples. I will say the Pretzel Crisps website has kick-ass SEO–the product dominates the highest-ranked organic responses to a Google search.
*would taste as crisp
If you are among the dozens of my students considering law school, and if your knowledge of the legal profession comes from Law and Order and John Grisham novels, and if you imagine you’ll be a trial lawyer because that’s the only type of lawyer you know, and if you picture yourself locked in a daily courtroom struggle with fiendishly smart opposing counsel, irascible judges, shifty witnesses, and a quixotic search for truth, then don’t read this deposition excerpt published on Cleveland.com. Otherwise, if you want a peek into the heart of civil litigation,* read on.
*with a bonus lesson on generic usage of trademarks
Courtesy of a student, from “It’s on Like Donkey Kong” to “You’re Fired!”, The Nine Worst Attempts to Create Brand Names A more accurate title would be The Nine Worst Attempted Trademark Registrations. Either way, they are amusing.
A few years back Rescuecom sued Google federal district court (N.D.N.Y.) for Lanham Act claims of trademark infringement, trademark dilution, and false designation of origin pursuant to 16 U.S.C. §§ 1114 & 1125. Rescuecom’s claim rested on Google’s sale and use in its AdWords program of the Rescuecom mark, Rescuecom arguing that allowing its competitors to trigger views of their own ads in response to searches for Rescuecom violated its rights as a mark owner. The trial court dismissed Rescuecom’s complaint on Google’s 12(b)(6) motion, ruling that Google did not use Rescuecom’s mark in commerce. Rescuecom appealed and in 2009 the Second Circuit ruled that its complaint did state a claim on which relief could be granted, reversed the trial court’s dismissal, and remanded for further proceedings.
Nothing happened in the case until last week when Rescuecom declared victory and dropped its suit. Why it believed the post-Second Circuit status quo represented a victory is unclear. (Sample headline, from Eric Sinrod’s column: Rescuecom Delcares “Victory” Against Google: Oh Really?) Rescuecom explains that Google has changed its AdWord practices regarding use of trademarks and no longer suggests Rescuecom’s mark through its Keyword Suggestion Tool, and that it obtained what it wanted from the suit. Commentators have responded skeptically to Rescuecom’s explanation. Rescuecom is itself a defendant in a lawsuit filed by Best Buy, claiming that Rescuecom’s use of Best Buy’s “geek squad” mark in its keyword advertising violates Best Buy’s rights in the mark. One commentator called Rescuecom’s position in the Best Buy suit as “intrinsically inconsistent” with its claims against Google. Et tu, Rescuecom?
Displaying breathtaking self-importance Lindsay Lohan has sued eTrade for commercial misappropriation of her name and personality in a television ad. In the ad the e-Trade talking baby (I preferred the earlier baby’s personality–this one acts like one of Vince Vaughn’s and Jon Favreau’s pals in “Swingers”) explains that he didn’t call his girlfriend the night before because he was busy trading his portfolio. The off-screen girlfriend asks whether “that milkaholic, Lindsay” was over. The baby plays dumb but then a baby girl enters the scene to ask “milk-a-what?” Lohan claims the use of a ditzy, dense baby named Lindsay violates her right “to the exclusive control of the commercial use of her likeness, name, characterization and personality.” Her suit seeks damages of $100 million.
This reminds me of astronomer Carl Sagan’s suit against Apple Computer in the early 1990’s. Apple code-named a development project “Carl Sagan.” That might have been flattering by itself but Apple code-named contemporaneous projects “Piltdown Man” and cold fusion,” two well-known science hoaxes. These internal code-names became public knowledge. Sagan objected to Apple’s suggesting by association that he was a fraud and demanded that Apple rename the project. Apple complied, renaming the project BHA–for “butthead astronomer.” Not amused, Sagan sued Apple for misappropriation, libel, and other claims. In rejecting the libel claim the court reasoned
[a]ny reader exposed to such a publication would likely have knowledge of the context in which the language was used. A reader aware of the context would understand that Defendant was clearly attempting to retaliate in a humorous and satirical way against Plaintiff’s reaction to Defendant’s use of his name. A reasonable reader would further conclude that the use of the term “astronomer” did not imply that Plaintiff was a less than able astronomer, but that the word was a merely a means of identifying Plaintiff. Finally, a reasonable reader would conclude that the phrase “Butt-Head Astronomer” did not imply that Plaintiff was legally wrong in asking Defendant to cease using his name.
Sagan v. Apple Computer, Inc., 874 F. Supp. 1072 (C.D. Cal. 1994). Sagan and Apple settled the suit’s other claims in 1995 on undisclosed terms.
Lohan claims that many people say she “was the first person they thought of when they saw the commercial.” Lohan claims to have one-name recognition comparable to Madonna and Oprah. Not to me, but my demographics may rule me out. Unlike Madonna and Oprah, Lindsay has been in common usage for many years. Neither Madonna nor Oprah has been in the top 1000 birth names in the past 35 years. According to the SSA website in 1986, when Lohan was born, Lindsay was the 46th most popular female birth name in the U.S.. Its highest rank in the past 35 years was 1984 when it ranked 36th. Lindsey ranked 35th in 1983 and 1984 and 39th in 1986. They would be higher if the rankings were done on pronunciation rather than spelling. Lindsay’s popularity has declined dramatically over the past decade, almost precisely in line with Lohan’s career arc. Does correlation = causation? As a lawsuit Lohan v. E-Trade has no legs. As a strategy for promoting the Lohan brand it appears to be attracting more ridicule than sympathy.
Or, eBay Loses Again in France. Last week the Paris District Court held eBay liable for using LVM’s trademarks as AdWords to, according to an eBay spokesperson, “direct buyers’ listings for authentic goods from eBay sellers.” The court ordered eBay to pay 230,000 € for damages and LVM’s legal fees and 1,000 € for every future violation. LVM and eBay have duked it out before; in June 2008 LVM won a suit against eBay over auctions of counterfeit Louis Vuitton handbags, the court holding that eBay did not employ adequate measures to prevent the sale of fake goods. Last year the Paris District Court fined eBay for continuing violations of the 2008 order.
Other luxury retailers have sued eBay for similar claims on both sides of the Atlantic. In August 2008 a Belgian court ruled for eBay in a suit over the sale of counterfeit Lancome perfumes. The court held “that eBay is a passive provider of ‘host’ services, as that term is defined in a European Community policy directive, and that it’s therefore entitled to more legal leeway than a brick-and-mortor auctioneer would receive if counterfeit goods were being sold on his premises,” reasoning that echoes what one would expect to be the outcome of the same claim under U.S. law. In July 2008 (eBay had a busy summer) Tiffany and Company lost a suit in federal court in New York City for trademark claims arising from eBay auctions of counterfeit trademarked goods. That court held “to the extent that eBay may have possessed general knowledge of infringement and dilution by sellers on its Web site, eBay did not possess knowledge or a reason to know of specific instances of trademark infringement or dilution as required under the law”–a clear expression of the difference between U.S. and French law on website liability.
Legal Blog Watch has a brief post about the threat of the Google trademark passing into common usage, or going generic. There’s nothing Google can do about us regular folks using Google as a verb–“I Googled that guy and he turned out to be a creep”–or as a substitute for the noun “search.” Those are a function of extreme brand penetration. What somewhat more troublesome for Google is generic usage by commercial actors such as the media. The New York Times ran a story this week about how more people are “Googling themselves.” (A pointless pastime with a name like David Randall–there may only be one of me but there are too many of us.) For at least the past couple of years Google has reminded users not to engage in this type of usage, and a well-placed cease and desist letter to The Times or other media outlet will help curb the practice. It may be counterintuitive given the ubiquity of Internet publication, but I think there is less danger of a mark passing into generic usage now than in times past. Companies are more keenly aware of the value of their brands, devote more resources to protecting them, and because of the Internet can track troublesome or infringing uses more readily and come down on malefactors like grim death. It’s the same problem brands like Xerox -one photocopies a document, one does not Xerox it–and Kleenex–as you were about to sneeze when was the last time you shouted “pass me a facial tissue!”–have faced. The key is to manage common usage so it never gets to the point where competitors use the erstwhile brand to describe their own products.
*A lifetime subscription to anyone who identifies the movie title echoed by this tagline.
A friend alerted me to this story: Timbuk2 announced plans this summer to make custom messenger bags by laminating recycled advertising material such as posters, billboards, and shopping bags. Timbuk2 advertised images of these Lamitron bags bearing the Target logo. Target responded with a cease-and-desist letter expressing “concern that [Timbuk2’s] use of [Target’s] famous Bullseye Design mark could give the impression that these bags originate from, or are somehow sponsored by, or are otherwise affiliated with Target . . . we request that you cease use of TBI’s Bullseye Design mark on your Lamitron bags.”
This dispute is the trademark law equivalent of a remix or mash-up of a copyrighted song and exists on the cusp between traditional trademark law and 21st century marketing. The lawyer in me understands why Target sent the cease-and-desist letter. Trademark law places the onus of trademark protection on the mark’s owner, who must guard against unauthorized use of the mark, whether infringing (likely to cause confusion about the source of a product) or dilutive (weakening the identity of the mark in ways that are not infringing). To a lawyer this is a classic slippery-slope problem. It Target lets Timbuk2’s use go unchallenged then the next unauthorized use becomes harder to challenge and, at some point, the Bullseye Design loses its association with Target and becomes another piece of worthless iconic flotsam on the sea of advertising images.
Idea City, a marketing and advertising blog, argues the other side: “Shame on you, Target. This is a new era . . . Timbuk2 may be another “company” rather than a “customer”, but what they offer you is a way to keep the Target brand relevant, fresh, and at the cutting edge of fashion and design. Why in the world would you ask Timbuk2 to remove your logo from their bags?” The lawyer’s retort is “because (1) Target, not you, gets to decide how to keep its brand relevant and fresh, (2) unauthorized use of the Bullseye Design will weaken its relevance and freshness, a result that does not harm you but harms Target deeply, and (3) allowing your use would be the first big push down the slippery slope.”
Trademark law shapes the environment in which the parties confront this issue, but its concerns are not the only ones. Creativity builds on the creations of others. Danger Mouse remixes The Beatles’ White Album and Jay-Z’s Black Album to create the Gray Album. Tom Stoppard takes two minor characters from Hamlet to create Rosencranz and Guildenstern Are Dead. Alice Randall reimagines Margaret Mitchell’s Gone With the Wind through the eyes of a slave in The Wind Done Gone. Timbuk2 takes found advertising images and places them in a different context by incorporating them into its Lamitron bags. Is Timbuk2 picking stuff at random from the cultural stream and giving it new meaning, or trading on the value of Target’s property? We know what the lawyers say and what the creative types say. Is there satisfactory middle ground?
I wrote recently about the lawsuit brought by owners of the Life is Good brand, which I referred to as the Gen X version of the WalMart smiley face, against “parody company” Life Sucks for trademark infringement. I learned today that Life is Good dropped its suit, which is the right result. Since I last visited the site in early September Life Sucks has added items to its product line so, if you’d care to support your local parody company, check it out.
The creators of the ubiquitous clothing line–the Gen-X version of the WalMart smiley face –are targeting Life Sucks, the “parody company” created by 17 year-old Weston, MA high-school student James Constantini. Steve Bailey reports on Page C7 in today’s Boston Globe that Life is Good sent a cease-and-desist letter to Constantini for his company’s alleged infringement of the Life is Good trademark. Constantini is standing his ground, claiming his mark is protected as a parody.
Constantini has the law on his side. The likelihood that consumers will be confused about the source of a product is the essence of a trademark infringement claim, and it’s hard to argue with a straight face that anyone will confuse a sardonic Life Sucks image with the dopey Life is Good smiley face. Life Sucks fits the legal definition of a parody because at the same time it make you think of the Life is Good mark, it pokes fun at it.
I’m partial to the Half Empty and Fire Hydrant shirts. Size L.