Billings Don't Only Matter to Lawyers

And trademark law does't evidently matter all that much to the Billings Gazette. What a mess this story is! Here are some of the trademark law howlers in this one piece about a fairly routine trademark dispute:

• "Actually, the Burkhartsmeiers have only filed for the trademarks. The federal government hasn't granted them yet. " NO! The government doesn't "grant" trademarks. It protects them via the legal system and may even grant you a trademark application for your trouble. But trademarks are established by use, not by the government.
• "After registering Coffee Mill and Coffee Mill Espresso & More in Montana, Morgan started filing for national registration last June. However, her computer crashed and she got caught up in running for the state Legislature. Now she's trying again to protect her business names. " NO! Business names are not trademarks! They can be trade names, but they may not be entitled to trademark protection.
• "To truly protect a business name, a company has to register at the federal level and in each state for trademarks, trade names and service marks. " NO! Truly ridiculous, and in some states, truly irrelevant.

Remember, I'm a media blogger. Someone's got to speak trademark truth to power!

Osama Kin Back in Brand Equity Play?

Joe Gandelman reports about a trademark story relating to the protection of the Bin Laden family name in Europe.

No, not that Bin Laden -- it's about his evidently decent half brother, one of the 54 siblings and semi-siblings who didn't blow anything up. The family operates the Bin Laden Group, which is a construction company, but this half-brother wants to go into something a little less butch: fashion and fragrances.

Nota bene: Under U.S. trademark law, what Mr. Binladin (how he spells his name now) did in Switzerland would not be hardly anything like a trademark, at least the way it has been reported. Put simply, business names are not trademarks in and of themselves. Neither are surnames. And, of course, here trademarks are earned by use and the development of secondary meaning, not registration (which only enhances the protections available to trademarks). You can file what is called an Intent to Use trademark application here, but Binladin is quite clear that he has indeed no intent to use the name.

All of which means that if you want to open the Bin Laden Café, roll out a line of Bin Ladin Dental Floss, or start hawking Bin Laden Beer, this Swiss development in and of itself shouldn't necessarily scare you off. Other things might, but I just provide the legal advice.

Not All First Amendments Are Equal

Instapundit writes, in reference to the Ward Churchill affair: "Eugene is right, of course, that the First Amendment prevents even untenured people being fired simply for 'anti-Americanism,' and he's very right that academic freedom, given the political tenor of most campuses, does more to protect politically-incorrect people than the reverse. "

The First Amendment does all that for an at-will employee? Not exactly. Here's what Volokh says:

The Supreme Court has held that even government employees, including ones who are untenured, have a right to free speech; and courts have applied this especially strictly to scholarship and speeches by public university professors (and professional standards have generally reinforced this rule and applied it to private universities). If you're untenured, you may be fired for any reason except your exercise of your constitutionally protected free speech rights (and your race, sex, religion, and the like).

Ah, government employees -- that privileged caste! Essentially, the courts have added a constitutional dimension to the civil service reforms of the late 19th century. Whereas most of us can indeed be fired for expressing an opinion that an employer does not like, or that it fears its customers may not like, it's much harder to can a civil servant (let's not say bureaucrat) on the same grounds.

Here's a good explanation per a website called Exploring Constitutional Conflicts by Professor Doug Linder at the University of Missouri-Kansas City Law School:

Does the First Amendment allow the government to use a public employee's speech as the ground for discharge or denying a promotion? The Supreme Court's answer to this question was at one time a simple "Yes." Justice Oliver Wendell Holmes wrote in 1892, "There may be a constitutional right to talk politics, but there is no constitutional right to be a policeman." The so-called right/privilege distinction was maintained even as late as 1952 when, in Adler v Board of Education, the Court said, "You have a constitutional right to say and think as you will, but you have no constitutional right to work for the government."

By 1967, however, the Court would note that "the major premise of Adler has been rejected." In its place was a new premise: that the government ought not to be able to do indirectly what it cannot do directly. The Court took the position that public employment cannot be conditioned on a surrender of constitutional rights. The problem for the Court then became how to balance the government's interest in maintaining an efficient public workplace against the individual employee's interest in free expression.

Live and learn. I've been going on and on about how journalists don't have their own little First Amendment, and it turns out, no, they don't -- but government employees do!

Professor Reynolds is a gummint employee, working as he does for the University of Tennessee. So we forgive him the imprecision -- and so much more. But if you're in the "private sector," for heaven's sake, don't go and say something stupid!

Oklahama! OK!

Is it still "mainstream media" if the guy isn't wearing a tie?

Live and In Concert

"In active concert" -- in the Federal Rules sense, that is.

I will be co-presenting two seminars in the coming months. One is called Advanced Trademark Issues for the IP Practitioner and it's being presented by the Trademark and Unfair Competition Committee of the Association of the Bar of the City of New York. It's on April 5 from 6-9 pm, in New York, of course. Here, sign up.

The other one is later that month, on the evening of April 28th -- a seminar being given in Saddlebrook, New Jersey by the National Business Instute, called Find it Fast and Free on the Internet. It's for civilians, though attorneys who are Internet novices will benefit. So will I -- unlike the ABCNY gig, on this one your blogger gets a piece of the gate. Naturally my hope and expectation is to make the one big hit that night, then retire. So don't wait -- operators are standing by.

Inducing More Blogging

Kevin Heller announces on Tech Law Advisor that I have joined the Induce Act Blog, which means I must have. (If there's one thing everyone agrees on by now, it's that bloggers can be trusted implicitly.)

I'll blog on Induce Act Blog either on topics raised by other members (my first post is here), or on pending legislation affecting my topics of interest. Otherwise you can find me on the same old Bat Channel.

Washington State to AOL: You've Got Nailed

The Internet Cases blog comes through again, reporting on this decision, holding that the forum selection clause in AOL's terms of service does not trump the State of Washington's consumer fraud law.

I litigated a similar issue in a case called Kubis & Perszyk., Inc. v. Sun Microsystems, Inc., 146 N.J. 176 (1996). (I wrote the Appellate Division brief before leaving the Lowenstein Sandler firm.) In Kubis, the New Jersey Supreme Court ruled that franchisees are entitled to the protection of that state's Franchise Practices Act, and that to enforce a forum selection clause would eviscerate that act's little-guy-protective purposes.

"Little guy?" Does Coleman mean "consumer"? Because, Coleman, if you mean consumer, that would put New Jersey squarely in line with Washington (the "New Jersey of the Pacific Northwest"). Well, glad you asked. It reminds me of another of my no-name-on-the-decision(don't ask - grr!) specials when I was at the same firm. After a mixed jury verdict, we got the Third Circuit to overturn the District Court in a case called J & R Ice Cream and rule that, under New Jersey law, the Consumer Fraud Act does not protect franchisees, because franchising is a commercial transaction, not a consumer transaction. (A related article -- good but dated -- is here.) Since that time, however, New Jersey's Appellate Division came to the opposite conclusion in a case called Kavky v. Herbalife Int'l of America, regarding which I have written before, and which is reported on at page 2 of this article. The New Jersey Supreme Court has not spoken on the issue, but considering its historical predilections, it's a good bet that we were wrong, and the District Court judge in J & R and the Appellate Division in Kavky were right. Not "right" about what the legal analysis, but right about how the state's highest court would rule.

What's the point? Consumer-friendly laws -- including, perhaps, laws that don't contain the word "consumer" in them -- contemplate that consumers and those similarly situated will have recourse to local courts. Forum selection clauses, a valuable tool of the side with the superior bargaining power, undercut that recourse. The AOL case is particularly interesting, then, and not only because it is another court drawing a line on the effectiveness of the forum clause bomb. It's interesting, too, because it took place in the State of Washington -- not home to AOL (obviously), but to another big-time licensor of intellectual property and technology-related services. In fact, see this article on on this topic, which discusses the application of a forum selection clause in a case involving MSN (it just so happens to be by that self-same former law firm of mine!).

A smart lawyer, next time he is faced with this situation on the part of a little guy with a consumer fraud claim -- or maybe even a franchise or distributorship case -- against one of those many Washington-based tech companies, in a court far from Washington, may well urge that the public policy of Washington itself recommends the application of local consumer fraud statutes to the detriment of forum selection clauses.

Deep, Man

Apropos the Bates Line / Tulsa World dustup, Kevin Heller reminds us that deep linking can be a problem -- if you promised in a contract that you wouldn't link. And he reminds us, astutely, that a contract can include a website user agreement.

The flip side: If that's your angle, content owner, you'd be well advised to say so in your cease and desist letter, and not merely default to a copyright claim.

GEICO Isn't Good News for Google

Remember the GEICO v. Google case? My partner Jane Coleman does. She's writing a chapter on secondary trademark infringement liability for the second edition of a book on trademark counterfeiting now being edited by our colleague Brian Brokate, a partner at Gibney Anthony & Flaherty. (Brian is one of the leading anti-counterfeiting lawyers in the country. ) Her conclusion is one that Google and its lawyers doubtless know well: Having no trademark monitoring policy may be trouble, but a little policing may be worse than none at all.

The standard is set by a leading case in this area, Inwood Labs. Under Inwood, in a contributory liability trademark infringement case, a court will find contributory liability if the defendant has either (1) intentionally induced a third party to infringe the plaintiff’s mark or (2) supplied a product to a third party with actual or constructive knowledge that the product is being used to infringe the mark. The GEICO lawsuit, like most such cases, is a Prong Two case.

So, on to Prong Two, then: supplying a product to a third party with knowledge that the product is being used to infringe the mark. Product? Here there is no product; Google provides a service. But based on the principles synthesized in a later decision, Lockheed Martin v. Network Solutions from what are known as the "flea market cases," the second prong of this definition of contributory infringement can apply to services, too. Then the court applies a modified version of the Inwood standard: It considers the extent of monitoring and control the defendant has over the infringing activity.

So, what happened in the GEICO case? GEICO, a discount insurance company, sued Google for using GEICO’s trademarks to sell advertising on Google’s search engine, alleging contributory trademark infringement. Two practices of Google were at issue:

1. The sale by Google of GEICO’s marks as search terms or "keywords," and
2. The advertisements or "sponsored links" which contained GEICO’s marks in their text, generated by customers who selected those terms.

Regarding the sponsored links, GEICO had argued earlier that Google was contributorily liable, saying, “the advertisers themselves [made] 'trademark use' of the GEICO marks by incorporating them into the advertisements, which are likely to deceive customers into believing that the advertisers provide accurate information about GEICO products or are somehow related to GEICO.” GEICO also claimed -- remember the "direct control and monitoring" standard of Lockheed -- that Google in fact exercised significant control over the content of advertisements that appeared on its search result pages.

Last December, Google asked the U.S. District Court to grant judgment as a matter of law in its favor. It argued that GEICO could not win its contributory liability claim, because it could not prove that “Google affirmatively encouraged or knowingly assisted in violation of trademark law by the alleged infringers.” Google urged that its own internal trademark enforcement policy bans the infringing advertisements at issue, though “some ads occasionally slip through.” It insisted that the “inability to achieve perfect enforcement of that policy” did not give rise to contributory liability, and that there was no evidence that Google condoned or encouraged infringement.

But this would only matter if Prong One -- intentional inducement-- were at issue. Apparently, it's not. Google understandably would have the court focus on its good intentions, but this is a Prong Two case such as Lockheed -- where, again, the courts ask whether the defendant exercises a level of monitoring and control that Google acknowledges it does effect via its trademark enforcement policy. Google’s argument regarding its internal trademark policing policy may, in fact, prove too much.

It's not clear that Google can get out of responsibility for ads that “slip through,” given its awareness of the existence of infringing ads. If it can police a little, perhaps it can police a lot. Judge Brinkema's oral opinion did not address this, but a final written decision by her or an appellate court might. [UPDATE: As of early May, there is still no written decision. It's a good bet that there won't be one and the parties will settle...]

The court granted in part and denied in part Google’s motion, allowing the case to go forward on the question of whether Google was contributorily liable for trademark infringement arising out of the sponsored advertisements containing GEICO’s marks. The incentive to settle is high -- and maybe that's why it's so quiet.

This is why I have argued that auction websites (read: eBay) should be subject to contributory liability for the sale of counterfeit or other infringing merchandise -- because they (and other web auctioneers) do have control over the auctions. Courts have repeatedly found contributory infringement where a defendant claims "willful blindness." Well, it's certainly a sort of willful blindness to do some kinds of monitoring and not others.

Would it add to the cost of search engines and auctions to do more policing? Yes, of course it would: More fighting over rent. Considering the profits involved, and the tremendous costs imposed on brand owners to try and keep up with counterfeits and online infringers, an outcome that required more policing to protect the IP that contributes to those profits doesn't seem like an unreasonable one.

Holding Their Ink-Stained Breath Till They Turn Blue

Update on the the Tulsa World silliness: Michael Bates reports, citing to the blog Tulsa Topics, that the World has wisely decided that it will deal with criticism of its editorial and political deeds by disabling its own Internet capability, not only to Michael and his critical blog but to the rest of humanity -- including its own paid customers! Now no one can get PDF's off their site.

That's the best way to protect your copyright: Just publish for your friends and family. This way if any of them crosses the line -- WHAM! You ground 'em, or don't invite them to the cousin's club meeting, or disinherit them. Good thing is you keep the mess away from those Article III judges and their pesky technicalities.

Another victory for self help. Is anyone at Overlawyered going to compliment the World on this? Don't count on it!

Tatoo You

Donna Wentworth writes on Corante > Copyfight > about a lawsuit by a tattoo artist against roundballer Rasheed Wallace, the extraordinarily large human billboard for Nike. Turns out that the pin-and-ink wielding craftsman believes he should get a piece of the action that Mr. Wallace gets from Nike. His artwork, after all, is in the Nike ads along with the rest of the massive Wallace estate.

Wentworth and most of those commenting there are right: This is ridiculous overreaching. The law isn't exactly clear, however, that the plaintiff is wrong and that this is an obvious work for hire. I say that because I've researched the issue: A prospective client wanted to go into this area -- not just tattoos, but NBA tattoos! -- and not surprisingly he had some hard questions about liability. They didn't get all that much softer after we researched them.

But it's the same game over and over again: Rasheed is a money tree and this guy wants to snip off a branch because he fortuitously got to carve something in the bark. He is seeking rent. There's no right or wrong about it, really, but the rules we decide on probably should address the almost certain expectations of both sides that the deal was a tattoo for $450 -- not a one-time license for a "graphic."

You and Me Against the (Tulsa) World

Instapundit reports that Mike Bates at the Bates Line blog is fighting back against meritless legal threats from his nemesis, 500-pound media gorilla (in Tulsa terms) the Tulsa World. Mike is getting help from the Media Bloggers Association and, of course, this office. And, yes, Bates already kind of used the little joke in my title above, but as you can see from my letter, we don't really believe in copyright any more, do we? (That is a jape.)

Anyway, we know it really happened in Blogonia now, because Glenn and Dean have linked to it.

Culture Killers or Pains in the Neck?

Wired reports on a new book whose thrust, evidently, aligns decently well with my own little personal views (and not just mine): Brand Name Bullies. Says the review in Wired:

To prove his point that the commons is under attack, Bollier has filled Bullies with example after example of how corporate lawyers have swooped in on artists and consumers who have tried to use products and logos in ways other than those prescribed by the corporations themselves.

Ah, but here's the conclusion:

At 253 pages -- not counting the 55 pages of additional notes and indexes in the back -- Bullies provides more than enough case studies like these to convince you that copyright and trademark laws don't always serve the public. However, the book has one big flaw: It doesn't quite manage to prove Bollier's assertion that these laws, or the abuse of them, are greatly threatening our culture.

This about what I said when this "killing culture" concept was first mooted. Nutsy rent-seeking in IP is a big pain in the neck, but it's not going to kill culture.

In fact, now that I think about it... this phenomenon, as obnoxious as it might be, just might kill what might could be a culturally-retardant phenomenon: Post-modernism! Maybe we can move on from the Mickey Mouse watch, irony, and camp... and get back to creating some real culture instead of reheating the 20th century ad infinitum?

Yes, an interesting thought. Meanwhile, no, we're not killing culture. But we're sure feeding a lot of lawyers. That can't be all bad, can it?

This Isn't One, Either. Heavens, No.

Bill Heinze's I/P Updates blog reports about a trademark registration you can see at the erstwhile movie pirating website LokiTorrent.com. You get a message that says "There are websites that provide legal downloads. This is not one of them." The site is the property of the good people at the MPAA. And it ought to: Downloading someone else' movie is just plain stealing. Even if the MPAA is against it.

Clients sometimes ask whether the infringing website they're steaming about can ever fall like an overripe fruit into their hot little hands. Yep. It can.

Naming Names

The ultimate branding device is a person's name, although the oft-stated truism that "every man is entitled to do business under his own name" is far from absolute. Still and all, how about every man's right to do business under someone else's name, or no one's name at all? Bob Cox's The National Debate has a pretty interesting piece involving the use of pseudonyms. Its politcal-media angle was the nonsense involving James Guckert, alias Jeff Gannon, and in particular the supposed hullaboo over his use of an assumed name. Bob really goes to town with the use of noms de plume (remember "Andre LaPlume"?). My favorite new thing from the article? George Soros = George Schwartz.

Don't ask me what my name was before someone changed it for us. I just don't know, unfortunately. I used to say it was Soros, but now, why bother?

DC Circuit: Press Not Shielded

Another red hot AP story: The Circuit Court of Appeals for the D.C. Circuit has ruled that Time magazine's Matthew Cooper and The New York Times' Judith Miller have to testify before a federal grand jury about their confidential sources in connection with the Plame Affair:

"We agree with the District Court that there is no First Amendment privilege protecting the information sought," Judge David B. Sentelle said in the ruling, which was unanimous.

That makes four of us. As I blogged last month, press shield laws, even where they are on the books -- there isn't a federal press shield law; the journalists here were asserting a constitutional right, not one based in legislation -- are a bad idea. Journalists are no different from you and me. Not any more. Right, Jordan?

UPDATE: Welcome, fellow Instapundit readers. You too, Mom. Knew you'd hit my blog sooner or later. Via the How Appealling blog, linked to by Instapundit, here's a link to the decision. My favorite part is exactly the point I have been making, to wit:

Appellants counter that Justice Powell could not have meant what the United States argues, as this would have given reporters no more protection than other citizens. However, they never make it clear why they are convinced that Justice Powell must have intended to give reporters more potection than other citizens. The Constitution protects all ctizens, and there is no reason to believe that Justice Powell intended to elevate the journalistic class above the rest. Cf. Branzburg at 690 (“the only testimonial privilege for unofficial witnesses that is rooted in the Federal Constitution is the Fifth Amendment privilege against compelled self-incrimination.”).

"Could not have"!? Indeed.

UPDATE: Speaking of Instapundit, he adds this link to Volokh's website, which focuses on one conconcurring opinion that asks the musical question we all have been asking: What about the blogs? -- as well as another concurring opinion that endorses a common law-based press privilege.

UPDATE: Via Coyote Blog, see the full and definitive analysis here at Beldar.

The Lonely Maytag Trademark

The Associate Press reports:

DES MOINES, Iowa Maytag may have to change the name of a new kitchen appliances. That's after a small business owner in New Hampshire won a trademark infringement case against the Iowa appliance maker. A federal jury in Concord, New Hampshire, has found in favor of Attrezzi Fine Kitchen Accessories. Maytag's Jenn-Air division rolled out its Attrezzi line of mixers and blenders in 2003. The kitchen store opened a year earlier, and owner Jennifer Slade sued. She wanted one and a half million dollars -- half of Maytag's revenue on Jenn-Air Attrezzi products. However, the jury awarded Slade only 54-hundred dollars. That's amount of money it cost her to file her challenge. Maytag's attorney says the company will ask the judge to reconsider the verdict.

That's the whole item. There ain't no more.

But this little piece teaches a lot of practical trademark law! I haven't seen the primary materials and don't know more than the report above says. But here's some of what we can learn from it:

1. Trademark clearance does not mean "not having to say you're sorry." Big companies have huge ramp-up periods between the clearance of a new product line or other trademark occasion (that being per the best case scenario -- where they really actually clear the mark before getting the marketing machine going) and when a product hits the market for purposes of "first use in commerce" -- in other words, when priority is earned. (In trademarks, priority of use is the Holy Grail.) Yet despite their fancy paralegal-filled in-house departments, they frequently do not keep checking between that first email from the boys in marketing and that first use. Result: Someone else sneaks in there, or perhaps was already snuck in there and just missed getting picked up by the search report. Millions are spent on brand-building and even trademark registration before the first use in commerce of what turns out to be someone else's trademark. Alternative scenario: The product line expands and, again, no reference is made to the parameters of the original search. I handled a case like this against one of the biggest companies in the world that had made just these mistakes and they ended up eating nearly $100 million in infringing branded merchandise.

2. Trademark litigation is not the lottery. The plaintiff here had first use in commerce and hence priority. But likely the jury did not believe it had either suffered any damages nor that it had proved secondary meaning beyond a very limited geographical scope. (That means the rest of the world can be the trademark territory of the junior user (here, Maytag / Jenn-Air), but that the senior user can continue to use the mark under what is called the intermediate junior user principle.) Winning a Lanham Act judgment is not a free money pass. You have to prove damages and, evidently, proving that this New Hampshire appliance store suffered from the promulgation of this high-end line of fancy-sounding kitchen doodads was not so easy.

3. Litigate in New Hampshire! This section deleted per the below.

UPDATE: An emailer (requesting that his privacy be maintained) sent along a link to a much more detailed version of this story. Massive difference from our understanding per the abbreviated one: Attorneys' fees will be massive, not weensy; the $5400 was merely costs; an affidavit of costs will now go to the judge.

"The War on Speech"

Via Instapundit, Ryan Sager of the New York Post writes about the absurd state of affairs where today's U.S. Supreme Court seems to have very little interest in free speech -- the kind of free speech that the Constitution actually contemplated (as opposed to kiddy-cyber-porn, which is for sure protected "speech" by the lights of today's SCOTUS). Sager writes, in an article in Tech Central Station:

The speech 527 groups engage in is fundamental to the First Amendment, yet it is exactly this speech -- not the influence behind it -- that is being targeted by Congress. So much for 'Congress shall make no law . . .

Believe it: The Internet provides the subtext to what is going on, and what is not going on, in free speech jurisprudence. The regulation of explicitly political speech is becoming more of an urgent issue than ever as the mainstream media, still dominant and influential in Washington, sees its opinion monopoly crumble thanks to the new media, including blogs.

I am inclined to think the Bush Administration is on the "right side" of this issue, albeit in its own quiet (and ice-cold-methodical) way. Even if you are a cynic about it, the free speech "side" happens to mesh ideologically and electorally with President Bush's policy goals; the White House's tack on this did indeed trend that way during the election, as well. Is there any hope that the White House has this on their list of issues to discuss with the prospective Supreme Court justices whose pictures are being pinned up on someone's cubicle wall?

Seventh Circuit: I Hate Illinois Nazis.

McDermott Will & Emery has published an article on the Mondaq website (registration required) about a Seventh Circuit decision in which a losing party was required to pay the plaintiff's attorneys' fees because of gross misbehavior during the litigation. According to the piece, and confirmed by this item, the sanctioned party surprisingly chose to litigate by rules other than those of the Marquess of Queensbury (or perhaps not?):

The plaintiff, Te-Ta-Ma Truth Foundation (Foundation), the owner of a federally registered trademark for the mark "Church of the Creator," filed a trademark infringement action against the defendant, World Church of the Creator (World Church), a white supremacist group, for use of the "Church of Creator" mark. World Church’s use of the mark resulted in actual confusion as Foundation, a religious charity that promoted universal love and respect, began to receive complaints and condemnations from third parties after World Church members appeared on the Jerry Springer show and proclaimed hatred for Jews and non-whites.

Throughout the litigation, World Church encouraged its members to send offensive and threatening e-mails and voicemails to the Foundation and the Foundation’s attorneys. In addition, World Church posted press releases on its website flouting its use of the mark even after the issuance of a permanent injunction. Moreover, a member of the World Church was tried and convicted of soliciting the murder of the district court judge and attempting to influence her through corruption and force.

And I thought New York practice was rough.

Just for background: The Lanham Act provides for an award of attorneys' fees in "exceptional cases." Different circuits have different standards for what constitutes "exceptional cases." Cooper & Dunham in New York has an excellent summary on this topic here. The novelty of the Seventh Circuit case, however, was that an exceptional case may not only be determined from the merits of the claims and defenses, but the way the game is played as well.

What is the likelihood judges will apply this standard to parties who don't have swastikas burned into their foreheads? Don't hold your breath. Judges really hate to use sanctions (except in family court, it seems, from the calls I get). Then again, even my most lunatic adversary in a trademark litigation (in a case I managed to squeeze myself out of last year, thank God) never put out a contract on federal judge.

Off Topic: Send the Laurel to My New Jersey Office.

Good news for the blogosphere: We're back!

Good news for my creditors: The jury returned a verdict for our client yesterday. We won!

It was not a trademark case. (When do those every go to a jury? Not bloody often. And when's the last time your trademark counsel tried a case before a jury, anyway?) No, it was a discrimination case in the federal court in Camden, New Jersey. We represented a female Croatian immigrant who worked in a testing laboratory and who was claiming that she had been disciplined, her pay cut, and that she was ultimately terminated because her black female supervisor had it in for her on grounds of racial, national-origin and gender prejudice.

The jury agreed after a five day trial. They were in their second set of deliberations on the topic of punitive damages, which they had already decided they would award -- they were just working on the number -- when we reached a settlement with the other side so they could avert a final judgment being entered and a potentially much larger judgment, and we would both get our client (and her lawyers) paid now and also avoid post-trial motions, a likely appeal and the distinct possibility of a Chapter 11 filing.

Biggest surprise? The gender thing was key. The most gratifying aspect of that surprise? My partner Nancy Exumé, trying her first ever case as my second-seat (a very active one -- she handled all the cross-examination), insisted that the girl vs. girl angle, of which I was skeptical, be played out -- and she was right. Who sold this to the jury? The two women jurors. They told us so when it was over.

Them: Venus. Us: Mars. Ha! Are you kidding?

Well, anyway, she, Nancy the so-called Venusian and I, Ronco the Martian (the one with the high voice) evidently made a pretty good combination that week in Camden -- which, to make a trademark and branding related point, is the home of Campbell's Soup and nothing else you would want to know about (besides government buildings including the courthouse and its fine inhabitants).

A black Hatian-born female lawyer and a Polish-Cuban Jewish lawyer representing a Croatian chemist in a "reverse discrimination" suit -- and winning. (The other side had a Jew and a blue-eyed Italian as counsel. But hey, we were all Ivy Leaguers!) What a country!

Back to trademarks, blogging, the Internet and all that as soon as possible. I am still decompressing.

Google me this II

We blogged a week or so ago (before I got bogged down in this trial -- still in progress [UPDATE]) about Google's trademark challenges. Here's an excellent, if short, item about how trademark issues could indeed be the Achilles' Heel of the Google business model.

This is a fundamental question. Search engines work on their ability to recognize content, and trademarks are a conceptually rich sort of content that essentially adds a premium of meaning, association and value to search engine results. [UPDATE: If you really want to get into this, see this article I just bumped into by Eric Goldman, courtesy of Marty's Trademark Blog.] And now we have a simple rent-seeking exercise, right out of the microeconomic theories of Ronald Coase.

In other words, as I have argued here, there is no reason on earth judges -- whether French, English or American -- should be making these policy decisions. They are legislative in nature, in economic systems set up the way ours are. (As opposed to the imagined universes of the libertarians.) Inconsistency of judicial decisions across jurisdictions only makes this ad hoc, leave-it-to-the-judges approach worse and certainly, as the article suggests, promises to hold down the value of Google's stock price or at least contribute to its high present volatility -- markets abhorring uncertainty, after all.

Google's name, of course, comes from the concept of a googol -- "the mathematical term for a 1 followed by 100 zeros." Presumably the decimal is after that last zero. I am not suggesting that the brilliant, objective minds of the legislative branches are any better qualified than the philosopher kings of the judiciary at where that dot will eventually be dropped. But at least the politicians answer, on some level, to the democratic process.

Of course, that same process gave us the Sherman Act and its like, which in turn led to decades of judicial management and policymaking relating to large parts of the economy. Remember that the Sherman Act has been virtually untouched, legislatively, from the time of its inception during the adolescence of the Industrial Age in America. Yet what courts have chosen what and what not to do about its enforcement and interpretation (okay, courts and Departments of Justice -- and, sometimes, state attorneys general) has largely been a matter of evolutions in judicial fashion. Will the amorphous legal state of IP, in a transjurisdictional regime, experience the same thing? Or will the "new paradigm" of information transparency, combined with an unheard-of low cost of entry, enable the new economy to run around the robes and gavels like digitial quicksilver?

Wow!

It Googles the mind just to contemplate! And besides the metaphors, it's real interesting, too!

Spam Can't Act

The U.K. Register reports that what would appear to be a very late in the game attempt by the original spammers -- Hormel, makers of the presumably tasty canned meat -- to preserve some semblance of control in the UK over the use of their trademark in the Internet space-junk context. They sued a shop that produced a product called "Spambuster." (Query whether they have any chance of ever asserting trademark rights in that very descriptive product name? Not likely.)

According to the article, the court wrote: "Since Spambuster actually made no effort to connect its email software with the canned meat, it wasn't much of a surprise that the judge took their word for it and dismissed the complaint."

Bloody Vikings.