Its true, the Olympics have something of a super-trademark law status. This includes uses outside of athletic events as well. In addition to any rights given under trademark law, the Amateur Sports Act reserves the use of the word “Olympics”, “Olympiad”, “Citius Altius Fortius” as well as anything resembling the rings for the the United States Olympic Committee, and they can be pretty intense in their enforcement. So enjoy “Vancouverage 2010” at colbernation.com.
A post on Duets Blog got me thinking about parodies and trademarks. What is interesting about this area of law is that parodies of brands are commonplace, but on they are given only narrow exemptions within the law.
Take for example the number of gripe websites. This guy rips on Wal-Mart with his “Wal-ocaust” and “Wal-Qaeda” website. PETA has a website that uses the domain name murderking.com . In fact there is a website that just links to other gripe sites. Gripe sites are typically legal, because the trademarks are used to refer to the company and to comment on that company.
But parodies are often done without any serious criticism in mind. Walk through any mall and there are dozens of spin-offs of well known logos and brands that are misspelled for comic effect. Some are pretty clever too. A quick Google image search for “parody t-shirts” comes up with an “evil” version of the Levi’s logo, an AD/HD version of the band AC/DC’s logo, “Boring” and NASCAR, a Smurf and Simpsons version of the Soprano’s, a variety of versions of the Obama “Hope” logo and more. These parodies are commercial by nature and don’t always seem to be truly offering criticism of the trademark owner, which can cause trouble.
Even where lawsuits have successfully stopped parodies, they seem to persist. For example, a maker of a tee shirt reading “Enjoy Cocaine,” a parody of the iconic Coca-Cola design was successfully sued and ordered to stop making the tee shirts. See Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972). Well over thirty years later, the same design can be found all over the internet.
Its hard to believe that many of these sales are likely to change the public’s perception of the trademark owner or that sales of tee shirts are damaging to their bottom line. Parodies occupy a large part of pop culture, but unfortunately sometimes operate in a gray area of the law.
The movie Blade Runner is based on the novel Do Androids Dream of Electric Sheep? written by Philip K. Dick. The androids or replicants in question were Nexus-6 series. I am still confused how a phone, however awesome, is going to evolve into a sophisticated killing machine in only five more revisions. In all seriousness, it is a difficult case to make that brands of fictional products in novels automatically have any trademark protection. As a side note, I believe Google’s use of DROID is under a license from Lucasfilms.
Hat tip to the always interesting boingboing.net
From the William Mitchell alumni website:
David Kappos, undersecretary of commerce and director of the U.S. Patent & Trademark Office is coming to William Mitchell College of Law to discuss his vision for the USPTO. Save the date.Tuesday, April 6, 20104:30 pmWilliam Mitchell’s Auditorium The event is free and open to the public. Seating is limited
Great post by John Ottavianni on Eric Goldman’s Technology and Marketing Blog recaps some of the more consequential developments in cyberlaw this past year.
Google, Yahoo! and others offer advertising services that can pluck words from a web page to create customized advertisements. Contextual Advertising as its called, is a really cool feature but there are some potential problems that companies considering online advertising campaigns should consider.
1. They can make you look bad.
See this Business Insider story about the worst Google Ads ever. The ad in question appeared with a news story about terrorists and offered a Terrorist Certification program. Probably not what the advertiser had in mind. I hope. This isn’t necessarily a legal problem, but it can be embarrassing and costly to correct. If you are using an algorithm to create your ads, you need to be aware of what that algorithm could create as output.
2. It could violate privacy laws
AOL was recently sued for its contextual advertising program because it was allegedly gathering private information in order to better target the ads. Many times the information gathered by these services are not tied back to any one particular user, but it is something to be aware of. Wired magazine recently ran an article about how easy it becomes to identify someone just by collecting a few facts. Zip code, employer, car model. . . none of these would identify you by themselves, but put a few of them together and very quickly you can have an individual identified.
3. It could be trademark infringement
Keyword based advertising is big business for search engines like Yahoo! and Google. Its also been a hot topic in trademark law. If you select a trademark to trigger your advertising, you could be infringing. Its even more certain that you would be infringing if you have that trademark appear in the text of your ad. Just about any word could be a trademark so context is important.
4. It could be false advertising
False advertising laws vary from state to state but can include anything that creates a misunderstanding with a consumer. If your ads are designed to grab words from web pages be sure you offer goods or services that you are now claiming to offer.
Contextual Advertising is a powerful tool and I think we will see much more of it rather than less. But like any powerful tool it should be handled carefully.
It is true that you can legally protect a trademark the moment you start using it. So why go for the extra effort to get a federal registration? Here are a few reasons:
1. Increased Certainty. Once registered, you can be relatively certain that you actually have a trademark. If you are relying on common law rights only, you may not actually have something that can be protected. It may be too generic, or already in use or have a number of other problems that will prevent you from actually enforcing it.
2. Automatic protection in all 50 states. If you don’t register, you only have a trademark in the areas you are using it. If you are in Minnesota and only sell in the upper Midwest, you may not be able to stop a competitor in California.
3. Customs enforcement. Once registered, you can record your trademark with US Customs who can monitor imports for infringing goods.
4. Monetary damages. Though they are not frequently awarded, it is possible to get damages based on the profits made by infringing goods.
5. It puts others on notice. Records at the U.S Patent & Trademark Office are public. Courts will assume that anyone using a similar name had known or should have known about your trademark.
6. You can more easily stop cybersquatters. If a domain name is registered that is infringing your name, one of the things you will have to establish is that you have trademark rights. Registration is not required, but it will be much more difficult to either in arbitration or in court without one. Same goes for search keywords, adwords, etc.
7. You have an asset to borrow against. Nearly every business needs to borrow money at some time. It is easier to do so if you have assets to use as collateral. A bank can much more easily obtain a security interest in a registered trademark.
8. ®espect. This one is a bit vague, but a company that knows and uses its legal rights signals to the world that it should be taken seriously. Trademark registration is one small piece of that, but its an important one.
This is an interesting story especially because the amount of damages awarded are so high. The ISP was a host to a number of sites that were selling counterfeit fashion goods like Louis Vuitton handbags. The ISP had claimed an exemption under the DMCA, however the court correctly concluded that that only applied to copyright not to trademark infringement. Something for any ISP or hosting service to keep in mind.
Here is the link.
Hat tip to @EvansIPLaw for posting a link to this article on Twitter.
See this story from the SeattlePI.com.
This is a little bit of old news by now, but apparently Starbucks has been “localizing” its stores by minimizing the Starbucks branding an giving them an independent coffee shop look and feel. I have heard some people say that this is proof that Starbuck’s brand is toast, but I don’t think so. Its not uncommon for large businesses to diversify their products and sell them under different brands. Aldi and Trader Joe’s are the same company with different brands that reflect different portions of the grocery market.
Trade dress is the overall “look and feel” of a business. I can’t tell from the pictures, but if Starbucks did in fact copy the trade dress of another local store they could be in trademark trouble. The look and feel of a business can be protected as trade dress. See for example this classic case between two rival taco restaurants, Taco Cabana and Two Pesos. Anything that identifies your business, and your business alone can be protected because customers will come to associate that thing with your business. Names and logos are most popular, but trade dress counts as well.