Wish Me Luck.

I don't really believe in luck. Ah, but mazal -- that's different! Let's hope our mazal is good for this one:

I am beginning a trial tomorrow (Monday) morning in federal court in the District of New Jersey (Camden vicinage). So, as the Professor says, "blogging will be light." Of course when he says it, he is saying it to stadiums full of people. Whereas me, not.

But if you do pop in, have me and my partner Nancy Exumé, who is riding shotgun, in mind. We are for sure on the side of the angels tomorrow.

Linker from a Grok Land

Doing my morning website traffic analysis, I noticed an extraordinary traffic spike, not to the blog, but to our firm website. What gives? Thankfully, my terrific hosting company, Capalon in Baltimore, provides great tracking tools. Turns out that we got a link from the ultra-impressive GROKLAW website. (That makes two grok-based threads this week. Grok that!)

Couldn't figure it out at first, so I searched on the site for my own painfully common last name (#82 -- could be worse; my first name's #21). No links to articles about Mr. Olympia, barbecues, blog-hating silver-spoon-in-mouth newspaper columnists, U.S. Senators, misspelled movie stars, gubernatorial wannabes, thankfully. So it was easy to find this article, posted yesterday, about depositions taken pursuant to Federal Rule 30(b)(6), citing in turn a piece I wrote a few years ago and which is found on our web site.

The link on Groklaw generated no less than 627 hits in one day alone! That is massive traffic, far more than my little Instalanche of a couple of weeks ago at the blog. What does it get me? Well, for heaven's sakes, now 627 more people know that they are responsible to prepare corporate talking heads to give responsive, substantive answers when they are presented for Rule 30(b)(6) deps.

If you love the law, what else do you need?

The Parody Bomb Goes Off

When it rains, it pours. Via Andrew Sullivan (and reported here too) a report that Volkswagen is going to sue-- in the UK -- the pair who made that tasteless mock commercial circulating around the Internet in which a suicide bomber detonates himself but the explosion is contained by the well-built Volkswagen. I don't know anything about UK law on parodies, and I am not sure whether this would be a trademark suit for use (or dilution?) of the Volkswagen trademarks (which would probably lose here) or a copyright suit based on some similar commercial which I have not seen (which theoretically could win here). (See our discussion on what does and does not qualify as a parody here.)

If you're Volkswagen, you may have to sue first and ask questions later. There are times when, as long as there is a colorable claim (i.e., the markholder does not believe the complaint violates legal ethics or Federal Rule 11 as frivolous) -- even though it's not a likely winner, you've got to file to protect the brand and make a public statement where there's the risk of public outrage. The lawsuit is a way to distance yourself from the use of the mark.

That's when it's not frivolous. And it's when we're talking about a morally outrageous use of the mark, as opposed to a commercially or politically, religiously, philosophically competitive use -- or one where you just plain resent that your property is part of the picture and you weren't cut in on the profits.

Slippery slopes? That's why lawyers are paid to exercise judgment.

Hooters Overreaching on Trade "Dress": You can look but you'd better not touch

IP News Blog at Pierce reports that the high-class joint Hooters has lost an attempt to claim trade dress rights in the colors worn by their high-class waitresses. What was this "trade dress"? According to Randall Zidones, who posted the item, "The girls at [competitor] Winghouse wore red shorts and white tank tops, similar to the orange shorts and white tank tops of the Hooters Girls."

Orange shorts and white tank tops, "trade dress"? When will it end?

When judges stop it. Looks like one did.

UPDATE: She really did, bless her heart. According to the original news report picked up by Zidones, U.S. District Judge Anne C. Conway actually entered a directed verdict after Hooters put in their case! Not only that, but the defense's counterclaim went to the jury and Hooters got socked with a $1.2 million jury verdict that the Hooters was in breach of an earlier agreement between it and Winghouse to settle all trademark claims. Terrific legal work by a gent named Don Conwell, a leader in the technology litigation bar, who practices in Florida.

The Great Copyright Crackup

ASCAP Launches Infringement Actions against Establishments Performing Copyrighted Music without Permission: The beginning of the end? I'm not saying they're not entitled. I'm not saying the law's not on their side. I'm saying the big-money copyright ownership gang -- the ASCAP's, the RIAA's, the MPAA's -- gives the distinct impression of Japanese kamikazes. They're suing everyone and everything, they've lost consumers... it's quite a thing to see.

Update: Who Rolled the Stone Away?

Courtesy of Best of the Web Today, we learn that Rolling Stone magazine has repented of its earlier sins and has accepted the Bible ad.

Funny how a little publicity can put the fear o' God in ya!

More to Google*

Now Instapundit links to this New York Times story:

Google and Yahoo are introducing services that will let users search through television programs based on words spoken on the air. The services will look for keywords in the closed captioning information that is encoded in many programs, mainly as an aid to deaf viewers.
* * *
A Google spokesman, Nate Tyler, said the service would include "most of the major networks," including ABC, PBS, Fox News and C-Span. Mr. Rosenberg said Google did not think it needed the permission of network and program owners to include them in the index but would remove any program or network if the owner requests it. He declined to discuss any business arrangements between the program owners and Google.

Are these guys great for IP lawyers, or what? Why isn't this just a springload for litigation? I can see no way they can cover all the issues with these mysterious "business arrangements," and the hedging -- "we don't need permission anyway" -- tells you where they think they're going. (When you draft that copyright infringement complaint, try this angle: The utilization of dialogue or other spoken words from television programming as a search term constitutes a derivative work. What say?)

By the way, apropos my earlier Google post, Frédéric Glaize of the Canadian-language blog Le petit Musée des Marques (they speak Montrealese but they're from France, oddly enough) emails with news that an English translation of the December 16th French opinion (well, of the abstract) is available here. If you speak the language, which I don't, the Musée appears to be a very worthwhile trademark blog. After all, it's the blog that said about this blog:

Ce blog contribue à justifier (a posteriori) le choix de Dennis Kennedy pour ses Legal Blogging Awards :
4. Best Legal Blog SectorsWinner: The Intellectual Property Blogs

For that, I don't need Babel Fish.

UPDATE: Evidently we go over very well in the Romance languages sector. Here's a nice comment in Mexican, in an item reporting on the Media Bloggers Association and other blog-active developments:

Sin embargo, en Estados Unidos los sucesos se precipitan. Al ya aludido The Bloggers’ Rights Blog como defensa laboral del blogger, se suman ahora varias iniciativas interesantes como Electronic Discovery Law, bitácora de recursos legales del bufete Preston Gates & Ellis LLP; Likelihood of Confusion, del prestigioso abogado Ronald Coleman ...

Prestigioso, eh? Claro, prestigioso!

* "To Google" -- Obviously something our friends at Google have to worry about is the bane of all great brands, which is becoming a victim of one's own success. Cardinal rule of trademark maintenance: NEVER USE TRADEMARKS AS VERBS. (Coleman's Corrollary: Never use "trademark" as a verb. Maybe I should Xerox that one and send it around... or did they trademark that too?)

Centerfield: Blog Name Theft

Very interesting brouhaha beginning over on the Center Field blog published by a group of self-described political centrists. (I had hoped it would feature commentary by Andruw Jones and Bernie Williams.) The question is the same one everyone has asked himself when registering for his first ever blog: What if someone steals a blog name?

Bob Cox of the Media Bloggers Association asked me to weigh in semi-officially on the Centerfield: Blog Name Theft colloquy. Here's what I wrote:

I am the general counsel of the new Media Bloggers Association, whose leadership has asked me to "weigh in" on this. This is not legal advice, nor have we researched the question, but because we're on Internet time the MBA has asked me to shoot from the hip from a legal / intellectual property point of view and get it out there.

My take is that under certain circumstances there could be a claim of (common law) trademark infringement under state and federal law for "blog name impersonation." A blog is a service; it is may be (depending on the facts) provided "in commerce." And "infringement" probably causes likelihood of confusion. The complaining blogger would have to prove that his blog has "secondary meaning" -- that the public (not necessarily the whole world, but the relevant "public") identifies the blog name in question with a particular source (i.e., his blog).

Doubtless the brand names in this field are worth a considerable amount of money, and I would not want to be the one to rip off "Instapundit" or "Daily Kos" with a similar blog name. Note that it need not be identical; even if it is similar, readers could well be confused by the implication of sponsorship, affiliation or origin. It is not necessary to have a gold-plated blog to make such a claim but, again, the less well-known the blog, the harder it will be to prove secondary meaning. Certain blog names may also be too descriptive to qualify for trademark protection. The question of whether personal names used as blogs may be trademarks is less clear.

The presumed goal of a court action would be to seek an injunction requiring that the name not be infringed. Few blogs would be able to prove monetary damages. Attorneys' fees are theoretically available in certain cases of purposeful trademark infringement, but are seldom awarded and even less seldom collectable.

Having said all this, I am not aware of any such claim that has been made in a court. The UDRP deals with domain names and registered trademarks only, so there is no recourse there. Most bloggers are, it appears, lawyers or law professors (this is a humorous aside), but those who aren't may have trouble affording counsel -- which is one of the reason the MBA was founded. Whether this or some other bloggers' group would want to be involved in adjudicating such disputes or representing offended bloggers remains to be seen.

Again, this is not legal advice for any particular person nor is it the position of the MBA, but it is our first take on the question.

See Dick Win. Pay, Defendant, Pay.

By now you must have heard about the dustup involving Yiddish with Dick and Jane. The irony for me is that not long after I was learning to read English with the original Dick and Jane at P.S. 225, I was learning Yiddish from an essentially identical book for little secular Yiddishists (it turned out handy later at the Chaim Berlin yeshiva, but I digress) with "Motl" and "Gitl" standing in for Dick and Jane.

In any event, and after discussing this case with my friend, IP lawyer Ben Manevitz, this case seems to be pretty much out of the "fool's parody" playbook -- "fool's" as in "fool's gold." It looks like a parody, but it isn't. The case to look at here is the "Cat Not in the Hat" case out of the (here it comes) Ninth Circuit (getting one right). Here the Circuit Court followed the rule set out a few years earlier in the "Pretty Woman Parody" case and applied it to a book, written in the style and format of Dr. Seuss's The Cat in the Hat, to tell the story about the O.J. Simpson murders in which Simpson is "the cat not in the hat." (Tastefulness was not a basis of the decision.) The court correctly distinguished between a real parody, whose target is the plaintiff's work, and what I am calling a "fool's parody," which merely utilizes (or as Ben says nicely, "leverages") the extant work as a way to parody some other thing.

Now it's possible that the target of the parody here is the gentile world, of which Dick and Jane are supposedly emblematic. (Of course many argued they weren't even emblematic of that.) The problem with such an argument is that it's too broad of an exception. No, that Spot won't hunt.

UPDATE: I stumbled on some terrific and contrary commentary on how to read the Cat Not in the Hat and Pretty Woman cases from, guess who, Marty Schwimmer, here wearing his Blawg Channels hat last year. Under his interpretation, the "broader commentary" would in fact fly, to which I say he has thereby crafted an exception that swallows the rule. As I said to some friends recently, I remain pretty right-wing on copyright -- despite being bloodied (and significantly enlightened) online years ago by the crew at the CYBERIA-L -- but on trademark I'm a freethinker...

Survey: Users Confuse Search Results, Ads

Speaking of my post from yesterday, below -- wow. Survey: Users Confuse Search Results, Ads. Hard to see how this doesn't have some effect on any settlement discussions in the Google / Geico case.

Of course, this survey has not met, and presumably would not meet. the Daubert standard for admissibility in federal court. But it does require me to change my post below to read, "whether a search engine is or is not causing likelihood of confusion under the Lanham Act by delivering results utilizing key word searches that happen to be someone's trademark is essentially a metaphysical one -- which is to say that judges are making policy decisions, which Congress is supposed to do."

Yes. And the reason I believe it remains a question, or should be, is because I am dubious in the extreme -- as everyone who has ever met me knows -- about the cooked-up concept of "initial interest confusion." (I wrote about my discontent here.) This doctrine, never contemplated by Congress, is what is driving all these cases. If somebody doesn't address this full-on (and the Seventh Circuit has already someone let me down -- see the article), it won't be the end of the world. But it will be world we never voted to create.

UPDATE: Via Marty Schwimmer, here's a transcript of the proceedings in the Geico case in which the court and counsel address the topic of designing the appropriate survey.

UPDATE: Crack IP attorney David Nieporent from my office took a close look and confirms that far from meeting the Daubert standard, this survey wouldn't even meet the Dilbert standard. Not only was it a phone survey, but it essentially consisted of asking the subjects whether they knew what "sponsored results" and other terms meant -- terms that most people who are not involved in Internet marketing or IP wouldn't know. That's a long way, however, from saying they would be confused if actually presented with these different results on the screen.

Google Plaintiffs Start Here

It may or may not be true that sooner or later, everyone in intellectual property law will be suing Google.

Well, it's almost certainly not true. But there's no question that this dominant player in the Internet (yes, I own a few shares!) (to be exact: four. or five.) is starting to present a ripe target for many a frustrated trademark or copyright owner that is miffed about having its IP properties diced and sliced the Google Way. (UPDATE: And some others.)

As a service to the IP bar, and via the No Watermelons Allowed blog, here's the first order of business: Coming to a coherent technical understanding of how Google works, courtesy of the Computer Society of those rapscalions at the Institute of Electrical and Electronics Engineers.

Be sure and give me a head's up when you find someone who has abstracted this into English. But frankly, who wouldn't like to see more heavy-lifting, drawing on this sort of nuts and bolts technological insight, in the many judicial opinions that brush so very broadly on the issues that will have a vast impact on the Internet and the economy to which it has given birth. For nearly a decade now judges have been ruling on critical cases involving the Internet and IP, trade law and other areas of law without evincing much proof of having gone beyond their own hunches (and maybe those of their clerks) as average Internet Explorer users.

In reality, Congress should be making these calls, not the courts. The question, for example, of whether a search engine is or is not causing likelihood of confusion by delivering results utilizing key word searches that happen to be someone's trademark is essentially a metaphysical one -- which is to say that judges are making policy decisions, which Congress is supposed to do. There is no right or wrong answer to whether someone searching for Coke, and getting the Pepsi website, should be protected from such "unfair competition." Congress has the horses to get people knee-deep into articles such as this one, to utilize their hard-care technology expertise, and to make appropriate legislative recommendations.

This is all starting to matter too much to be left up to District Court judges in the most overturned Circuit in the country. Or have you heard what I am told is the latest bit of waggery among certain sectors of the bar: How does a typical U.S. Supreme Court opinion now begin? "This case is on certiori from the Ninth U.S. Circuit Court of Appeals. The other grounds for reversal are as follows...."

Isn't it possible for the legal-political-commercial regime to make some attempt to manage, rather than be managed by, the development of the law of the Internet?

(By the way, don't have a cybercow. I said manage development of the law of the Internet -- not "manage the Internet" or "manage the development of the Internet.")

No Holy Rollers for Rolling Stone

CNN is reporting that Rolling Stone magazine has turned down an ad for a new "with it" Bible edition for young people. "We are not in the business of publishing advertising for religious messages," said a spokesman.

This is a truly silly statement. No one suggested Rolling Stone was "in the business of" publishing advertising for religious messages. It is presumably "in the business of" publishing a stale, hung over People magazine focusing on "youth culture" and paying for it by running advertisements. Ironically, that "business" kind of stinks for the magazine; ad pages and circulation have been in a steep decline since forever, despite a recent very modest uptick. Evidently, they believe they have more to lose than to gain by taking a "religious message" as an advertisement.

No, it isn't censorship. Every publication has the right to accept or reject advertisements from anyone, for any reason. But it does bespeak narrow-mindedness, and it displays something far short of what we might call cultural self-confidence.

What a slimy, mossy mess.

Standing Shmoe to Shmoe

The author of this weblog was quoted in USC Annenberg's Online Journalism Review in an article entitled "Tsunami Video Alliance Portends Future Distribution for Amateurs" last week. (It's about the Media Bloggers Association.) I don't mind saying that I powerfully enhanced the sterling image of attorneys as high-minded and articulate preceptors of the public with the following quote, responding to the question of blogger liability for carrying other peoples' videos (particularly tsunami videos). Here's the excerpt, essentially unchanged from what appears to be the original Yiddish:

It's not for nothing that they're [i.e., other peoples' works are] protected by copyright. There is no non-profit or 'hobby' exception to the copyright laws. Attorneys' fees and costs could even be available to the copyright holder, if he registered his copyright with the Library of Congress -- not likely but not impossible. I think linking to some other shmoe is the ticket here.

That sounds a little zhlubbier than I meant it to be. Let me clarify: At some other point during the interview I am sure I mentioned the fact that ultimately linking to that shmoe is not all that helpful, legally speaking, if you are aware (or should be aware) that he is himself infringing someone's copyright. And now I'm saying so in print. So, nu.

The Blogola "Scandal"

Last week Instapundit took the unusual step of opening comments on the ethics of Blog-payola. I wrote this:

I am pretty agnostic on this. I think it is hopeless to anticipate a standard of behavior in Blogovia. It won't happen, and I am not sure it should. No one is free from bias of some sort or another. Being paid to express an opinion is not so different from being affected by your likelihood of getting tenure, or a promotion, or maintaining your anonymity, or getting a choice committee assignment, or for that matter stroking or offending the right or wrong people in the world of blogs, politics, one's profession or with N.Z. Bear.

The only real difference I can see is that one form of blogola is liquidated, but the other sources of bias can be and of course are in some cases far stronger.

Consumers of blogs have to simply be skeptics. Those who disclose more, and more accurately, will be more trusted on that account. At the end of the day, all you have is your persuasiveness, your intellectual honesty, and -- in my case -- a good looking picture at the top of your columns.

Okay, I know -- not everyone can have such a picture. But you work with what you have. You get my point?

Comments to EFF: Sod Off

This is an update on my earlier item about the EFF's ACLU-like position in the Apple / PowerPage lawsuit. Apparently everyone (all five of 'em) who was motivated to comment on the EFF's position in this matter (which I will paraphrase as "other peoples' information wants to be free once someone violates their duty of confidentiality and blabs it") agrees with Likelihood of Confusion. As we all know, rectitude is solely a function of who wins the vote, so you have to like this trend.

How would EFF climb down from this one? And assuming they don't, how would it ever enforce any non-disclosure agreements it may have with its own employees, contractors and others?

I Have a Dream (C)

The online Globe and Mail has an important item on how documentary filmmakers and others are being slammed by the IP equity grab, called "How Copyright Could be Killing Culture". Okay, maybe "killing culture" is a little over the top. I suppose if more rigorous enforcement of copyright would throw a speed bump in front of the likes of Michael Moore, our modern Leni Reifenstahl, that would put a little chill in the air -- but is that killing "culture"?

The point of the article, flagged by Tech Law Advisor, is nonetheless well taken. On the road yesterday morning, I listened to the entirety of the "I Have a Dream" speech on the Imus show (and, indeed, wondered about permissions -- or does Imus need them?). The speech is breathtakingly beautiful, compassionate, stirring, patriotic; it is a truly appeal to America's better self. (What a contrast to the self-parodic tropes of King's imitators.)

The Eleventh Circuit Court of Appeals ruled in 1999 that the speech was not "generally published" for purposes of waiver of copyright, and that the King estate had the right to enforce its copyright in the speech. It is interesting to learn that King himself filed the copyright for the speech (albeit a month after he gave it -- one of the issues in play in the case). According to the Globe and Mail article, however, for the makers of the King documentary Eyes on the Prize to renew their copyright clearances, they would need between a quarter and a half a million dollars. Evidently they won't or can't do it, so untold numbers of schoolchildren (who, please God, are prevented from listening to Imus's show) won't be exposed to the documentary, the speech, or this compelling version of the MLK story.

John Fund of the Wall Street Journal wrote a powerful opinion column on this topic two years ago. Here's a fairly disturbing excerpt:

Many civil-rights leaders believe the King family has stepped out of bounds in merchandising Dr. King's memory. In 1997, Dexter King negotiated a multimedia deal with Time Warner that the company said could mean as much as $10 million in royalties on books, Web sites and CD-ROMs. While schools may use Dr. King's speeches free, family lawyers hunt down scholars who would use his words. "Eyes on the Prize," the PBS documentary on the civil-rights movement, was delayed until the producers made a $100,000 payment to the King family. Julian Bond, head of the NAACP, says the price of his civil-rights textbook went up by at least $10 a copy because he had to pay to include four King documents in it.
"The family hasn't done itself a lot of favors with its insistence that somehow they have to profit," says Mr. Bond.

No, copyright won't "kill culture," but is it all worth it to ensure the Mickey Mouse franchise for perpetuity?

Mustang Has a Trademark In It

The Associated Press says Lance Gilman bought the famous pink stucco bordello known as the Mustang Ranch and thought he'd gotten a bargain. Which, in that business, is not easy to find.

A variant of the oldest rule in trademarks applies to the oldest profession: When you buy a building, even a really famous one, you don't necessarily buy the good will of the business that was done in it. It's a pretty good bet you didn't buy the trademark good will where -- as here -- you bought the building at auction from the government after the business went down the tubes. Especially when you've hitched it to a semi-wide and moved it closer to home, or, rather, to your "adult resort and spa." (Don't ask -- there must be a children's spa somewhere.)

A federal judge, not surprisingly, has entered an injunction preventing the use of the Mustang Ranch mark by the new owner pending a final trial.

IP Blogs Get Out of Bloglines

Now this is going to be interesting. Kevin Heller's superlative TechLawAdvisor blog has a story about how Marty Schwimmer (going for three links from here in one week, only one of which is an outright ripoff on my part) has loudly disconnected himself from Bloglines, an aggressive RSS feed aggregator. Marty is annoyed, and rightfully, that what the company is doing amounts to a 21st-century version of the old "framing" conundrum of the '90's. (See here for a scaredy-cat but thorough [natch] treatment.)

Kevin updated and wrote, "more complicated than I thought," linking to an article just a day earlier on Dennis Kennedy's tech law website. He has the same problem although, each man true to form, he writes (and analyzes) a lot more than Marty and doesn't, as far as one can tell, bail out of Bloglines. (I haven't either.)

Well, I'll say it's more complicated. Not only does Dennis Kennedy have a "twin" on Bloglines, he has a twin on DennisKennedy.com, too -- either that or maybe there is a "technological solution" to the question of how he is writing about himself ("Prominent Lawyer Blogger"! yes!) in the third person!

UPDATE: Marty explains that it's not the "framing" -- it's the prospect of his content being repackaged for sale to his own competitors (other trademark law firms). That and what he describes as a "disingenuous" response from the Blogline boys to his inquiry. Evidently, he's getting linked aggressively on this. It will be this week's "inside blogball" story, I think.

Brand Me Infantile

Reuters reports that U.K. regulators have once again slapped the wrist of the French Connection clothing company for their jejune FCUK ad campaign ("French Connection UK," get it?). Last February Brand Channel reported on this business, which has managed to attract the unwelcome (or perhaps not?) attention of the American Family Association. (The AFA is no more a "self-appointed" guardian of public morality than you or I. They have a right to be offended and to act on it within the parameters of the free speech and the free market.)

The fact is, it's almost impossible to say what legal basis there would be in the U.S. to prevent the widescpread promulgation of this clever, adolescent joke on outdoor advertising throughout your neighborhood, on your kids' classmates' backpacks and jeans pockets and, of course, throughout the media. Unlike the U.K., the last few decades of First Amendment jurisprudence have eviscerated public obscenity law in the U.S. In contrast, it appears that the U.K. possesses a trademark office which does not suffer from a shortage of tools either. (No, not at all.)

The AFA's efforts notwithstanding, there are, according to TESS, nine active FCUK trademarks or trademark applications in the U.S, including a registration issued exactly one month ago today for FCUK AT HOME.

January 28th - DC Seminar on Intellectual Property and Sovereign Immunity

If you're going to be in or around DC on January 28th, the Federalist Society is hosting this seminar that will examine

the Supreme Court's June 1999 rulings in a trio of cases which, taken together, articulate perhaps the broadest statement of the sovereign immunity of States in American history. Two of these cases denied relief for alleged trademark and patent infringements, respectively . . .

When you consider how much of American business equity is sunk into or dependent on intellectual property, this topic is not so esoteric -- especially if that IP equity is yours.

Kid Rocks, Rolls

Popular music individual Kid Rock has prevailed in the Sixth Circuit appeal of a District Court ruling dismissing the lawsuit against him that sought to prevent him from using the "Top Dog" trademark. The Circuit Court agreed that the plaintiff, a former business partner, had abandoned the mark by not using it for over a decade.

That was the good news. The bad news -- for Mr. Rock -- is that the performer, who is evidently something of a rough-edged fellow, appears to have been canned as a prospective performer of whatever art or science he performs, at the second inauguration of the Top Dog himself, whom the Kid evidently supported for reelection.

If true, this won't please Jim at RightThoughts! But perhaps there's something to be said for maintaining some degree of gentility at the foremost social event in the country, what? It's not as if he has trouble getting dates, from what one reads in the penny dreadfuls.

One Bloggin' Apple Don't Spoil the Whole Bunch

Bob Cox pointed me in the direction of this coverage of the Apple trade secret litigation: Blogs Persist Despite Apple's Suit:

"The Macintosh maker obtained a court order to subpoena the AppleInsider and PowerPage sites after it filed a suit on Dec. 13 in a Santa Clara court. Apple said it wanted the names behind a post entitled, 'Does 1-20,' which allegedly leaked the information in question.
The EFF countered saying bloggers' sources are protected by the same laws that protect sources providing information to journalists. 'Bloggers break the news, just like journalists do.
They must be able to promise confidentiality in order to maintain the free flow of information,' EFF Staff Attorney Kurt Opsahl said in a statement. 'Without legal protection, informants will refuse to talk to reporters, diminishing the power of the open press that is the cornerstone of a free society.'"

I don't agree. The press shield laws are and always have been a legal fiction. They were promulgated after Watergate to carve out a narrow exception for a "the press" to the general rule that civic duties -- such as the requirement to respond to subpoenas -- apply to everyone. They are creatures of a time when mainstream journalism reached its apex of power and truly asserted itself as the Fifth Estate, an unelected power with the prerogative to topple governments. So now we are seeing the artificial barriers of institutional journalism fall. But if every blogger is a journalist, why then every -- every --

everybody's a "journalist." So now all I need is to register with Blogger -- a 15 second process -- and then post whatever I stole, or my best friend stole, or (better yet) what I paid him to steal from someone else -- to be immune to subpoenas? (Thankfully no one has said anything about "information wanting to be free" yet, have they?)

And really, does a "free society" really depend on getting out Apple's latest product developments ahead of when they want it to get out? Not even a little. Even if PowerPage is a blog, do bloggers want to push this point as far as the EFF is doing and demand full press shield privileges? I'll tell them the same thing I tell trademark attorneys who keep push, push, pushing their ever-growing bundle of rights on the rest of the world: Be careful what you wish for.

Courts are there to draw lines. Let's see where they draw this one.

Media Bloggers Legal Defense Project

The Media Bloggers Association is setting up a stable of attorneys "to provide MBA members with first-line counsel on matters relating to the use of intellectual property, defamation and other issues arising from their weblogging." Looks like they got a real crackerjack guy to take the laboring oar.

American Brandstand

Marty Schwimmer (who is a brand unto himself) links to the "American Brandstand" report published by an interesting outfit called AgendaInc. The report runs down last year's top musical questions last year to be answered by well-known brand names. This report is most useful for interpreting some of the lyrics that you've heard a million times but never quite "got" ("I got the Rolly on my arm and I'm pouring Chandon / And I roll the best weed 'cause I got it goin' on" -- these kids today and their nutty lyrics!). The list includes four present-or-recent clients of ours (can't say who, but look on my site under "published cases" for a hint) and about that many "brands" we've litigated against over the years.

The references seem overwhelmingly to come from the gritty "urban" music sector. I am reminded, though, of a kinder, gentler era when Paul Simon sang about Kodachrome. (It's slide film.) (Film -- it's what used to go in cameras.) Well, maybe not quite so innocent, thinking of Lola and her -- his -- uh, Lola's Coca-Cola ...

I don't remember Pepsi getting a pop music mention until much later.

Fools' Blog Responds to "I Read Dead Peoples' Email"

Fools' Blog: After Death E-Privacy:

With regard to the Marine's privacy, does it apply now that he has passed? Many courts have held that privilege (legal, medical, confessional) does not survive death. Why should the privacy of an e-mail account? Why is the e-mail account afforded any greater status than the Marine's U.S. Postal Service mail, which presumably his survivors are entitled (if not obligated) to check?

Great question. I guess to make my point, I have to enunciate a new rule. I am comfortable doing so, because this is all judge-made law anyway. There is plenty of good reason to ask, as Fool says later in his post, whether there is an expectation of great privacy here, and I think the answer is in the affirmative. It's a brave new world. Because, on the Internet, no one knows you're a dog, and by gosh that is something new and different, and people's expectations are that it will be treated that way.

The analogy to the found letters (and the very disturbing Seinfeld episode Fool talks about) is a fair one. I will say this: When physical correspondence is kept, regardless of where they are hidden, the person keeping them knows there is a finite possibility that they will someday be found -- and not only someday but today. You can even make the psychological argument that they want them to be found (if you want to). But people who use email rationally expect that if they do not reveal their passwords to anyone that their email will remain confidential. It's a different medium, a different mindset. And yes, expectations are critical to this examination.

If so, though, an interesting question arises if you posit a case where the email owner would, retrospectively, want his heirs to have access to the email. Suppose there's an email in which a person to whom the email owner lent money to finally admits he owes it. Or where the email owner discusses with a doctor friend his recent discovery, which he has not yet discussed with others, that he has an inheritable disease. These examples, however, are addressed by my proposed solution: a qualified right to access. Given, of course, that the does not, in these examples, know what he is looking for, more discretion is admittedly placed on the third person who, I have posited, is to be given permission to poke his nose into the email of the deceased. Undoubtedly this requires the imposition of a fiduciary duty on that person, as well.

Complicated, yes. Perhaps I will amend my estate plan to instruct my heirs that this is the procedure to follow, and name an email exector. But absent that, and these fairly far-out scenarios, I am inclined to put the burden on the heirs to make the showing as to why a deceased person's email should be their business.

And if the first judge to get this one disagrees with me, I wouldn't be surprised to find a legislature weighing in on my side -- and the California legislature is just the bunch to do it.

Dean's World - All right, already

Here's a great way to help the victims of the tsunami, per Dean's World. It's the right thing to do.

Trade Dress Rights in Musical Instruments

John Welch's TTAB Blog -- which monitors developments at the Trademark Trials and Appeals Board -- picks up this recommended reading from a recent article in the Trademark Reporter journal on the topic of trade dress rights in musical instruments. John quotes authors Robert M. Kunstadt and Ilaria Maggioni commenting on the recent decision in Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 70 UPSQ2d 1911 (M.D. Tenn. 2004), which ruled in essence that under trade dress law, only a Gibson guitar can make a Gibson-looking guitar, to wit:

[H]ad the court properly appreciated how to play a LES PAUL guitar, the court would not have granted summary judgment for Gibson. At a minimum, the functionality of the alleged Gibson trade dress features presents fact issues for trial.

In other words, a Gibson looks like a Gibson because it sounds like a Gibson -- and in trademark law, functional features are not granted trademark protection. (If they're novel, you may be able to get a patent, of course.)

I don't know as much about guitars as these authors, I guess, but back in the day when I used to play bass guitar on my Gibson SG copy! -- I sure knew that it wasn't playing like the real thing. But it did look enough like a Gibson and, what I found most valuable, had a guitar-proportioned fret board unlike the long Fender basses that were most popular but which I found harder to play. So on the one hand I, as the consumer, was driven by functionality. On the other hand, I wanted a bass that looked like a real big-boy bass. Considering the fairly low quality of my instrument, it's hard to imagine that the product configuration had much if anything to do with how it sounded. At the end of the day, and on a quick read of the excerpts, I might agree with the TTAB here.

UPDATE: On the other hand, the issue isn't how my Acme guitar's sound was affected by its shape, it's how the Gibson was -- that's what drives the functionality argument. So perhaps I should reconsider after I read the whole opinion and the article.

I Read Dead People's Email

When you reach a certain age you begin to wonder... what happens to my hard drive when I... you know. How do my Internet buddies find out that it's, er, nothing personal that I didn't respond to their IM -- no, I'm just... you know. Not living any more.

And my email? Yale Law's LawMeme blog has a great item about Yahoo!'s refusal to accede to the demand of the parents of a marine -- who was killed in Iraq -- that they be provided with his Yahoo! email password. (I found this blog on Instapundit's blogroll. He doesn't need another link.) They say they want more to remember him by. Yahoo!'s terms of service pretty clearly address this, and the company is sticking to it.

According to the item, it's possible that the parents could get the password via a subpoena or, more likely in this case I think, a court order. Should a court grant such an order? It will have to consider California law on inheritance, contract and privacy. And those "public policy" factors that find their way into decision in any number of ways? I say that absent a specific compelling reason to get the email information -- i.e., the location of his will or the buried treasure or something like that -- it should die with the man. And, considering that, I would also require that the information ultimately revealed be narrowly-tailored as well. The court in camera, or a special master, or another neutral person should fetch the relevant information and then Yahoo! should blow taps on the account. A hero is entitled to die with his privacy and his secrets intact.

Another blow to religious freedom

Did I tell you I'm a muckety-muck on the Religious Liberties Practice Group of the feared Federalist Society? Yeah, well. I am, and let me tell you, this is going to get us all burning up the phone lines on the private extension to John Ashcroft:

The drifter and self-proclaimed prophet accused of kidnapping Elizabeth Smart showed up to his competency hearing 90 minutes late Thursday and was kicked out after he started singing a Bible verse.

Exactly: In my faith, at least, showing up 90 minutes late is a religious obligation. When do we start flexing those mandate muscles, Mr. President?

Stern warning on Free Speech

One of the more interesting developments in media, law and culture -- don't worry, I left out medicine and animal husbandry -- is the radical change taking place in the broadcasting world, notably radio. Because of the traditional big three TV networks from last century, TV has always been a largely nationally-oriented medium besides local news and the occasional Uncle Floyd. But radio is different. I used to be the sales manager for my college radio station and I saw the change from a local advertising market beginning in the early and mid-'80's in central New Jersey. Local businesses lost the ability to make advertising decisions -- because they were giving way or selling out to franchises, chains and other regional powers with professional media management staffs, budgets and the like. Still, even then radio content was entirely local, besides network news feeds that came over the phone lines on the half hour or so. That changed with the advent of Howard Stern and Rush Limbaugh and radio syndication.

This article in The American Spectator is a good summary of what the move by Howard Stern -- whom I regard as simply unlistenable, for what it's worth -- means for the changing broadcasting industry. It's notable because it's honest and non-condescending about Stern's undeniable appeal, and it is fascinating to observe what strange bedfellows the far-out, quasi-counter-culture Stern makes with Rush Limbaugh -- who has jumped to Stern's defense as whipping boy for factions favoring more content control over radio by the FCC.

We also call "content control" censorship, of course, and while I understand and am sympathetic to the sensibility, I hope perhaps changes coming in the Supreme Court will cause it to reconsider the ancient fib that "radio is different" in terms of government censorship because the "ether" is a "public trust." This concept was more or less demolished academically by Ronald Coase and those following him in the 1960's through today. Evidently the current popular argument for continued radio censorship is the free accessibility of radio to young people, because of its ubiquity.

The problem with this argument is that (a) ubiquity of speech is just not a reasonable answer to the First Amendment and (b) whom are we kidding? These kids today see and hear it all on cable TV, movies and on the Internet. If, unlike my kids, your kids have unsupervised access to the modern media culture, Howard Stern will be the least of your problems -- even on the radio.

Do I really think the Supreme Court will recognize this? Well, it sure won't be Congress. Maybe it's on their short list for the 21st century... right under rent control.

UPDATE: Buzz Machine on a related topic.

Insta-Greetings

If you've got a modem, you might get a link: It doesn't get any better for a blogger on his third day in business. Now I feel a little guilty, though.

It will pass. Thanks.

Evel Knievel's tarnished reputation

Yahoo! News reports that the Ninth Circuit (them again!) has ruled that an online photo caption referring to him in the presence of two women as a "pimp" means "pimp in a good way." They must mean in the rapper vocabulary sense of "ladies' man," which assuredly the Bangled One is. But does Evel Knievel have any truck with the world of P. Diddy and 50 Cent? Shouldn't that matter?

It seems that the fate of per se defamation is to go the way of obscenity in the courts: There just will not be any such thing. Context and "community standards," after all, have little relevance in a wired, bloggy world. (I wish the Supreme Court's steady abandonment of the concept of obscenity were at least tagged to this point, but it's not.) I don't think that's such a positive development, but we have to come to grips with it.

On the other hand, just how would Evel have proved damages to his reputation? That he was thrown out of the University Club?

Strict construction

No, not more about that constitutional dustup at the Volokh Conspiracy. The delivery guys were supposed to be here yesterday with a blog roll and a direct link on the top to the firm website. But you know how it is -- they just called from Route 3 for directions. Sheesh.

UPDATE: The Dean intimidated me into sticking the darned HTML code in there myself. It's "good enough for government work." Thanks to him (again) and Bob Cox for our first-ever links. But enough log-rolling. Now it's time for objections to document demands. Yes!

For Sale: Cabbage Patch Dolls, Pet Rocks

Aha! See, the Blog Herald is asking the same question I did: Is 2005 the "Year of the Blog Backlash"?

Yaakov Menken of Cross-Currents -- and my law firm's Web host -- asked me why I said that I was finally going to jump on the blogging bandwagon just as the wheels were beginning to wobble sickeningly. Well, this is the first time I've seen anyone validate that at all. (And Lord knows how terribly hard it is to validate whatever pops into your head on the Internet.)

Of course, I also said that about real estate 15 years ago.... ten years ago... five years ago.... Nonetheless, as I said below, if you think of it as a medium -- and not a trend -- I think you can't go wrong.

I guess sooner or later we'll know if we're early adopters, Johnnies-come-lately or whatever it is that comes in the middle.

What is a word mark?

Speaking of Google and trademarks, an interesting article on Google's own trademarks is Don't "Hitchhike"A Ride On Google's Trademarks and URLs by Russell Shaw. Only thing is that he defines a "word mark" as "similar to a trademark, but more of a logo than a business name," which it isn't. I don't blame him for being confused. The term is not found in the index of McCarthy's definitive treatment, nor in the INTA glossary on line. But one thing is for sure: A word mark is a trademark, it's not "like a trademark." And describing it as being like a logo is misleading -- many logos don't have any words in 'em at all. In fact, a word mark is nothing more or less than a trademark consisting of a word or words. (See, e.g., American Home Products Corp. v. Johnson Chemical Co., Inc.,589 F.2d 103, 200 U.S.P.Q. 417 (2nd Cir. 1978). If you must. )

Bloggers and Tsunami Relief

Bob Cox at TheNationalDebate has all the latest on the tsunami relief effort being spearheaded by bloggers via the Media Bloggers Association on their beta site. This is a good thing!

Welcome, Blogads clickers

I'm stuck in a monthlong marketing campaign on Blogads. The rates are really favorable but the diminishing returns are sick-making. So having "spent" the money (well, pledged it -- do you think Amex reads blogs?), we may as well drive some traffic to here, the law firm's new blog.

I have joked that the wheels are about to come off the blogging wagon -- blogs are now so cool I'm afraid they're no longer cool at all. If everyone has one, who wants one? But as a phenomenon of communication, in the sense of information exchange, they are not going away. What's good (for me) is that the legal issues of blogging aren't going away either. They will only increase. Not everyone is interested in more communication -- not if it's a threat to their franchise. That means people will attempt to utilize (or no less likely abuse) the law and the courts in order to compete unfairly. And that's something we have demonstrated we can do something about. (And sometimes we can't, even if down the line courts acknowledge, well, maybe we were right....) One of the reasons I left my my old firm two years ago and founded this office was so that I could spend more time working the leading edge of Internet-related law. I'm happy that we're succeeding, at least somewhat.

We also do house closings. Baby steps, man, baby steps. At least our real estate associate is a blogger.

Anyway, a number of bloggers whose names you must know (I like the sound of that) are banding together to form the Media Bloggers Association. More associations means more lawsuits! It's all good.

UPDATE: A reader asked me about the old firm, Gibney Anthony & Flaherty, in New York. It was a warm, friendly breakup. We are still friends, still work together, and I am still on their letterhead as "counsel." See? Look. So don't get upset.

Marty Schwimmer's blog

By the way, let me be very clear about this: The definitive blog on the topic of trademarks is my friend Marty Schwimmer's Trademark Blog. It's funny also.

SCOTUS: Likelihood of Confusion Bows to Fair Use

(HEADLINE UPDATED) Tilt of the chapeau to law student Joe Gratz's blog for reporting this decision from the U.S. Supreme Court that came down a month ago today. Here's Joe's summary and an excerpt from KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.:

The Supreme Court held, unsurprisingly and unanimously, that the affirmative defense of trademark fair use does not place a burden on the defendant to prove that his use was not only descriptive, but also unlikely to cause consumer confusion.

Now I'm not sure I agree with Joe's comment on his blog that Justice Souter said it all so well; I prefer this pithier summary from the official syllabus: "Nor would it make sense to provide an affirmative defense of no confusion plus good faith, when merely rebutting the plaintiff’s case on confusion would entitle the defendant to judgment, good faith or not."

By the way, want to guess which Circuit Court the Supreme overturned?

"Constitution in Exile" - Visiting with the law prof blogs

I picked up a link on this topic from today's Instapundit and have now gotten a little into this constitutional law tussle on Gene Volokh's website.

I try to get in to constitutional law tussles whenever I can. That's where I got this here scar.

Google me this

If trademark / Internet cases are not at the top of things to stay on top of in late December, you may have missed this potentially important decision giving Google an out of the box win in the battle (not, as suggested by the CNET story's headline, the war) between its own quaint self and insurance mass-marketer GEICO. This is a case being watched by all of us practicing in this area.

Indeed we have a case in our office in which we represent a California Internet-based retailer accused (quite falsely, as a fact matter) of little more than using a "competitor's" domain name as a Google search term. Not only did this not happen -- and we have the proof from Google Itself that our client ordered no such keyword purchase. Not only is our adversary's name not even remotely a trademark. No, the real point is that even if it had happened; even if it were a trademark -- this would almost certainly not be trademark infringement.

I have long been a critic of the over-use of the Lanham Act as a way to either stifle dissent or use the courts as a way to compete unfairly. My humble little opinion is that the bad guy here is Professor McCarthy's dubious doctrine of so-called "initial interest confusion," which I wrote about here. (At about the same time, a couple of fellows from a quaint little New York firm published a more extensive article here. Mine's easier to read.) I have been able to turn the attention of my subcommittee at the International Trademark Association -- that would be the esteemed Online Trademark Use Subcommittee of the INTA Internet Committee (yawn) -- to this topic, and I seem to have found an audience. INTA tends to be very pro-plaintiff in the trademark context, but I guess it doesn't hurt that the head of the Subcommittee is Google's top trademark lawyer.

Anyway, I see this as a hopeful sign if you're interested in free expression and free competition.

A message from the Dean, and more name-dropping

Dean Esmay, of Dean's World fame, shot me an email over the weekend that readers interested in the economics of the blog phenomenon (and yes, I do think we are reaching full saturation on the self absorption front) might find interesting. He gave me permission to share it with you:

Hey Ron. Thanks for advertising again with Dean's World. From what I've seen, you seem to have a pretty good advertising strategy. It's pretty clear to me that for the services you are offering, you are not very dependent upon click-through rates. People don't look at a lawyer's ad and say "Oh yeah, I need to buy those services RIGHT NOW!" Instead, what you are obviously trying to do is advertise on a bunch of different blogs so that people see your name everywhere, so that eventually when they feel they need services they are familiar with your name. So you advertise on a bunch of blogs, constantly keeping your name in the mix. This is very savvy. I only say that becuase I notice you advertise on many, many different blogs, kind of in a rotation.

Dean pretty much hit it right on the nose, and in fact mere hours earlier I had just written an email almost exactly along these line to Miklos Gaspar of Blogads in response to his inquiry about my stradgety. Dean had a lot more interesting things to say about the future of blog-based advertising, but I'm not necessarily sharing 'em for free.

What's new at the firm: Judgment in trade secret / Taiwan case

One of the purposes of the blog will be to update Internet users who mysteriously find their way here on what sorts of things are new at the Coleman Law Firm. Unlike lawyer bloggers such as the guys at Powerline and Beldar who use their powerfully honed intellects and razor-sharp legal sensibilities merely to weigh in on ponderous world events, I am unapologetically and explicitly pitching for your business here. Then I will weigh in on ponderous world events, virtually insuring that I don't get your business.

Anyway, after our papers wended (did wend?) their way, seemingly forever, through the U.S. District Court for the District of New Jersey, we've obtained an order for a client involved in manufacturing and distributing certain furniture products, which prevents a Taiwanese company -- and, significantly, any person acting "in concert" with that company -- from importing specified merchandise to the U.S.

That doesn't sound fair, does it?

Well, how about the fact that our client went to Taiwan to teach these guys how to manufacture this product to specific proprietary standards, and at our client's own expense? And that the Taiwanese guys agreed in writing not to manufacture this product for anyone else? And that after our guys decided this factory simply could not meet their quality standards and ceased ordering merchandise, the chaps in Taiwan refused to return their manufacturing molds and starting selling the stuff on the open market? Now that doesn't sound right.

Part of the reason it took so long to get this order is that the Taiwanese company is in a foreign country. But exactly what country it's in is a problem, you know? Taiwan is not a country except as far as the Taiwanese are concerned. Under international law they are merely a very pesky (and well armed) province of the People's Republic of China. Well, to make a long story short, serving a company in Taiwan with process (it helps that they had agreed to a New Jersey forum for all disputes) is no piece of cake. Convincing your friendly neighborhood court clerk that you have succeeded in doing so is even harder -- especially when you get a different story from each clerk that answers the phone.

We finally went around the clerk and got the judge's attention, and a decently prompt signed order -- yes, by default, but I guess that's kind of my specialty -- granting a fairly strong injunction against the importation of this stuff. Now our client can use it to enforce its rights against would-be importers. More than this, plaintiff does not say.

Blogging for Industry.

If one more person tells me that I am going to have to blog, why that will make a number of people. So what I'm doing now is blogging. There is no requirement, however, to watch a person make a fool of himself. I'm just saying.