Tuesday, August 22, 2006

You can't google it. You also can't xerox a xerox. Still.

Do you remember the ad campaign that said "You can't Xerox a Xerox on a Xerox?" You can briefly hear me talk about this (warning: link to MP3 file) on The Rollye James Show a few months ago.

Google is now beginning to take steps to protect its trademark. Google has been sending letters to media organizations to state that its trademark is not a verb. So, someone cannot say "Google it for me" or "I googled it and here's what I found."

Those of us who are fans of sports commentator and new (reluctant) Monday Night Football announcer Tony Kornheiser used to hear him say to use "The Google Key" in searching for something on the Internet. My friend Vicki jokes that she gets help from "Professor Google" in searching. Both of those are good uses of the word "Google" to search the Internet.


In trademark law, the trademark must NOT be a generic word. You cannot register "ball" as a trademark for a ball. It's generic. There is no Beer-brand beer. Even to your eyes and ears, it is somewhat silly to say that. If a trademark turns into a generic word, then the owner loses all rights.

(And now, a boring legal citation on the topic. A mark is deemed to be abandoned when "any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark." This is USC Section 1127.)

Turning "Google" into a verb meaning "to search the Internet" which Merriam-Webster has accepted into the language means that there is no longer a unique link between the trademark and the services provided. That is why marks are registered in the first place. A company wants to protect not only the names it has chosen, but also the quality of the product. A generic word strips that connection that ordinarily would not be there.

And don't forget, you may make a photocopy of your document on your Xerox-brand copier.

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Friday, August 18, 2006

I feel prescient. Apple defends "Pod."

Back on July 20th, I wrote, "Think about a mark like "eBay" or "iPod." If someone started to make eBay brand home appliances, there would be a likelihood of confusion because "eBay" can only mean the website that sells goods by third parties in an auction format. The link is there in consumer consciousness."

Now here is the twist. Apple is claiming the word "pod" as its own trademark in all situations. The worry is that any use of "pod" in a trademark could dilute the "iPod" mark.

Let's start with what trademark dilution is. As I defined it on my trademark website of NYCTrademarks.com, "Trademark dilution ... is reserved for strong trademarks. Those trademarks with the strongest in identity in a market cannot be used in other noncompeting markets. This is to avoid "diluting" the strong, recognizable mark by its use in noncompeting markets.
"Dilution is best described in an example. A mark that is recognizable is 'Barbie.' The mark 'Barbie' brings up an idea of a girl's doll of an adult woman and friends in a pink box. Most likely, 'Barbie' would not be allowed to be used in another market, even if it did not compete with children's toys because of how strong the mark is and how identifiable the mark is to the goods."

I based this example from a real case, Mattel, Inc. v. MCA Records, Inc. 296 F.3d 894 (9th Cir. 2002)(the link opens a PDF file). In this case, the song "Barbie Girl" by the group Aqua was found to dilute Mattel's trademark in the word "Barbie." (One interesting question never propsed: What if the song wasn't called "Barbie Girl"?)

Dilution comes in when the defendant's use of a mark either blurs the connection in consumers' minds between the plaintiff's mark and the goods and services is weakened or the defendant's use tarnishes the plaintiff's mark. (Tarnishing means that the defendant's use is unsavory or unwholesome or the mark is used in connection with inferior products.)

The issue in any upcoming fights will be two-fold: Is "iPod" as a mark strong enough to warrant that it can be diluted and can any mark with "pod" in it dilute "iPod"?

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Monday, August 14, 2006

Higher Ticket Prices!

There are several different articles about several fans suing the Chicago Cubs for scalping their own tickets to games.

How would this happen?

According to all reports, the Cubs set up their own company, Wrigley Field Premium Tickets, owned by the same company that owns the Cubs (the Tribune Company), run by a Vice President of the Chicago Cubs, and had the Cubs do the accounting.

Since it was adopted in 1923, Illinois' Ticket Scalping Act states that entities that put on sporting events can sell a ticket for more than the face value.

Apparently, the Cubs sold the tickets to Wrigley Field Premium Tickets at face value and then WFPT sold tickets at a much higher rate.

Here, it seems as if the judge's opinion is as follows: Although both companies (the Cubs and WFPT) are owned by the same parent company (the Tribune Company), WFPT does not actually hold the sporting event. Apparently, neither does the Tribune Company. Therefore, WFPT can sell tickets at a higher rate than the face value.

All reports say that the plaintiff fans will appeal to the Illinois Supreme Court.

It is no stretch to see how this can harm consumers. A team can sell tickets to a sibling corporation, and then the sibling corporation raises prices through the roof. The team, being a part of this larger corporation, keeps all the profits of the larger price. The "face price" for tickets could possibly NEVER go up, but the reality would be different as the prices are raised significantly by the sibling company.

Also, throughout the years, many have asked if the Tribune Company (which publishes the Chicago Tribune) has a conflict of interest in covering the Chicago Cubs, the baseball team it owns. Why? Because the Tribune Company holds the sporting events. The Cubs might be a subsidiary of the Tribune, but the relationship is there to make many wonder. Why is a sibling company treated differently? It is all a part of the one.

(Another strange example of the lines between subsidiaries bleeding: ABC Sports will change to "ESPN on ABC" starting in September.)

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Wednesday, August 09, 2006

Fantasy Baseball players can relax.

A judge has ruled that players' names and statistics (as a result of games) are not the intellectual property of Major League Baseball.

In what seems to be a logical ruling, the judge said that the names and statistics are not "copyrightable" and that if there were a right of publicity to be infringed, those rights are lost because newspapers publish the exact same information every day.

Why would Major League Baseball think that players' names and stats fall under copyright law? Is it because the games are broadcast in a fixed medium on TV and radio?

In the United States, the following classifications of expressions of ideas are bound by copyright law: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.

But those broadcasts would be audiovisual or sound recordings. They would not be the games themselves. Here, there needs to be a separation of thought. The rights in the broadcast vs. the rights that may exist in the game itself.

(Unless baseball is a pantomimed or choreographed work? But, somehow, I think that only describes professional wrestling.)

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Tuesday, August 08, 2006

Will LimeWire go Legit or Belly-Up?

Record labels have sued the file-sharing service LimeWire with a copyright infringement suit.

That it happened is no surprise.

The history of file-sharing lawsuits is an odd mix, however.

Here is a little history.

The first case on the subject is A&M Records, Inc. v. Napster, Inc. 239F.3d 1004 (9th Cir. 2001). The result is that the appeals court found that Napster infringes two of the copyright holders' rights: the right of reproduction and the right of distribution.

What I found odd about this case is that the court argues that "Napster may be vicariously liable when it fails to affirmatively use its ability to patrol its system and preclude access to potentially infringing files listed in its search index. Napster has both the ability to use its search function to identify infringing musical recordings and the right to bar participation of users who engage in the transmission of infringing files." This seems to say that how Napster saved files on its system, via a search index system, was a part of copyright infringement. It is as if it left a door open for file-sharing programs to perform the same act in a different manner.

This was followed by Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 380 F.3d 1154 (2005). This case shut the door left open by the Napster case. Anyone who distributes a device (and device can be software) with the object of promoting its use to infringe copyrights is contributing to copyright infringement.

LimeWire fits that description. It is software and it is known as software to download music. The software is used often for that by many people every day.

With Grokster settling the rest of its lawsuit, one must wonder if peer-to-peer file sharing is dead. Most likely not. Others will appear (like Bittorrent - though that is a little different, since it is an algorithm for faster downloading and searching, and hasn't been advertised as a way to pass around copyrighted material, even though people do).

However, it appears as if all the doors are closed and there are no loopholes in peer-to-peer file sharing. The creators and owners of any software can be held responsible.

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