A Pretzel By Any Other Name*

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

eBay Wins One

A few weeks ago a French court ordered eBay to pay about $60 million in damages to Louis Vuitton and other manufacturers of luxury bags, finding that eBay failed to take adequate steps to prevent sales of counterfeit merchandise on its site.  This week a U.S. court handed eBay a victory in a similar lawsuit brought by Tiffany and Company, holding under U.S. law that eBay had no obligation to prevent sale of counterfeit trademarked goods.  The court said “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.”

The contrary results under European and U.S. law reflect the profound changes in Internet law over the past decade.  When I started to teach Internet law in 2001 the popular wisdom held the Internet was beyond the reach of national law, that it existed in some extra-legal dimension subject to its own unique forces.   No more.  Internet businesses must, like trans-national brick-and-mortar companies before them, decide how to structure operations to meet the unique legal environment of each country in which it operates.

Timbuk2 and Target

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?

Suit Dropped

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.

Life’s Good for the Lawyers

The creators of the ubiquitous Life is Good 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.

Steve Jobs to Cisco: “Like iCare”

This week Apple unveiled its long-awaited iPhone which, like all exciting new phones today, is a digital organizer, home entertainment center, game platform, camera, and close personal companion. It even makes phone calls. The name “iPhone” is a natural fit, joining iPod, iTunes, and iMac. It also belongs to Cisco, which, according to The Wall Street Journal today, registered the iPhone trademark in 2000. (The iPhone mark, Serial# 75076573, was actually registered on March 20, 1996 by Infogear Technology Corporation. Infogear assigned the mark to Cisco on June 5, 2000.) News articles about Apple’s iPhone release reported Cisco’s ownership of the mark and the fact that Cisco and Apple were negotiating terms for Apple’s use of the name. It is not a surprise, then, that Cisco countered iPhone’s debut by suing Apple for trademark infringement. I would love to have been a fly on the wall for Steve Jobs’ internal discussions about unveiling the phone with its rights to the mark unresolved. I wonder: how much is Apple willing to pay Cisco for exclusive rights to the name, and how much has Apple budgeted for legal fees?