Ruling Imagination: Law and Creativity » trademark

Fighting Facebook’s overreaching.

pfriedman — Tue, 05 Oct 2010 15:05:44 +0000

I’ve written plenty about copyright overclaiming and its pernicious tendency to stifle clearly legitimate appropriation of copyrighted works. As Richard Posner has written, the fear of litigating against rich copyright holders who place a premium on their fear of losing something of value leads to behavior based on law that isn’t at all what the law is supposed to be.

Of course, the over zealous assertion of purported legal rights by wealthy litigants to cow the less wealthy is not the type of behavior limited to copyright. It comes arises in all legal fields. And, unsurprisingly, Facebook apparently is prone to the practice. As Boston.com reports:

Boston-based Where Inc. has developed an application that helps users find places they might like to visit. You can save it in something called a Placebook.

Just one small problem. The owners of Facebook have apparently decided that Placebook is in violation of its intellectual property rights. Facebook argues that companies like Placebook create confusion among consumers, thereby diluting the value of their unique brand. (Hyperlink added.)

It seems to me a bit of a stretch to worry that someone would consider Placebook to be a product of Facebook. And while Facebook is a pretty brilliant name, it’s hardly original — filched as it was, after all, from the colloquial term that Harvard and many other colleges give to the photo directories they distribute to students. (At my undergraduate institution it was known as the “Pigbook.”)

But Facebook doesn’t have to worry too much about the legitimacy of its claim as long as it’s just legitimate enough to pass the giggle test and thereby scare potential defendants into giving up without a fight:

In a cease-and-desist letter to Placebook’s lawyer a couple of weeks ago, Facebook’s lawyer wrote that, in the US alone, it has successfully intervened to prevent the registration of the trademarks Officebook, Flickbook, Geezerbook, Doctorbook, Lawyerbook, and my personal favorite, Redneckbook, which would have been a website for the hunting-and fishing crowd.

Placebook, however, is not so easily bullied. Just as importantly, Placebook has a lawyer who recognizes bullying when she sees it:

“I think Facebook is having an identity crisis and they are acting like predators,’’ said Kimberly B. Herman, an attorney at Sullivan and Worcester who is representing Placebook. “It’s very predatory and not reasonable.’’

In previous cases, Facebook has gotten its way simply by firing off a threatening letter, according to Herman. That’s what happens when a company valued at nearly $7 billion unleashes its legal might against start-ups. “Every entity has rolled over and died, because no one has $6.9 billion to fight them,’’ Herman said. (Hyperlink added.)

The writer of the Boston.com piece agrees with me in thinking that “consumers are smarter than Facebook gives them credit for and are not likely to get Placebook and Facebook confused.” Unfortunately, “a court may have to decide that — if, of course, Placebook doesn’t back down, as others have.” Here’s hoping Placebook has the resources to send Ms. Herman out to fight for them.

You can’t own facts — Tremé belongs to all of us.

pfriedman — Tue, 03 Aug 2010 12:12:51 +0000

Tremé is a neighborhood in New Orleans. Treme is an HBO series about New Orleans residents rebuilding their lives after Hurricane Katrina. The Chicory opines correctly that the t-shirt pictured to the left does not infringe any rights anyone holds in the television series. There cannot be a copyright in a fact, so there can be no copyright in the name “Treme.” And while trademark is a distinctive sign or symbol (a “mark”), the t-shirt bears no font or insignia distinctive to the television show. So get your Treme t-shirts and show your support for my friends in New Orleans.

Hat tip to Ray Ward.

The South Butt Answer to the North Face

pfriedman — Thu, 04 Feb 2010 18:27:52 +0000

For a brilliant combination of technical perfection, persuasion, and humor of a sort I’ve never before seen in an answer to a complaint, you’ve got to see the answer filed by South Butt to the complaint filed by North Face alleging that South Butt’s name and its slogan, “Never Stop Relaxing,” infringe North Face’s trademarks in its name and its own slogan, “Never Stop Exploring.” I will be forever grateful to techdirt for bringing this document to my attention.
The South Butt Answer to the North Face

Trademark madness

pfriedman — Tue, 24 Nov 2009 17:43:39 +0000

From Legal Pad: “Sand Hill Advisors, the Palo Alto wealth management company, is suing Sand Hill Advisors, the commercial real estate company in Los Altos, for trademark infringement.” I am, apparently, one of the 3 people Legal Pad asserts did not know that “Sand Hill Road is the iconic stretch of pavement near which the sainted feet of venture capitalists tread daily to their places of work.” There was a time I would’ve known the signifiers that mattered to venture capitalists. I suspect I’m better off no longer knowing.

Apparently the wealth management company claims it’s been using the name since 1995 and that the real estate company is profiting off the value that the wealth management company has created in the name. There would be some merit in the claim if people really are using the real estate company because they think it’s somehow associated with the wealth management company, but that would seem to be a difficult set of facts to establish. Typically, a trademark cannot be enforced against someone using it in a different market because in doing so the alleged infringer typically is not capitalizing on value in the trademark created by the claimant.

In addition, the real estate company claims (it its motion to dismiss (pdf)), that the trademark claim is deficient because the wealth management company “doesn’t even have an enforceable service mark, since the government rejected a trademark application because the name was descriptive of a place.”

Legal Pad, though, is dead on in its prediction: “Sand Hill Advisors has it in the bag.”

But who will win the lawsuit filed by Mickey Mouse against Donald Duck?

Money or racism? Could the Dolans just do the right thing already? The courts won’t.

pfriedman — Mon, 16 Nov 2009 21:00:09 +0000

The Lanham Act, the federal law governing trademarks prohibits trademarks “which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt. . . .” Nevertheless, the Supreme Court has declined to review a lower court decision (pdf download) in Pro Football, Inc. v. Harjo ruling that, even assuming the name of the Washington, D.C. football team, Redskins, is disparaging to Native Americans or brings them into contempt, the Redskins cannot be forced to give up their trademark rights. Why? Because, given the length of time that the Redskins have had the name without challenge and the delay in the plaintiffs bringing their claim, it would be unfair to deprive the football team of the profits to be made from selling goods bearing the Redskins name.

There are serious questions to be raised about the legal merits of the NFL’s position — among other points, the Lanham Act states that challenges to a trademark can come “at any time.” But my more serious question, to Daniel Snyder and to Larry Dolan, is this: why in the world would you want to make money off of a symbol so many people consider racist? Well, Larry Dolan’s answer is that he doesn’t see evidence that Chief Wahoo is racist.

It’s amazing how money can blind someone.